Select musicians cross genres and generations and their inspirational messages resonate widely, such as the great Bob Marley‘s mantra to “love the life you live, live the life you love.” While the late reggae master could wax philosophic with the best of them, the U.S. Court of Appeals for the Ninth Circuit recently offered a pragmatic view in protecting part of Marley’s legacy: The appellate judges affirmed a ruling by U.S. Senior District Judge Philip M. Pro in a case brought on by Fifty-Six Hope Road Music, which is owned by Marley’s children, holds the rights to his persona, and had sued A.V.E.L.A., Freeze, and JEM over T-shirts and other merchandise emblazoned with his image. In his written opinion for the appellate panel, Judge N.R. Smith discussed important factors about the Lanham Act and celebrities’ Right of Publicity while also upholidng the award of more than $1.5 million to Hope Road in damages, wrongful profits by defendants, and attorney and other fees.
Dead celebrities still have rights –or their persona does
The courts have treated celebrity persona as an identifiable intellectual property protected under the Lanham Act; death does not preclude protections under the law, as can be found under §1125 (a).) All successors in interest should pay heed to these rights, especially as marketers seek to exploit dead celebrities, particularly as an emerging fashion trend. H&M, for example, carries a whole section of shirts with images of Tupac Shakur, Biggie Smalls, Kurt Cobain, and many others gone too soon. (That these depictions are considered “vintage” may make some Gen X-ers feel old, especially when some high schooler zips down the aisle wearing a “Live and Die in LA” shirt. But such seasoned listeners simply can consider themselves lucky they were in their prime when Power was still playing that song in its regular rotation.)
As for the judge in the Marley case, he whirled through a Lanham Act analysis on celebrity likeness for those needing a quick review of key factors for consideration. His opinion clarifies a potential point of confusion in cases involving a fundamental element of the act, holding it is consumers’ confusion that is at issue; if they are confused as to whether Marley’s heirs provided or supported goods, that’s key. Defendants in this matter had sought to attack this aspect of the case, showing that consumers could be confused between an image of Marley and a more generic dread-lock wearing African-American guy in shopping mall surveys. Judge Morgan Christen dissented on the issue of consumer confusion.
A party’s actions before bringing this kind of suit are also a factor. The court looked at how likely a consumer will associate the celebrity with the party bringing the suit. If it is a known fact that many people use a celebrity’s picture and persona without authorization, either before or after death, and neither he nor his successors in interest sought to stop them, then a consumer is unlikely to automatically assume that those who legally hold rights are the persona user in every instance, lessening the likelihood of confusion. But Hope Road had issued more than 400 cease and desist letters and had filed more than 20 lawsuits, asserting unauthorized use of Marley’s persona. This worked in their favor.
While the defendants had brought up solid arguments on appeal, the judges said, they also had waived certain courses of action by failing to assert these defenses fully at the trial court level, barring them from appellate consideration; a footnote in the opinion offers at least four alternative defenses that fell into this category. The appellate court also upheld the district court’s finding that Hope Road itself, due to a lack of timely registration, also had lost certain legal protections afforded under Nevada law, specifically elements that dealt with publicity law.