Fifty-Six V Avela (Bob Marley ROP) (Plaint. PMSJ)

Case 2:08-cv-00105-PMP-GWF Document 114 Filed 11/30/09 Page 1 of 34
1 MANATT, PHELPS & PHILLIPS, LLP

JILL M. PIETRINI (Bar No. CA 138335)
2 e-mail: jpietrini@manatt.com
BARRY E. MALLEN (Bar No. CA 120005)
3 e-mail: bmallen@manatt.com
PAUL A. BOST (Bar No. CA 261531)
4 e-mail: pbost@manatt.com
11355 West Olympic Boulevard
5 Los Angeles, CA 90064-1614
Telephone: (310) 312-4000
6 Facsimile: (310) 312-4224
7 JOLLEY, URGA, WIRTH, WOODBURY & STANDISH

WILLIAM R. URGA (Bar No. NV 1195)
8 email: wru@juww.com
L. CHRISTOPHER ROSE (Bar No. NV 7500)
9 email: lcr@juww.com
3800 Howard Hughes Pkwy.
10 Wells Fargo Tower, 16th Floor
Las Vegas, NV 89169
11 Telephone: (702) 699-7500
Facsimile: (702) 699-7555
12
Counsel for Plaintiffs and Counter-Defendants
13 FIFTY-SIX HOPE ROAD MUSIC, LTD. and
ZION ROOTSWEAR, LLC
14
15 UNITED STATES DISTRICT COURT
16 DISTRICT OF NEVADA
17 Fifty-Six Hope Road Music, Ltd., a Case No. 2:08-cv-00105-PMP-GWF

Bahamian corporation; and Zion
18 Rootswear, LLC, a Florida limited liability PLAINTIFFS’ MOTION FOR SUMMARY
company, ADJUDICATION ON PLAINTIFFS’ FALSE
19 DESIGNATION OF ORIGIN AND
Plaintiffs, ASSOCIATION CLAIM UNDER 15 U.S.C.
20 § 1125(a), AND BRIEF IN SUPPORT
vs. THEREOF
21
A.V.E.L.A., Inc., a Nevada corporation;
22 Sci-Fi Productions, Inc., dba X One X
Movie Archives, a Nevada corporation;
23 JEM Sportswear, a California corporation;
Central Mills, Inc. (Freeze), a New York
24 corporation; and Leo Valencia, an
individual,
25
Defendants.
26
27 AND RELATED COUNTERCLAIM.

28
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1 TABLE OF CONTENTS
2 Page
3 I. INTRODUCTION .............................................................................................................. 1
4 II. STATEMENT OF FACTS ................................................................................................. 3

A. Bob Marley is an Iconic and Famous Figure .......................................................... 3
5
B. Fifty-Six Hope Road’s Ownership of the Marley Intellectual Property ................. 5
6 1. The Identity of Bob Marley Operates as a Trademark................................ 6
7 2. Plaintiffs’ Have Consistently Exploited and Enforced their Rights
in the Marley Intellectual Property ............................................................. 7
8 C. Defendants’ Undisputed Willful Infringement of the Marley Intellectual
Property ................................................................................................................... 8
9
III. STANDARD FOR SUMMARY ADJUDICATION........................................................ 11
10
IV. PLAINTIFFS ARE ENTITLED TO SUMMARY ADJUDICATION ON THEIR
11 FALSE ASSOCIATION CLAIM ..................................................................................... 12
A. Plaintiffs’ Own Trademark Rights in Bob Marley’s Identity ............................... 12
12
B. Defendants Have Used, Without Authorization, Reproductions and
13 Colorable Imitations of the Marley Intellectual Property in Connection with
the Sale and Distribution of Goods ....................................................................... 15
14 1. Defendants Have Used Copies and Reproductions of Plaintiffs’
Trademark in Bob Marley’s Identity......................................................... 15
15
2. Defendants’ Use of the Bob Marley Song and Music Titles Further
16 Draws the Association to Bob Marley ...................................................... 19
17 3. Defendants’ Use of Bob Marley and Marley to Advertise Their

Products Further Draws Sponsorship and Association ............................. 20
18 C. Defendants’ Use of the Marley Intellectual Property is Likely to Cause
Confusion .............................................................................................................. 21
19
1. Strength and Level of Recognition of Bob Marley................................... 21
20 2. Relatedness of the Fame of Bob Marley to Defendants’ Products ........... 22
21 3. The Similarity of the Likenesses Used by the Parties............................... 23
4. Evidence of Actual Confusion .................................................................. 24
22
5. Similarity of Marketing Channels Used.................................................... 25
23
6. The Likely Degree of Purchaser Care is Low........................................... 26
24 7. Defendants’ Intent in Selecting the Use of Bob Marley’s Image ............. 26
