No infringement of registered trademark, no cry

Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., -- F.Supp.2d ----, 2010 WL 668515 (D. Nev.)

The lead plaintiff, Hope Road, is a business owned by Bob Marley’s children, with registrations for BOB MARLEY in eleven classes of goods, including T-shirts, and a pending registration for MARLEY in clothing. Hope Road has registered itself as the owner of Marley’s publicity rights in several states, including Nevada. In 1999, Hope Road granted plaintiff Zion an exclusive license to sell T-shirts bearing Marley’s image; other licensed products include hats, posters, calendars, keychains, and towels. Zion’s license covers something between 300-500 different photos of Marley. For artistic reasons, some T-shirts have both Marley’s image and his name, but not all use the words and not all use the images. Plaintiffs have sent out about 400 C&Ds based on their Marley IP rights over the years.

Defendant Avela collects and restores entertainment-related art and images, licensing it for the retail market. The parties disagree about how plaintiffs and defendants initially interacted, though there was some discussion of a possible licensing arrangement that never materialized. Avela nonetheless licensed certain Marley images for use on clothing, some of which appeared at stores such as Target and Wal-Mart. The retailers used “Bob Marley” as part of the description of the clothing. The products, however, didn’t bear the words MARLEY or BOB MARLEY.

Plaintiffs surveyed T-shirt buyers, showing a control group a mock Avela T-shirt with an image of an unknown African-American male and a test group an actual Avela T-shirt with Marley’s image. Both shirts had an Avela neck label, stated that the designs were the property of one of Avela’s partners, and bore a 1976 copyright notice. Questions included “who the respondents thought made the t-shirt, whether the respondents thought the t-shirt makers received permission from anyone else to make the t-shirt, and whether the respondents thought the t-shirt maker produces something other than t-shirts.” Seventeen percent of the test group said Avela or its partner made the shirt, and 9% answered Bob Marley or the person on the shirt. In the control group, 22% answered Avela, and 2% answered Marley or the person on the shirt. On the permission question, of those who said that they thought someone else’s permission had been secured (an important qualification, see below), 37% said Marley or the person on the shirt in the test cell, and 20% gave that answer in the control cell. Some of the rest named retailers such as Hot Topic, and 29% of test/34% of controls said they didn’t know.

I’m fascinated by the grouping “Marley or the person on the shirt.” For those who can’t tell it’s Marley, Marley’s personality can’t be selling the shirt; if we cared about materiality, we’d have to exclude them.

Forty-one percent in the test group and 59% of the controls said that the maker didn’t need anyone else’s approval or had no opinion. Overall, 42% of the test group said Marley or the person on the shirt was the source or sponsor (these aren’t really the same thing as “permission,” though trademark owners have somehow convinced courts to overlook that), while 22% of the control group thought so. The expert concluded that there was 20% confusion.

Plaintiffs sued for trademark infringement and violation of the right of publicity.

The first question: what do plaintiffs own? They claimed common law rights in the name Bob Marley, a federally registered BOB MARLEY mark, and Nevada registered rights of publicity. But can they claim a mark in all depictions of Marley? Is his picture the equivalent of his name? If defendants used the Bob Marley name, is that a fair use?

Plaintiffs argued that their mark consists of any visual depiction of Marley. But every court to consider the issue has held that “there is no cognizable trademark in every single photograph ever taken of a famous person.” No reasonable person could believe that all images of a person originated with that person. Thus, the registered BOB MARLEY mark doesn’t equate to a trademark in any and all photos of Marley. Plaintiffs use hundreds of different photos of Marley on merchandise; no single picture represents a Marley mark equivalent to BOB MARLEY.

Plaintiffs then cleverly argued that a picture can be equivalent to a word mark, as in Mobil Oil Corp. v. Pegasus Petroleum Corp., 818 F.2d 254 (2d Cir. 1987) where the Second Circuit held that Mobil’s flying horse symbol was infringed by the name Pegasus Petroleum. That may be true in some cases, but here it wasn’t: the pictorial equivalent cases are limited to “a true picture mark consisting of a single pictorial representation used repeatedly as an indication of origin.”

But plaintiffs argued that defendants used the BOB MARLEY mark in connection with advertising the products on websites and store signage. Defendants argued that they weren’t responsible for retailers’ uses and that any such use would be descriptive fair use.

The court agreed that there was no record evidence of defendants using the word mark, except for an unauthenticated document that appeared to be an internal sales analysis report, which would not count as a use as a source indicator and couldn’t cause any customer confusion because there was no evidence it was ever shown to a customer. (Hi, keyword search cases!) The court therefore did not need to resolve the descriptive fair use issue with respect to the registered mark.

On the right of publicity, defendants argued that plaintiffs waived their rights by failing to register until January 2006, more than six months after they learned of unauthorized uses in the state, and the statute requires registration within six months of an unauthorized use. Plaintiffs argued that this requirement only applies to each particular defendant’s use, and that there was a factual issue about when they learned of defendants’ use.

Nevada provides a life plus fifty term for publicity rights regardless of whether the person commercially exploited the right during life. Others can’t make commercial use of a person’s right of publicity without the written consent of the person or his/her successor in interest, absent exceptions not at issue here. Registration provides notice to potential users. If a successor in interest/licensee of a deceased person doesn’t register in Nevada, however, that entity may not assert any right against any unauthorized use that began before the application to register was filed. And, within 6 months of the date the successor in interest became aware/reasonably should have become aware of “an unauthorized commercial use,” it must register. Failure to register is deemed a waiver of “any right of publicity.”

So, does the statute require registration within six months of any unauthorized use, on penalty of permanent waiver, or are rights waived only with respect to that particular use? Without Nevada cases on point, the court started with plain language. A successor in interest “must” register within 6 months of becoming aware of an unauthorized commercial use; failure waives “any” right of publicity forever. “The statutory scheme fosters certainty in the claims surrounding publicity rights of a deceased person. It encourages early registration by prohibiting a successor from asserting rights against a use that began before registration. And it encourages registration upon learning of an unauthorized use by tying forfeiture of the right to a failure to register. The statute thus encourages registration both to protect successors’ rights, and to give potential users notice of prohibited uses.”

However, the registration requirement is only triggered by use in the state. The court found genuine issues of material fact about when plaintiffs first became aware of unauthorized Nevada use. This includes evidence of internet ads by Florida-based companies, which might or might not count as use “within” Nevada. The same questions also surrounded whether defendants’ use began before plaintiffs’ registration.

Defendants also argued that the statute didn’t apply to people who died before it was enacted. Application of the statute, plaintiffs contended, was both intended by the legislature and not retroactive here, given that defendants’ use began post-enactment. The court agreed that both the plain language and legislative history supported applying the law to any person, whether or not already dead when the law was enacted, and that this wasn’t retroactive.

The parties cross-moved for summary judgment on the §43(a) claims and were both denied. Caselaw suggests that a celebrity may assert an unfair competition claim where the defendant uses the celebrity’s persona to suggest false endorsement or association. The Sleekcraft factors shook out as follows: Marley is a well-known musician with strong recognition among the shirts’ intended audience. It’s not unusual for musicians to be featured on t-shirts, so Marley’s success as a singer is closely related to the t-shirts, and indeed one retail website called one of the t-shirts a “concert” t-shirt. Other t-shirts included song or album titles on the shirt, further tying the products to Marley’s reputation as a musician. The picture is one of Marley, and purchasers are unlikely to exercise much care in buying t-shirts. Though plaintiffs don’t use mass marketing retailers, the parties both use the internet to advertise and sell their products; they both displayed products at a particular trade show; and at least one retailer, Wet Seal, stocked both parties’ products before switching solely to defendants’ cheaper products. Plus there was the survey evidence of confusion.

The court still found genuine issues of material fact. Many of the survey results didn’t show confusion. Even of the group (59%) who said the manufacturer needed someone’s permission to make the t-shirt, only 37% said that someone was Marley or the person on the shirt. And the Ninth Circuit’s Franklin Mint case upheld a ruling that there was no genuine issue of material fact on likely confusion where Princess Diana’s image had appeared on a number of unauthorized products during her lifetime which she’d neither objected to nor endorsed. Here, there was conflicting evidence on Marley’s awareness of unauthorized use of his image on products like t-shirts during his lifetime. With a lot of unauthorized merchandise floating around, consumers might not be confused, but, after his death, the owners of the Marley rights have enforced their rights, making this case potentially distinguishable from Franklin Mint. (That’s even more circular than usual for these false endorsement cases!)

Finally, the defendants argued that false endorsement claims should be limited to the use of a likeness to endorse another product, not to the use of a likeness as part of that product. This should be true, but the court pointed out that Wendt, Franklin Mint, and other cases involved incorporation of a likeness into the product.