United States: Ninth Circuit Court Of Appeals: Use Of Deceased Celebrity's Image On T-Shirts Constitutes False Endorsement Under Lanham Act

Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059 (9th Cir. 2015)

In a recent decision, the United States Court of Appeals for the Ninth Circuit affirmed a jury verdict in favor of Fifty-Six Hope Road Music, Ltd. ("Fifty-Six Hope Road"), an entity formed by Bob Marley's children and heirs to exploit Bob Marley's persona, that A.V.E.L.A., Inc. ("A.V.E.L.A.") and other defendants' (together with A.V.E.L.A., "Defendants") unauthorized use of Marley's image on t-shirts and other merchandise constituted false endorsement under Section 43(a) of the U.S. Trademark (Lanham) Act, 15 U.S.C. § 1125(a). See Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059 (9th Cir. 2015).

This appeal arose from a dispute between, on the one hand, Fifty-Six Hope Road and Zion Rootswear ("Zion," and together with Fifty-Six Hope Road, "Plaintiffs"), holder of an exclusive license from Fifty-Six Hope Road to design, manufacture, and sell t-shirts and other merchandise bearing Marley's image, and on the other, Defendants, entities involved in the sale of unlicensed, competing merchandise bearing images of Marley at Target, Walmart, and other large retail outlets. See id. at 1066. Plaintiffs initially sued Defendants in the United States District Court for the District of Nevada on five claims stemming from Defendants' unauthorized use of Marley's likeness: (1) trademark infringement under 15 U.S.C. § 1114, (2) false endorsement under 15 U.S.C. § 1125(a), (3) common law trademark infringement, (4) unauthorized commercial use of right to publicity under Nev. Rev. Stat. § 597.770 et seq., and (5) intentional interference with prospective economic advantage. Id. The district court granted summary judgment to Defendants on the infringement and right of publicity claims, and allowed the remaining claims for false endorsement and interference to proceed to a jury. Id. at 1067.

Following a trial, the jury found in favor of Plaintiffs and against all Defendants on the false endorsement claim, and in favor of Plaintiffs and against only A.V.E.L.A. on the intentional interference claim. The jury awarded $300,000 in compensatory damages for the intentional interference. Following post-trial discovery, the district court entered judgment against Defendants for an additional $800,000 representing their net profits from the false endorsement. The district court further granted Plaintiffs' motion for attorneys' fees in an amount of approximately $1.5 million. See id. at 1067.

Defendants appealed the judgment and the award of profits and attorneys' fees. Plaintiffs cross-appealed on several points, including the grant of summary judgment on the Nevada right of publicity claim and the amount of profits awarded. Id. The Ninth Circuit upheld the district court's determinations and the jury's verdict on all points.

The decision is significant for its treatment of the false endorsement claim, so we focus on that issue here.

In upholding the jury's verdict on Plaintiffs' false endorsement claim, the Court first found that that under the law of the Ninth Circuit, there is a cognizable claim under Section 1125(a) for misuse of a celebrity's persona, even when the celebrity is deceased. Id. The panel further found that Plaintiffs introduced sufficient evidence at trial to support the jury's finding that consumers would likely be confused about whether Plaintiffs had sponsored or approved Defendants' Marley products. Id. at 1068-72.

In celebrity cases, as the court noted, eight factors are applied to determine likelihood of confusion: "(1) the level of recognition that the celebrity has among the segment of the society for whom the defendant's product is intended; (2) the relatedness of the fame or success of the celebrity to the defendant's product; (3) the similarity of the likeness used by the defendant to the actual celebrity; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant's intent on selecting the celebrity; and (8) likelihood of expansion of the product lines." Downing v. Abercrombie & Fitch, 265 F.3d 994, 1007–08 (9th Cir. 2001) (quoted by Fifty-Six Hope Road, 778 F.3d at 1069). The court further noted that "[w]here the plaintiff is not the celebrity himself," as was the case here, "an additional factor becomes relevant: the strength of association between the mark and the plaintiff." Fifty-Six Hope Road, 778 F.3d at 1069.

Reviewing factors 1-7, the panel found that the evidence did not compel a finding contrary to the jury's verdict. See id. at 1069-71. Specifically, the panel noted that sufficient evidence was presented to establish that there was a high level of recognition of Marley's image within Defendants' target market, that Marley's image had long been associated with apparel, indicating that the fame of the celebrity was related to the defendant's product, and that A.V.E.L.A. had used actual photos of Marley, not simply likenesses, on the merchandise in question. Id. at 1069. The panel further credited evidence indicating that the marketing channels were identical, since A.V.E.L.A.'s licensees had sold A.V.E.L.A. Marley products in some of the same stores where Plaintiffs and their licensees sold authorized Marley products, that purchaser care was likely low given the inexpensive nature of the items, and that A.V.E.L.A.'s merchandise was similar to that of Hope Road, implying an intent to associate their products with Plaintiffs. See id. at 1070-71.

