Block on Trump's Asylum Ban Upheld by Supreme Court
Another day, another iconic 1960s musician's image going to federal court over trademark disputes. In August, the Ninth Circuit said that Jimi Hendrix's post-mortem publicity rights survived in Washington state, thanks to a state statute allowing it (otherwise, publicity rights don't normally survive death).
Last week, the Ninth Circuit affirmed a jury verdict finding several companies violated the Lanham Act by using Bob Marley's image on T-shirts and other merchandise.
A Likelihood of Confusion
In spite of the gobs of Bob Marley merchandise you've seen out in the world, only one company -- Zion Rootswear -- has an exclusive license to make merchandise bearing Marley's likeness. Other companies, though, used Marley's image on posters and merchandise sold at Walmart, among other places.
The issue boils down to whether a reasonable person might be confused into thinking that Marley-branded merchandise made by unauthorized companies is endorsed by the Marley estate.
At trial, the biggest factual contention was whether there was a likelihood of confusion. As with other trademark disputes, this question was settled through the use of a survey. The plaintiffs divided 509 mall-goers into two groups: One group was shown defendant's T-shirt and asked who gave their permission for the shirt. A control group was shown a T-shirt with the image of a generic black man with dreadlocks. The results: 37 percent of the first group and 30 percent of the second group said Bob Marley or Marley's estate gave permission. That's pretty solid.
The defendants argued on appeal that using the Lanham Act to protect a dead celebrity's image "essentially creates a federal right of publicity." The Ninth Circuit said a right of publicity and a Lanham Act claim were distinguishable because the latter requires "an additional element -- that the use be likely to confuse as to the sponsorship or approval of a defendant's goods."
Dissenting but Concurring
Judge Morgan Christen concurred and dissented in part. Her dissent was to the majority's reasoning in the Lanham Act analysis. In Christen's opinion, "confusion" can't solely be related to the endorsement or sponsorship of a product; there must be "some evidence that the confusion could have had an impact on the consumers' purchasing decisions," given that the purpose of the Lanham Act "is to prevent consumers from being misled or tricked into making purchases through use of a trademark."
While the survey responses indicated that consumers might be confused about who authorized the creation of the infringing Marley products, Christen said there wasn't enough evidence that this confusion would lead to purchases of the ersatz Marley swag.
She nevertheless concurred in the result because the other Lanham Act factors weighed in favor of a violation, and because the defendants didn't use a variety of defenses available to them, including the aesthetic functionality test, Copyright Act defense, and First Amendment defense. Christen emphasized how narrow the court's decision was: "It is difficult to over-state the extent to which this result is the product of the unique way this case was litigated."