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Appeals court upholds ruling on unofficial Bob Marley t-shirts

By | Published on Monday 23 February 2015

Bob Marley

The Bob Marley estate last week successfully persuaded an appeals court in the US to uphold a ruling in their favour over unofficial t-shirts that featured the late reggae star. Consumer confusion was at the heart of the case, and, somewhat aptly, the rules over consumer confusion are rather confusing.

The Marley estate, and their merchandising company Fifty-Six Hope Road Music, first sued clothing makers AVELA over some unofficial Bob Marley t-shirts it was selling in Walmart and Target back in 2008, winning the case three years later. AVELA was ordered to pay the Marley estate $750,000 in profits generated by the t-shirts, as well as $300,000 in damages and $1.5 million to cover legal costs. So the clothing firm appealed.

The case centred not on the so-called publicity right that can exist at a State level in the US, but on federal trademark law, mainly the Lanham Act. As is often the case in scenarios such as this, the t-shirt maker hadn’t infringed anyone’s copyright with the picture of the celeb it had used, and no specific trademarks – names, logos, slogans – were exploited.

Where a wider publicity right can’t be invoked, the question is whether customers will be misled into thinking they are buying officially endorsed merchandise when they are not. In the recent Rihanna/Topshop case in the UK that was achieved through the principle of ‘passing off’; but in this case the false endorsement elements of American trademark law were used. And although not as narrowly defined as passing off, those US laws are much narrower than publicity rights.

According to The Hollywood Reporter, one of the appeal judges hearing the case noted that:
“This case presents a question that is familiar in our circuit. When does the use of a celebrity’s likeness or persona in connection with a product constitute false endorsement that is actionable under the Lanham Act?”

As we said, consumer confusion is key here, though the appeal judges seemed to be split on whether that confusion needed to be likely or actual. Nevertheless, lawyers for the Marley estate presented a survey in which 37% of just over 500 shoppers shown one of AVELA’s offending t-shirts said they assumed the garment would have been approved by the estate. The survey seems to have swung it, with the appeal judges upholding the original ruling.

Though some confusion remains as to what constitutes consumer confusion, and whether it must be likely or actual. But the size of this lawsuit might make other unofficial merch-makers Stateside wary of taking any chances. Either that, or expect some big ‘not endorsed’ stickers to be added to the merchandise.



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