US appeals court upholds Bob Marley image ruling

Lucian Milasan /

Lucian Milasan / – The heirs to reggae singer Bob Marley ’s estate have won an appeal in a long-fought intellectual property battle, meaning they can now stop a t-shirt maker from using the late star’s likeness without their permission.

The US Court of Appeals for the Ninth Circuit affirmed a lower court decision that had found that clothing company Avela violated the Lanham Act by using images of Marley on a range of merchandise.

Fifty-Six Hope Road Music, which is owned by Marley’s children and manages his assets and rights, sued Avela in 2008 for using the photographs.

The charges against Avela included trademark infringement, false endorsement, and unauthorised commercial use of the right to publicity, which prevents the use of an individual’s likeness (among other things) without permission.

The US District Court for the District of Nevada had sided with Fifty-Six on all three counts after separate trials, awarding it $300,000 in damages, more than $750,000 in profits, and more than $1.5 million in attorney’s fees.

Avela then appealed against the decisions, all of which were upheld by the Ninth Circuit in a consolidated ruling.

Writing in the Ninth Circuit’s February 20 opinion, Judge Randy Smith presented the question: “When does the use of a celebrity’s likeness or persona in connection with a product constitute false endorsement that is actionable under the Lanham Act?”

Fifty-Six said that it owns a property right to Marley’s persona under the federal Act.

However, Avela argued that this claim fails at a “matter of law” and that “a celebrity’s ‘persona’ is too ‘amorphous’ to constitute a ‘name, symbol, or device’”.

But Smith said that Avela’s premise was incorrect, as the court’s jurisprudence recognises claims for celebrity personas.

Smith also said the plaintiff must show more than “mere association” in its false association claim.

“[Lanham Act] claims require an additional element—that the use be likely to confuse as to the sponsorship or approval of a defendant’s goods,” he said.

The plaintiff referred to trial evidence that showed consumers may be confused about whether Avela’s products were endorsed by the Marley family.

Marley’s family had conducted a survey in shopping malls with 509 people, who were split into a test group and control group. The test group was shown an Avela t-shirt with Marley’s image, while the control group received a t-shirt bearing the image of an unknown black man who had dreadlocks.

According to the court, 37% of the test group said it believed that Marley’s estate would have given its permission for the t-shirt to be made or sold, compared with just 20% of the control group.

Smith concluded that the survey showed there was confusion.

Fifty-Six did not respond to a request for comment. Avela could not be reached for comment.

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