25 D. Given the Nature of Defendants’ Use of the Marley Intellectual Property,
the Sleekcraft Test is the Appropriate Test for Likelihood of Confusion............. 27
26 V. CONCLUSION ................................................................................................................. 30
27
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1 TABLE OF AUTHORITIES
2 Page
3 CASES
4 Abdul-Jabbar v. General Motors Corporation,
75 F.3d 1391 (9th Cir. 1996)................................................................................................... 13
5 Allen v. Men’s World Outlet, Inc.,
679 F. Supp. 360 (S.D.N.Y. 1988).......................................................................................... 13
6
Allen v. National Video,
7 610 F. Supp. 612 (S.D.N.Y. 1985).................................................................................... 12, 14
AMF, Inc. v. Sleekcraft Boats,
8 599 F.2d 341 (9th Cir. 1979)............................................................................................. 21, 27
9 Anderson v. Liberty Lobby, Inc.,
477 U.S. 242 (1986) ................................................................................................................ 11
10 Brookfield Communications, Inc. v. West Coast Entertainment Corp.,
174 F.3d 1036 (9th Cir. 1999)........................................................................................... 21, 27
11
Cairns v. Franklin Mint Co.,
12 24 F.Supp.2d 1013 (C.D. Cal. 1998), aff’d., 292 F.3d 1139 (9th Cir. 2002)........ 13, 14, 16, 17
Celotex Corporation v. Catrett,
13 477 U.S. 317 106 S. Ct. 2548 (1986) ...................................................................................... 11
14 Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc.,
886 F.2d 490 (2d Cir. 1989).................................................................................................... 28
15 Comedy III Productions, Inc. v. Gary Saderup, Inc.
(2001) 25 Cal.4th 387 ................................................................................................. 28, 29, 30
16
Cullman Ventures, Inc. v. Columbian Art Works, Inc.,
17 717 F. Supp. 96 (S.D.N.Y. 1989)............................................................................................ 22
Downing v. Abercrombie & Fitch,
18 265 F.3d 994 (9th Cir. 2001)....................................................................................... 12, 21, 23
19 Dr. Seuss Entertainment, L.P. v. Penguin Books U.S.A., Inc.,
109 F.3d 1394 (9th Cir. 1997)................................................................................................. 29
20 Elvis Presley Enterprises, Inc. v. Capece,
141 F.3d 188 (5th Cir. 1998)................................................................................................... 19
21
ETW Corp. v. Jireh Pub., Inc.,
22 332 F.3d 915 (6th Cir. 2003)............................................................................................ passim
Experience Hendrix, LLC v. Electric Hendrix, LLC,
23 90 U.S.P.Q. 2d 1883 (W.D. Wash. 2008) ................................................................... 23, 26, 27
24 Exxon Corp. v. Texas Motor Exchange, Inc.,
628 F.2d 500 (5th Cir. 1980)................................................................................................... 25
25 GoTo.com, Inc. v. Walt Disney Co.,
202 F.3d 1199 (9th Cir. 2000)........................................................................................... 21, 26
26
HMH Publishing Co., Inc. v. Brincat, 504 F.2d 713 (9th Cir. 1974)............................................ 27
27 Jada Toys, Inc., v. Mattel, Inc.,
518 F.3d 628 (9th Cir. 2008)................................................................................................... 25
28
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1 TABLE OF AUTHORITIES
(continued)
2 Page
3 Landham v. Lewis Galoob Toys, Inc.,
227 F.3d 619 (6th Cir. 2000)................................................................................................... 12
4 Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,
475 U.S. 574, 106 S. Ct. 1348 (1986) ..................................................................................... 11
5
National Football League v. Governor of Delaware,
6 435 F. Supp. 1372 (D. Del. 1977) ........................................................................................... 25
Nutri/System, Inc. v. Can-Stan Industries, Inc.,
7 809 F.2d 601 (9th Cir. 1987)................................................................................................... 26
8 Parks v. LaFace Records,
329 F.3d 437 (6th Cir. 2003)....................................................................................... 12, 14, 18
9 Pirone v. MacMillan, Inc.,
894 F.2d 579 (2d Cir. 1990).................................................................................................... 19
10
Playboy Enterprises, Inc. v. Netscape Communications Corp.,
11 354 F.3d 1020 (9th Cir. 2004)................................................................................................. 21
Rogers v. Grimaldi,
12 875 F.2d 994 (2d Cir. 1989).............................................................................................. 27, 28
13 Surf Line Hawaii Ltd. v. Ahakuelo,
13 U.S.P.Q. 2d, 1975 (D. Haw. 1989) .................................................................................... 26
14 Toho Co. Ltd. v. William Morrow & Co.,
33 F.Supp.2d 1206 (C.D. Cal. 1998) ...................................................................................... 12
15
United States Jaycees v. San Francisco Junior Chamber of Commerce,
16 354 F. Supp. 61 (N.D. Cal. 1972), aff’d 513 F.2d 1226 (9th Cir. 1975)................................. 11
Waits v. Frito-Lay, Inc.,
17 978 F.2d 1093 (9th Cir. 1992)............................................................................... 12, 13, 14, 18
18 Wendt v. Host International, Inc.,
125 F.3d 806 (9th Cir. 1997)............................................................................................. 13, 24
19 White v. Samsung Electronics America, Inc.,
971 F.2d 1395 (9th Cir. 1992)..................................................................................... 16, 20, 21
20
STATUTES
21 15 U.S.C. § 1125(a) ............................................................................................................... passim
22 15 U.S.C. § 1127 ........................................................................................................................... 21
Section 43(a) [15 U.S.C. § 1125(a)] ............................................................................................. 18
23
OTHER AUTHORITIES
24 McCarthy on Trademarks and Unfair Competition § 23:11.50 (4th Ed. 2009) ............... 18, 28, 30
25 The Right of Publicity: Past, Present, and Future,
1207 PLI Corp. Law and Prac. Handbook, 159 (Oct. 2000) Keller, Bruce P......................... 13
26 RULES
27 Federal Rules of Civil Procedure 56(c)......................................................................................... 11
28
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1 MOTION FOR SUMMARY ADJUDICATION AND REQUEST FOR HEARING
2 Plaintiffs and Counter-Defendants Fifty-Six Hope Road Music, Ltd. (“Fifty-Six Hope
3 Road”) and Zion Rootswear, LLC (“Zion”) (collectively, “Plaintiffs”) hereby submit this Motion
4 for Summary Adjudication on Plaintiffs’ second claim for relief against Defendants A.V.E.L.A.,
5 Inc. (“AVELA”), Leo Valencia, Sci-Fi Productions, Inc., dba X One X Movie Archives
6 (“X One X”), JEM Sportswear, Inc. (“JEM”), and Central Mills, Inc. dba Freeze (“Freeze”)
7 (collectively, “Defendants”), for False Designation of Origin and Sponsorship under 15 U.S.C. §
8 1125(a) (the “False Association Claim”). Plaintiffs are entitled to summary adjudication on their
9 False Association Claim given that Defendants’ unauthorized use in commerce of the identity of
10 Bob Marley, including his image and likeness (collectively, “the Marley Intellectual Property”),
11 constitutes a false designation of origin and false association, sponsorship, or endorsement as
12 defined by 15 U.S.C. § 1125(a) (“Section 1125(a)”). It is undisputed that Fifty-Six Hope Road
13 owns the rights associated with Bob Marley and that there is a likelihood of confusion as to
14 association, sponsorship, or endorsement caused by Defendants’ activities. Defendants have
15 widely, intentionally, and to great profit, used the Marley Intellectual Property without
16 authorization, so as to falsely associate their products with, and falsely suggest endorsement by,
17 Bob Marley and Plaintiffs. Defendants have no evidence to countervail these facts.
18 This motion is made and based upon the following attached memorandum of points and
19 authorities and the accompanying declarations of Doreen Crujeiras, Jill M. Pietrini and
20 Timothy J. Ervin, as well as the pleadings and papers on file herein. Plaintiffs request a hearing
21 on this motion.