With respect to the fifth factor, evidence of actual confusion, the panel reviewed Plaintiffs' consumer confusion survey, which consisted of 509 face-to-face interviews conducted by professional interviewers with individuals in shopping malls. Id. at 1069-70. As part of the survey, interviewers had shown the test group an A.V.E.L.A. t-shirt bearing Bob Marley's image and the control group a t-shirt bearing the image of a different, unrenowned African–American man with dreadlocks. Several questions were put to both groups, including: "Who do you think gave their permission or approval for this particular T-shirt to be made or put out?" 37% of the test group answered: "Bob Marley/the person on the shirt or his heirs, estate, or agents." With the control group, 20% answered the same. See id. at 1070.

Defendants argued on appeal that the survey questions were indefinite, and that a valid false endorsement claim "should have an identifiable person as the putative endorser." Id. at 1070. But, as the panel stated, there was "no precedent showing that it must be a single entity that is falsely attributed as the party that approved the product or that the survey taker must be able to identify the party." Id. Therefore, the panel disregarded Defendants' arguments on the survey, holding that "identifying Marley or whoever holds the rights to his persona in the alternative does not render the survey data useless or irrelevant. Rather, the imprecision of the data merely decreases its probative value." Id.

The panel further found sufficient evidence to support the additional factor of association between the mark and Plaintiffs, which, as the court noted, was particularly important in this case, given that a review of the standard Downing factors primarily supported a finding that Marley himself and not the Fifty-Six Hope Road entity had sponsored or approved Defendants' products. Id. at 1071. Here, however, "Marley sold merchandise bearing his image during his lifetime, and his successors-in-interest have continued to do so, implying that his image served (and continues to serve) a source-identifying function." Id. Thus, the panel held, "the jury was free to infer that the source-identifying function of Marley's persona had not weakened to the extent that there was no likelihood of confusion." Id.

The court likewise was not persuaded by Defendants' argument that the judgment overextended the Lanham Act by creating a federal right of publicity. Defendants claimed that "consumers would always 'associate a deceased celebrity's image with that of his or her estate.'" Id. at 1073. As the court noted, though, federal claims "require an additional element" above and beyond a right of publicity claim: namely, "that the use be likely to confuse as to the sponsorship or approval of a defendant's goods." Id. Moreover, the court observed that Defendants had raised a number of "potentially salient" arguments on appeal. Id. at 1067-68 & n.1. However, given that they had failed to first assert those arguments—which included an aesthetic functionality defense, a Copyright Act defense under Dastar Corp. v. Twentieth Century Fox Film, Corp., 539 U.S. 23 (2003), and a First Amendment defense under Rogers v. Grimaldi, 875 F.2d 994 (2d Cir.1989)—before the district court, Defendants had waived them in their entirety. Id. Thus, the court observed, the outcome of the case was "in part a function of defenses expressly waived by Defendants." Id. at 1073. Since the jury found likelihood of confusion, and Defendants waived so many potentially critical defenses, the panel felt bound to uphold the jury verdict. See id.

Judge Morgan Christen concurred in part and dissented in part, noting in particular that "the narrow holding . . . is dictated by the standard of review on appeal, and by the defenses actually pursued by defendants." Id. at 1083. Focusing on the confusion survey introduced by Plaintiffs, she opined that the answers to the survey question "Who do you think gave their permission or approval for this particular T-shirt to be made or put out?" only indicated that many members of the public held a lay legal opinion that Marley or someone connected with him must have sponsored the shirt. Id. at 1084. As she pointed out, "this lay legal opinion is likely to be held by the majority of survey respondents every time merchandise bears a readily recognizable celebrity image." Id. Ultimately, in her analysis, "[w]ithout a showing that consumers cared whether permission had been given, the second survey question only shows that most consumers share [that opinion]; it does nothing to suggest that the use of Marley's image on the T-shirt runs afoul of the purpose of the Lanham Act." Id. at 1085.

Given these problems of causation, "where a celebrity image is itself the only indication of sponsorship," Judge Christen would have held that "a finding of actual confusion under § 43(a) must be supported by some evidence that the confusion could have had an impact on the consumers' purchasing decisions. Id. Therefore, she would not have given weight to the survey, since it "did not show that consumers might be misled into buying the T-shirt based on whether permission had been given." Id. Since evidence of actual consumer confusion was just one of the Downing factors, though, she still supported upholding the jury verdict on likelihood of confusion. Id.

As the Court observed, the outcome of this case may well have been different had Defendants not waived several key defenses. Nevertheless, the case serves as a reminder that even if a right of publicity claim is not available under state law, the successors of a deceased celebrity may still have a federal remedy under the Lanham Act. This lingering right can create difficult clearance issues for companies that wish to use a deceased celebrity's persona for commercial purposes, particularly where the celebrity's successors are not known. Given the potential recovery of damages, profits, and attorneys' fees, as well as injunctive relief, for violations of the Lanham Act, companies considering whether to use a deceased celebrity's persona should perform due diligence of any potential successors-in-interest and seek the advice of experienced counsel.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement

    Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of www.mondaq.com

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

    Disclaimer

    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

    Registration

    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

    Cookies

    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

    Links

    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

    Mail-A-Friend

    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

    Emails

    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

    Security

    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at enquiries@mondaq.com.

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions