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On Friday, Bob Marley‘s children got the 9th Circuit Court of Appeals to affirm a trial victory against merchandisers. The win presents good news for celebrities who might find their faces unwillingly be used on a T-shirt.
Marley’s heirs are behind a company called Fifty-Six Hope Road Music, which controls the late reggae star’s likeness for licensing endeavors. In 2008, Fifty-Six sued A.V.E.L.A. and others for using Marley photographs in merchandise sold at Target, Walmart and other large retailers.
In 2011, the plaintiff prevailed at trial on a Lanham Act claim that the merchandisers confused the origin of their goods. The defendants were ordered to disgorge more than $750,000 in profits. Additionally, A.V.E.L.A. had to pay an additional $300,000 in damages for interfering with the official licensing of Marley merchandise, and all the defendants were ordered to remit nearly $1.52 million more in attorney fees.
“This case presents a question that is familiar in our circuit,” writes 9th Circuit Judge N. Randy Smith in today’s opinion. “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?”
A.V.E.L.A. threw up various objections, but perhaps the one most notable was that the judgment overextended a false endorsement claim by creating a federal right of publicity.
“State publicity right claims protect a plaintiff when the defendant uses the plaintiff’s identity for commercial advantage, without permission,” explains Judge Smith. “However, [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.”
A.V.E.L.A. argued that consumers would always “associate a deceased celebrity’s image with that of his or her estate,” but Judge Smith retorts that plaintiffs only succeed if they “show more than mere association.”
In analyzing consumers’ likelihood of confusion in celebrity cases, courts are supposed to weigh factors such as the level of recognition of a celebrity, the relatedness of the fame of the celebrity to the defendant’s product, the marketing channels used and the defendant’s intent on selecting the celebrity.
Another factor is evidence of actual confusion on the part of consumers.
In this dispute, the plaintiffs conducted a survey of 509 individuals at shopping malls. The interviewees were shown an actual A.V.E.L.A. T-shirt bearing Marley’s image and were asked, “Who do you think gave their permission or approval for this particular T-shirt to be made or put out?” The interviewees were also shown a T-shirt of an unrenowned African-American man with dreadlocks and were asked the same question.
When shown the Marley T-shirt, 37 percent answered Marley or his heirs gave permission. When shown the other T-shirt, the number dropped to 20 percent. Some of the respondents opined the law required permission from the person whose image appeared on the shirt.
That’s not always true, but Judge Smith writes, “Drawing all reasonable inferences in Plaintiffs’ favor, the survey shows actual confusion.” Moreover, the judge adds, “Evidence of actual confusion is relevant to likelihood of confusion but not required in a false endorsement case.”
In a concurrence, 9th Circuit Judge Morgan Christen agrees with much of the reasoning why the jury’s award was proper but addresses the issue of actual confusion. She notes that the T-shirts at issue don’t bear any recognizable labels, logos or marks and that consumers might just be interested in Marley’s image itself. In other words, consumers might not care who endorsed the shirt. She further writes, “Where a celebrity image is itself the only indication of sponsorship, I would hold that a finding of actual confusion … must be supported by some evidence that the confusion could have had an impact on the consumers’ purchasing decisions.”
That view is more in line with how European courts analyze the issue. See, for example, a recent ruling in favor of Rihanna against Topshop.
Fifty-Six was represented by Jill Pietrini and Paul Bost at Sheppard, Mullin.
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