22 MEMORANDUM OF POINTS AND AUTHORITIES
23 I. INTRODUCTION
24 This case is ripe for summary judgment on Plaintiff Fifty-Six Hope Road’s False
25 Association Claim. As explained by the undisputed facts summarized below, Defendants’
26 activities, in creating, marketing and exploiting unauthorized merchandise bearing the image of
27 the late international recording artist icon Bob Marley constitutes a false designation of origin and
28 violation of Section 1125(a).

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1 Fifty-Six Hope Road, owned by the children of Bob Marley, has succeeded to rightful
2 ownership of all of the Marley Intellectual Property. Appreciative of the value of these assets,
3 Fifty-Six Hope Road and its affiliates have invested significant time, energy, and capital into
4 cultivating Bob Marley’s legacy. To this end, Fifty-Six Hope Road granted many licenses to sell
5 merchandise bearing indicia of Bob Marley’s identity, specifically, his image, likeness, and name,
6 including an exclusive license to Zion for certain apparel (including t-shirts). In total disregard of
7 Plaintiffs’ intellectual property rights, Defendants have flooded the market with unauthorized
8 apparel and merchandise -- mainly, t-shirts and beach towels -- featuring the image and likeness
9 of Bob Marley, also bearing Bob Marley’s song titles, album titles, and lyrics (“Bob Marley
10 Products”), some of which are also federally registered trademarks, e.g., CATCH A FIRE and
11 ROOTS ROCK REGGAE. It is undisputed that Defendants did so with full knowledge of
12 Plaintiffs’ intellectual property rights.
13 Defendants try to avoid liability by not using Bob Marley’s name directly on the Bob
14 Marley Products. Those actions are ineffective. The likelihood of confusion or mistake or
15 deceive consumers as to Defendants’ affiliation, endorsement, or association with Bob Marley
16 and Plaintiffs, or as to Bob Marley and Plaintiffs’ sponsorship or approval of Defendants’ goods
17 and commercial activities is undisputed. To that end, Plaintiffs have an incontrovertible survey
18 that plainly indicates the confusion resulting from Defendants’ activities. The Bob Marley
19 Products themselves and how they are promoted under his name also amply illustrate the
20 likelihood of confusion. Defendants have no evidence to controvert Plaintiffs’ survey, or any
21 other material fact. Rather, Defendants claim they have a right to use the Marley Intellectual
22 Property solely based on their claim to having purchased photographs of Bob Marley from a third
23 party (Roberto Rabanne), and because they do not use Bob Marley’s name directly on the Bob
24 Marley Products bearing those photographic images. This is insufficient as a matter of law to
25 defeat Plaintiffs’ False Association Claim. Defendants have made a transformative use of the
26 photographs to create merchandise. Defendants have taken everything they can from Fifty-Six
27 Hope Road to create an association with Bob Marley for that merchandise, and the facts are
28 undisputed in this regard. Accordingly, as a matter of law, Defendants have falsely associated
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1 their products with Bob Marley in violation of Section 1125(a), and Plaintiffs are entitled to
2 summary adjudication on their second claim for relief.
3 II. STATEMENT OF FACTS

4 The material facts in this motion are not in dispute, as shown below.
5 A. Bob Marley is an Iconic and Famous Figure
6 Bob Marley was, and is, an international icon. Bob Marley was a musical and cultural
7 superstar during his life whose fame and popularity has only increased since his premature death
8 from cancer in 1981 at the age of 36. (SUF ¶ 1.) Bob Marley was a Jamaican singer, songwriter,
9 performer, and guitarist responsible for introducing the world to reggae music; that said, his songs
10 transcend the genre and are well known amongst the general population. (SUF ¶ 2.) These songs
11 include the hits “I Shot the Sheriff,” “No Woman, No Cry,” “One Love,” “Get Up, Stand Up,”
12 “Three Little Birds,” “Jamming,” “Redemption Song,” “Stir it Up,” and “Exodus,” among others.
