Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc.
778 F.3d 1059
| 9th Cir. | 2015Background
- Bob Marley’s image rights are owned by Hope Road, which licensed Marley’s persona to Zion for Marley merchandise.
- A.V.E.L.A., X One X Movie Archive, and Valencia allegedly licensed/produced Marley-themed apparel later sold at major retailers.
- Plaintiffs alleged five claims, including Lanham Act false endorsement and interference with prospective economic advantage; district court dismissed some state claims.
- Jury found Defendants liable for false endorsement under §1125(a) and for interference with Hope Road’s prospective economic advantage against A.V.E.L.A. only.
- District court awarded profits disgorgement to A.V.E.L.A., Jem, and Freeze; and later awarded substantial attorneys’ fees to Plaintiffs.
- Nevada right of publicity claim was granted summary judgment for Defendants; district court ordered profits disgorgement and fees under §1117(a).
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether §1125(a) false endorsement was shown | Hope Road/Marley estate showed likelihood of confusion | Use of Marley image on goods cannot constitute endorsement | Evidence supported likelihood of confusion; verdict affirmed |
| Whether profits disgorgement was proper and willful | Defendants acted willfully; profits attributable to infringement | Seventh Amendment and due process concerns; profits require strict proof | District court properly found willfulness and awarded profits |
| Whether attorneys’ fees were proper as to A.V.E.L.A. defendants | Exceptional case; prevailing party standard met | Not all defendants acted willfully; fees improper for some | Fees upheld for A.V.E.L.A. Defendants; Jem and Freeze denied |
| Whether summary judgment on Nevada right of publicity was correct | Rights waivable only upon timely registration; six-month window interpreted narrowly | Statutory waiver applies broadly to all rights if not timely registered | Nevada right of publicity summary judgment affirmed |
| Whether there was sufficient evidence for intentional interference claim | Lost Walmart order showed harm from Defendants’ conduct | Evidence insufficient or improperly relied upon cross-examination | Sufficient evidence supported interference finding |
Key Cases Cited
- White v. Samsung Elecs. Am., Inc., 971 F.2d 1395 (9th Cir. 1992) (celebrity likeness sufficiency under Lanham Act)
- Reebok Int’l., Ltd. v. Marnatech Enters., Inc., 970 F.2d 552 (9th Cir. 1992) (equitable nature of disgorgement of profits)
- Cairns v. Franklin Mint Co., II, 107 F.Supp.2d 1212 (C.D. Cal. 2000) (strength of association between celebrity and plaintiff in §1125(a))
- Cairns II, 107 F.Supp.2d 1212 (C.D. Cal. 2000) (updating factor for non-celebrity plaintiff in likelihood of confusion)
- Downing v. Abercrombie & Fitch, 265 F.3d 994 (9th Cir. 2001) (eight-factor test for likelihood of confusion)
- Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340 (Supreme Court 1998) (seventh amendment and classification of claims as legal vs. equitable)
- City of Monterey v. Del Monte Dunes at Monterey, Ltd., 526 U.S. 687 (1999) (test for applying Seventh Amendment to equitable remedies)
- Dairy Queen, Inc. v. Wood, 369 U.S. 469 (1962) (distinguishes legal damages from disgorgement as equitable relief)
- Klamath Siskiyou Wildlands Ctr. v. U.S. Bureau of Land Mgmt., 589 F.3d 1027 (9th Cir. 2009) (prevailing party standard for §1117(a) fees)