Is that an official Bob Marley shirt you’re wearing?  In Fifty-Six Hope Road Music, Ltd. V. A.V.E.L.A. Inc., the Ninth Circuit recently affirmed a jury decision finding that defendants’ use of Bob Marley’s image on T-shirts and other merchandise constituted false endorsement under the Lanham Act and intentional interference with a prospective economic advantage.

Plaintiff Fifty-Six Hope Road Music Ltd. (“Hope Road”) is an entity owned by Bob Marley’s children that was established for the purpose of managing Marley’s intellectual property rights.  Co-Plaintiff Zion Rootswear LLC is Hope Road’s exclusive licensee to make merchandise bearing Marley’s image.

Defendants, however, made competing merchandise bearing Marley’s likeness using photographs that they acquired from Roberto Rabanne, the photographer who had taken the pictures of Bob Marley.

Plaintiffs filed suit in the District Court for the District of Nevada alleging: trademark infringement under 15 U.S.C. § 1114; false endorsement under 15 U.S.C. § 1125(a); common law trademark infringement; unauthorized commercial use of right to publicity under Nevada state law; and intentional interference with prospective economic advantage.

With respect to the federal and common law trademark infringement claims, as well as the state law right of publicity claim, the district court granted summary judgment in favor of the defendants.  For the remaining claims for false endorsement and intentional interference with a prospective economic advantage, a jury found in favor of the plaintiffs, awarding almost $800,000 in damages and $1.5 million in attorneys’ fees.

The Ninth Circuit affirmed all aspects of the district court’s decisions, including granting summary judgment for three of the claims, the award of damages and attorneys’ fees, and the jury’s decision in favor of the plaintiffs for the false endorsement and interference claims.  In evaluating the false endorsement claim, the Ninth Circuit explained that this case does not create a federal right of publicity (as defendants argued) because false endorsement under the Lanham Act requires a showing of likelihood of confusion and the right of publicity does not.  In this case, the jury found that there was a likelihood of confusion, and the Ninth Circuit held that there was sufficient evidence to support that finding.

Although this decision generally affirms the principle that “a celebrity persona [is] identifiable intellectual property protectable under the Lanham Act,” the scope of the decision may be limited.  In what may be a cautionary tale for preserving arguments for appeal, Defendants waived several defenses—including defenses based on aesthetic functionality, the First Amendment, and copyright interest in the photographs used—because they did not properly raise them in the lower court.

As Judge Christen stated in her partial dissent, “We address the case as it is presented to us, but it is worth restating that our holding is very narrow, and largely a function of issues and defenses the parties chose not to litigate.”