13 (SUF ¶ 3.) During his lifetime and posthumously, Bob Marley released 15 albums and dozens of
14 compilations, many still in print all well-recognized. To date, Bob Marley recordings have sold
15 more than 100 million units. Bob Marley’s posthumously released record album, “Legend,” is
16 the biggest selling reggae album of all time, having sold more than 20 million records worldwide
17 and being certified ten times Platinum in the U.S. (SUF ¶ 4.)
18 In 1976, Bob Marley and the Wailers was named Band of the Year by Rolling Stone
19 magazine, In 1978, Bob Marley was awarded the Peace Medal of the Third World from the
20 United Nations. Bob Marley was inducted into the Rock and Roll Hall of Fame in 1994. (SUF
21 ¶ 5.) In 1999, Time magazine chose Bob Marley’s “Exodus” album as the greatest album of the
22 20th Century, and the album has received similar accolades from other publications and
23 entertainment companies. (SUF ¶ 6.) In February 1981, before his death, Bob Marley was
24 awarded Jamaica’s third highest honor – the Jamaican Order of Merit. In February 2001, Bob
25 Marley received a star on the Hollywood Walk of Fame. In 2001, Bob Marley was posthumously
26 awarded the “Grammy Lifetime Achievement Award” by the National Academy of Recording
27 Arts and Sciences. (SUF ¶ 7.) In 2004, Rolling Stone magazine ranked Bob Marley No. 11 on
28 the list of 100 Greatest Artists of All Time, and recently the BBC named Bob Marley’s song
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1 “One Love” the Song of the Millennium. In 2006, the State of New York established “Bob
2 Marley Boulevard” in East Flatbush in Brooklyn, New York. (SUF ¶ 8.) That same year, the
3 Bank of Jamaica issued 1,000 Bob Marley gold and silver coins made by the British Royal Mint,
4 and Bob Marley's home in Jamaica was declared a national monument. (SUF ¶ 9.) In 2008,
5 Bob Marley was ranked by Rolling Stone No. 19 of 100 Greatest Singers of All Times in a special
6 issue of the magazine. (SUF ¶ 10.) And recently, Bob Marley's song "Catch A Fire" was named
7 as a 2010 inductee into the Grammy Hall of Fame. (SUF ¶ 11.)
8 There is a Bob Marley museum at Bob Marley’s residence, located at 56 Hope Road,
9 Kingston, Jamaica. Fifty-Six Hope Road is named after the location of Bob Marley’s residence.
10 Fifty-Six Hope Road maintains a website at <bobmarley.com> where merchandise is sold, and
11 operates a fan club. Currently there are 165,000 members of the Bob Marley fan club.
12 (SUF ¶ 12.) Fifty-Six Hope Road also has Bob Marley websites on various social networking
13 sites, which collectively have more than 5 million visitors. (SUF ¶ 13.) To this day, Bob Marley
14 garners significant amounts of unsolicited publicity from the media. (SUF ¶ 14.) His songs,
15 including those song titles used by Defendants, are often licensed by third parties, e.g., the
16 Jamaica Tourist Board licensed “One Love” for a national ad campaign aired in the U.S. (SUF
17 ¶ 15), and third parties request permission to use his name in motion pictures and other
18 entertainment works, e.g, Marley and Me. (SUF ¶ 16.) Bob Marley is on the short list of best
19 known, and most important, musical artists of the last half-century. Several of Defendants’
20 licensees and retailers concede Bob Marley’s fame. (SUF ¶ 17.)
21 Fifty-Six Hope Road is composed and owned by children of Bob Marley. (SUF ¶ 18.)
22 Fifty-Six Hope Road was formed when Rita Marley, Bob Marley’s wife, and nine of his eleven
23 children (collectively, “the Marley Beneficiaries”) consolidated their interests and formed Fifty-
24 Six Hope Road as a Bahamian corporation. (SUF ¶ 19.) Fifty-Six Hope Road was established to
25 “engage in the business of the acquisition, maintenance, development, and exploitation of assets,
26 rights, and commercial interests pertaining to the late Robert Nesta Marley . . .” (SUF ¶ 20.) In
27 1986, Fifty-Six Hope Road, through its predecessors, entered into its first merchandise license for
28 Bob Marley’s identity. (SUF ¶ 21.) Since then, Fifty-Six Hope Road has entered into more than
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1 48 licenses with third parties to use Bob Marley’s identity on more than 100 products. (SUF
2 ¶ 22.) On February 1, 1999, Fifty-Six Hope Road entered into an agreement with Zion, whereby
3 Zion was granted the exclusive worldwide license to design, manufacture, and sell T-shirts
4 bearing the image and likeness of Bob Marley and other manifestations of Bob Marley’s identity.
5 This agreement persists to the present day. (SUF ¶ 23.)
6 B. Fifty-Six Hope Road’s Ownership of the Marley Intellectual Property

7 Fifty-Six Hope Road is the undisputed and sole owner of the BOB MARLEY trademarks1
8 and Bob Marley’s identity, including his name, image, and likeness. (SUF ¶ 24.) Fifty-Six Hope
9 Road accrued these rights from Bob Marley via intestate succession. Bob Marley died in 1981,
10 intestate, as a domiciliary and legal resident of Jamaica. (SUF ¶ 1.) Initially, Bob Marley’s estate
11 and all of its assets, including all of Marley’s intellectual property rights and rights to Bob
12 Marley’s name and likeness (“the Marley Rights”), succeeded to the Marley Beneficiaries and
13 were administered by Mutual Security Merchant Bank and Trust Co. Ltd. (“the Bank”). (SUF
14 ¶ 28.) The Marley Rights were subsequently purchased by Island Logic, Inc., a New York
15 corporation, in 1988. (SUF ¶ 29.) The circumstances of the sale were disputed by certain of the
16 Marley children before the Jamaican Court of Appeals, such that the Bank was made to re-
17 advertise the Marley Rights for sale, resulting in Island Logic, Inc.’s assignment of the Marley
18 Rights to Island Logic Ltd., a Bahamas company in December 1989. In December 1989, the
19 Bank assigned all name, likeness, and biographical rights to Island Logic Ltd. The sale and
20 subsequent assignment were confirmed by the Supreme Court of Jamaica in December 1991.
21 (SUF ¶ 30.)
22 In 1990, the Marley Rights were gifted from Island Logic Ltd. to Stichting Bob Marley
23 (“Stichting”), a Netherlands charitable foundation. (SUF ¶ 31.) During the time it owned the
24
1
25 Fifty-Six Hope Road owns U.S. Registration No. 2,349,361 for BOB MARLEY for goods in
a variety of classes, including t-shirts, thermal shirts, jackets, hats, caps, sweatshirts, ties, and
26 bandanas in Class 25. (SUF ¶ 25.) The BOB MARLEY registration vested on May 16, 2000,
and, on March 30, 2006, Fifty-Six Hope Road’s Affidavit of Continued Use and Affidavit of
27 Incontestability were accepted, making the registration incontestable. (SUF ¶ 26.) Fifty-Six
Hope Road has also used MARLEY alone for clothing since 2003, and that mark is pending
28 federal registration. (SUF ¶ 27.)
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1 Marley Rights, Stichting licensed to Bob Marley Music, Inc. (“Bob Marley Music”), a California
2 corporation, the rights to Bob Marley’s name and likeness. (SUF ¶ 32.) Bob Marley Music
3 entered several licenses for the use of the Marley Intellectual Property, beginning at least as early
4 as 1986. (SUF ¶ 33.) Stichting thereafter reconveyed the Marley Rights to Island Logic Ltd. in
5 1994, who, in 1995, conveyed the Marley Rights to Fifty-Six Hope Road. (SUF ¶ 34.) Fifty-Six
6 Hope Road has owned the Marley Rights, including all rights to Bob Marley’s name, image, and
7 likeness, since 1995, and has since licensed those rights through its affiliated entities, Hope Road
8 Merchandising LLC and The Robert Marley Foundation, Ltd. Defendants have no evidence to
9 counter the direct chain of title of the Marley Rights to Fifty-Six Hope Road.
