Bob Marley’s Heirs Take on Intellectual Property Infringers

Celebrity product endorsements can create a number of interesting intellectual property issues. Take, for example, the common image of Bob Marley on T-shirts and other merchandise, many of which are printed without permission of the owners of Bob Marley’s likeness – his children. Tired of their father’s over-exposure, and wanting to protect their father’s image, the children of Bob Marley and their licensee (one company is licensed to use the image and likeness of the famous Rastafarian) have sued various companies for using Mr. Marley’s image on clothing and merchandise without their permission.

The children successfully sued offenders for “false endorsement.” This cause of action is created by a section of an intellectual property statute, the Lanham Act, whereby any person who uses any name, symbol, or device in commerce that is likely to cause confusion regarding the origin or approval of goods shall be liable to a person who has been damaged. At trial, the children won damages and attorney’s fees.

Not surprisingly, the defendant companies appealed. When determining whether a consumer would be confused about Bob Marley’s support of the merchandise that contained his image or likeness, the Ninth Circuit Court of Appeals examined the traditional “likelihood of confusion” factors. These factors include:

1. how famous the celebrity is in the particular market for which the merchandise will be sold;
2. the connection between the celebrity’s fame or success and the merchandise;
3. the similarity of the likeness of the merchandise to the celebrity;
4. whether there is actual confusion;
5. the marketing channels the parties used;
6. how careful or particular the likely purchaser would be;
7. whether the defendant intended to use the celebrity’s likeness; and
8. the likelihood of expansion of product lines.

The Court also considered a final factor, since the children and the licensee brought the suit: the strength of the connection between the image of Bob Marley and the plaintiffs.

There was sufficient evidence that the purchasers exercised a low degree of purchaser care, because the products generally sold for between $7 and $15. Because the defendants’ T-shirts were nearly identical to those manufactured by the children and their licensees, the Court found that a reasonable jury could find that defendants sought to associate their product with the children by creating an intentionally similar product. Finally, the Court affirmed the strong connection between the plaintiffs (Bob Marley’s children and their licensee) and Bob Marley.The Court ultimately concluded that the jury in the trial court did not make a mistake when they found that the defendants violated the statute. The judges found that Bob Marley’s image was recognizable on clothing and that even before he passed, Bob Marley sold merchandise with his own image on it. The children also provided a survey that showed high numbers of respondents believing Bob Marley must have given permission for his image to be used on T-shirts. The judges reviewed evidence that showed the defendants marketing their products in the same stores as the plaintiffs.

If you believe your business’s intellectual property is being infringed upon or misappropriated, contact the experienced Orange County IP lawyers at MYERS BERSTEIN LLP today.