An Infringed Image

By Tanner Bowen

Tanner Bowen is a freshman at the University of Pennsylvania.

Bob Marley has become one of the most influential figures in modern pop culture, as well as a notoriously cited musical influence ever since his death over three decades ago. However, since his death, numerous attempts to falsely endorse his famous image upon t-shirts and other merchandise found at large retailers such as K-Mart, Wal-Mart, and J.C. Penney have arisen. Hope Road, an entity made up of Marley’s descendants, once again took up this battle in an attempt to stop the dispersal of Marley’s image and recuperate lost revenue from such actions.

In Fifty-Six Hope Road Music v. A.V.E.L.A., Hope Road sued A.V.E.L.A., Inc., X One X Movie Archive, Inc., and other defendants for acquiring photographs of Bob Marley in 2004. The Ninth Circuit Court of Appeals recently ruled that A.V.E.L.A. and other defendants were guilty of knowingly using Bob Marley’s image on their merchandise as well as falsely endorsing it to other customers in Nevada. In addition, Hope Road was entitled to the net profits generated by all of the defendant entities from the merchandise sold which had Marley’s image illegally placed upon it and finally reimbursement for attorney fees.

To start, under the Lanham Act, Hope Road has a property right to Marley’s persona. This legislation was used as one of the primary factors in the Ninth Circuit’s opinion, which considered whether the actions of A.V.E.L.A. and the other enterprises could have caused confusion regarding the “origin, sponsorship, or approval” of the items bearing Marley’s image [1]. Upon further discoveries by the Court, it was found that A.V.E.L.A. intentionally created shirts or other merchandise that looked very similar to the merchandise sold by Zion Rootswear, LLC, who has an agreement with Hope Road to sell merchandise with Marley’s image.

Beyond that fact, the vice president of licensing for one of the other defendants, Freeze, Inc., had received a phone call from the licensing agent of Hope Road before the company started manufacturing the merchandise with Marley’s image in which Hope Road told Freeze that Hope Road owned the rights to Bob Marley. The vice president of licensing for Freeze also had knowledge that Zion had a license to sell Marley’s merchandise that predated Freeze’s first sales. This showed the awareness of the defendants and their choice to deliberately ignore requests from Hope Road.

The Ninth Circuit also considered these purposeful actions in determining whether A.V.E.L.A. and the other defendants interfered in Hope Road’s potential sales. The fact that the defendants brushed off these warnings from Hope Road, coupled with the fact that A.V.E.L.A. actually lost a shipment to retailer Wal-Mart, whose potential sales could have been about $250,000, was enough for the Ninth Circuit to uphold the interference claim and to also announce an “exceptional case” in awarding the defendants to pay attorney fees.  

All in all, this case presents a routine false endorsement claim against a corporate entity that willingly sold merchandise that they did not have a license to sell.  However, a bigger issue here is the development of the field of law around a person’s image. Although one may think that any image is naturally protected under false endorsement claims, it often largely depends upon the relation of the entity making the claim to the person’s image. Since Hope Road is composed of Bob Marley’s direct descendants, their connection to his image is strong. However, other cases involving Princess Diana have shown that if there is a weak association between the plaintiff and the person’s image or if the image has been used so many times by different entities that there is no longer an established connection between the plaintiff and the celebrity’s image, then the image may not be protected [2].  

Many factors affect public association with an image, and often times it falls to the courts to decide if the false endorsement of an image would be enough to cause confusion on the part of consumers.

[1]   Lanham Act, 15 U.S.C. § 1125(a).
[2]  Cairns II, 107 F. Supp. 2d at 1217.


Photo Credit:  "Nine-Mile-Jamaica" by Jasonbook99 - Own work. Licensed under CC BY-SA 3.0 via Wikimedia Commons - http://commons.wikimedia.org/wiki/File:Nine-Mile-Jamaica.JPG#mediaviewer/File:Nine-Mile-Jamaica.JPG