10 1. The Identity of Bob Marley Operates as a Trademark
11 Through its related entity, The Robert Marley Foundation Ltd., the Marley Beneficiaries
12 own an incontestable trademark registration of TUFF GONG & Design, Registration
13 No. 1,866,146, which prominently features the image of Bob Marley shown below (SUF ¶ 35):
14
15
16 Plaintiffs also use Bob Marley’s image in other ways as a trademark. His image is used
17 prominently on apparel, beach towels and other merchandise, and in promotional materials for
18 such products. (SUF ¶ 36.) Plaintiffs use Bob Marley’s well-known songs, album titles and
19 lyrics on merchandise. (SUF ¶ 37.)
20 Fifty-Six Hope Road, directly and through licensees, has used Bob Marley’s image and
21 the BOB MARLEY trademark on a variety of goods and services, including clothing and beach
22 towels, and has entered into more than 48 licenses for the use of BOB MARLEY, MARLEY, Bob
23 Marley images and likeness, as well as other trademarks and properties derived from the fame
24 and legacy of Bob Marley. (SUF ¶ 22.) Currently, Plaintiffs license Bob Marley’s identity on
25 more than 100 types of products. (SUF ¶ 22.) These licensees, who pay significant royalties to
26 Fifty-Six Hope Road or its related entities, do so because of the tremendous value in using Bob
27 Marley’s identity on merchandise. (SUF ¶ 39.) As a result, the public has come to associate Bob
28 Marley’s image with the Marley Beneficiaries and/or Fifty-Six Hope Road and recognize that
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1 permission is needed to use his identity, including his image, likeness and/or name. (SUF ¶ 40.)
2 2. Plaintiffs’ Have Consistently Exploited and Enforced their Rights in

the Marley Intellectual Property
3
4 Plaintiffs and their predecessor entities have consistently and popularly exploited their
5 rights in the Marley Intellectual Property via the sale of apparel and merchandise featuring Bob
6 Marley’s name, image, and likeness. (SUF ¶ 41.) As noted above, Fifty-Six Hope Road and
7 prior owners of the Marley Rights have licensed the right to use Bob Marley’s name, image, and
8 likeness on various goods, including clothing, since at least as early as 1986. (SUF ¶ 42.) Since
9 1999, Zion has been Fifty-Six Hope Road’s exclusive licensee for certain apparel bearing Bob
10 Marley’s name, image, and likeness. (SUF ¶ 23.) Fifty-Six Hope Road’s and its predecessor
11 entities’ exploitation of the Marley Intellectual Property for more than two decades has resulted in
12 consumers’ association of Fifty-Six Hope Road and Bob Marley’s children with apparel and
13 merchandise featuring and trading upon Bob Marley’s identity.
14 Plaintiffs and their predecessor entities have consistently enforced their rights in the
15 Marley Intellectual Property against unauthorized infringers for almost two decades. (SUF ¶ 45.)
16 Specifically, as early as 1990 and continuing, Plaintiffs have sent 400 cease-and-desist letters to
17 individuals and entities manufacturing and selling various items of merchandise and apparel
18 featuring the image and likeness of Bob Marley, the BOB MARLEY or MARLEY trademarks,
19 and other intellectual property rights now owned by Fifty-Six Hope Road and derived from the
20 legacy and identity of Bob Marley. (SUF ¶ 46.) Plaintiffs have filed numerous trademarks,
21 copyright, and rights of publicity suits based on their ownership of the Marley Intellectual
22 Property and other intellectual property rights derived from Bob Marley and his legacy. In no
23 such proceeding has Fifty-Six Hope Road’s status as the rightful owners of the Marley
24 Intellectual Property been successfully challenged. (SUF ¶ 47.) On the contrary, Fifty-Six Hope
25 Road, as representative of the heirs of Bob Marley and owner of his Intellectual Property, has
26 consistently policed and sought enforcement of its rights (SUF ¶ 45), such that it is clear that the
27 Marley Rights are owned by Fifty-Six Hope Road and the Marley Intellectual Property functions
28 as a brand.
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1 Plaintiffs have previously sought enforcement of their rights in the Marley Intellectual
2 Property against AVELA and Valencia in this District. On February 14, 2007, Plaintiffs filed a
3 complaint and ex parte application for temporary restraining order (“TRO”) against Fame Jeans,
4 Inc. (“Fame”), Fame’s principal Charles Friedman, AVELA, and Valencia (collectively, “the
5 2007 Defendants”) for trademark and rights of publicity infringement based on commercial
6 activity at the Winter 2007 MAGIC tradeshow in Las Vegas, Nevada (“the 2007 Action”). (SUF
7 ¶ 48.) On February 15, 2007, the court granted Plaintiffs’ application for a TRO against the 2007
8 Defendants based on their activities at the then-ongoing MAGIC tradeshow. Although the court
9 held that the TRO would expire within ten days and would be followed by a hearing for a
10 preliminary injunction on February 26, 2007, the hearing was never held because the parties
11 entered into prolonged settlement negotiations and agreed to extend the TRO indefinitely, i.e., to
12 the date the case was voluntarily dismissed. (SUF ¶ 49.) During these negotiations, Fame -- the
13 manufacturer of the infringing merchandise at issue -- represented that they never actually made
14 any of the Bob Marley Products, rather they only had the image available to retailers to select for
15 future manufacture by Fame. Fame also agreed not to sell any Bob Marley Products in the future.
16 (SUF ¶ 50.) Defendants confirmed Fame's failure to ever make any Bob Marley Products and its
17 decision not to do so in the future in communications with AVELA’s attorney Gregg Paradise,
18 who represented all of the Defendants in the 2007 Action. (SUF ¶ 51.)
19 Plaintiffs were under the impression at the time in 2007 that the products manufactured
20 and sold by Fame were the full extent of AVELA’s and Valencia’s unauthorized use of the
21 Marley Intellectual Property. Plaintiffs had no specific knowledge of infringement perpetrated by
22 AVELA and Valencia beyond that at issue in the 2007 Action, and any such infringement was
23 precluded by the TRO issued therein and still in effect. (SUF ¶ 52.) As a result, Plaintiffs there-
24 fore dismissed the 2007 Action without prejudice. (SUF ¶ 53.) Plaintiffs thereafter monitored
25 the commercial activities of AVELA and Valencia to detect future infringement. (SUF ¶ 54.)
26 C. Defendants’ Undisputed Willful Infringement of the Marley Intellectual

Property
27
28 AVELA and X One X are self-proclaimed “licensing and distribution” companies owned
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1 and operated exclusively by Valencia (collectively, the “AVELA Defendants”). Essentially, the
2 business model of the AVELA Defendants is to purchase artwork, photographs, and designs,
3 usually depicting individual celebrities, movies, and various fictional characters. (SUF ¶ 55.)
4 The AVELA Defendants then commercially exploit their purported ownership in the images they
5 have purchased by selling them to manufacturers and vendors, such as JEM and Freeze, who in
6 turn then produce garments bearing these images and sell them to mass retailers such as Target,
7 WalMart and K-Mart. The AVELA Defendants represent that their ownership of the actual
8 images (i.e., photographs) gives the AVELA Defendants the right to license their use in a
9 transformative way for use on apparel and merchandise, all without the authorization from the
10 rights-holders in the depicted celebrities, movies, and fictional characters. (SUF ¶ 56.)
11 The AVELA Defendants have never been granted license, permission, ownership, or
12 authority to manufacture, design, market, or sell any merchandise bearing any of the Marley
13 Intellectual Property. (SUF ¶ 57.) Yet despite this, the claim brought in the 2007 Action, and
14 their knowledge of Plaintiffs’ ownership of the Marley Intellectual Property, Plaintiffs learned in
15 January 2008 that Defendants were actually making and selling apparel featuring Bob Marley’s
16 identity in various Target retail stores. From Defendants’ own admissions, in January 2008, the
17 Bob Marley Products created by Defendants were being sold in over 3,000 Target stores and was
18 worth at least $500,000. (SUF ¶ 58.) Although Plaintiffs initiated the instant matter on
19 January 23, 2008, rather than stop, