Addressing the issue of when the use of a celebrity’s likeness or persona in connection with a product constitutes a false endorsement that is actionable under the Lanham Act, the U.S. Court of Appeals for the Ninth Circuit upheld a district court’s finding of false endorsement and economic interference by selling T-shirts featuring an image of the late reggae icon, Bob Marley. Fifty-Six Hope Road Music v. A.V.E.L.A., Inc., Case Nos. 12-17502, 12-17519, 12-17595, 13-15407 and 13-15473 (9th Cir., Feb. 20, 2015) (Smith, J.) (Christen, J., concurring-in-part and dissenting-in-part).

Fifty-Six Hope Road Music (Hope Road) is an entity owned by the children of Bob Marley, an influential reggae musician who passed away more than 30 years ago.  Hope Road was formed for the purpose of acquiring and exploiting assets, rights and commercial interests in the late Marley.  Marley’s image continues to command millions of dollars each year in merchandising revenue.  A.V.E.L.A. publishes and licenses photographs, images, movie posters and other artwork for use in the retail marketplace.  In 2004, A.V.E.L.A. acquired the rights to photographs of Marley from a photographer, Roberto Rabanne.  A.V.E.L.A. licensed the images to defendants Jem Sportswear (Jem) and Central Mills (Freeze), among others.  Jem and Freeze used the photographs on Marley Tt-shirts and other merchandise, which were sold at large retailers.  In 2008, Hope Road sued A.V.E.L.A., Jem and Freeze for trademark infringement and false endorsement under the Lanham Act, for common law trademark infringement, as well as for unauthorized commercial use of right to publicity and intentional interference with prospective economic advantage under state law.

The district court granted the defendants’ motions for summary judgment dismissing the Lanham Act and state law trademark claims as well as the state law right of publicity claim.  A jury returned a verdict in favor of Hope Road on the false endorsement claim against all defendants.  The jury also returned a verdict against A.V.E.L.A. on the interference claim.

Hope Road appealed the district court’s summary judgment grant and the defendants appealed from the jury verdict.  The 9th Circuit affirmed both the district court grant of summary judgment and the jury’s finding of interference against A.V.E.L.A.  The 9th Circuit also affirmed the jury’s finding of false endorsement under the Lanham Act, finding the evidence was sufficient for a jury to find a violation.

At issue in the false endorsement claim was whether there was a likelihood of confusion as to the sponsorship or approval of the goods bearing Marley’s image.  At trial, Hope Road presented evidence of confusion using a survey of mall shoppers.  The defendants argued the survey questions were too indefinite as to who approved the products to satisfy a claim of false endorsement.  The 9th Circuit disagreed, explaining that a survey taker need not identify a single party as the sponsor of the goods in order for the survey to be useful or relevant.

A.V.E.L.A. argued on appeal that a “persona” as used in the survey is too amorphous to constitute a “name, symbol, or device” as protected under the Lanham Act.  Again, the 9th Circuit disagreed, concluding that the Lanham Act recognizes a claim for misuse of a celebrity’s persona.

A.V.E.L.A. and Freeze also argued that application of the Lanham Act on the use of a deceased celebrity’s persona essentially creates a federal right of publicity.  On this issue, the 9th Circuit distinguished between publicity right claims under state law and Lanham Act claims, the latter of which impose the additional requirement that the use be likely to confuse as to the sponsorship or approval of the defendant’s goods.  As a consequence of the likelihood of confusion factor, the Court explained that a celebrity’s death does not preclude a Lanham Act claim.

A.V.E.L.A. also raised several potentially dispositive defenses including aesthetic functionality, a Copyright Act pre-emption and a First Amendment issue.  However, the 9th Circuit found those defenses had been waived as they were not sufficiently asserted before the district court to be preserved for appeal.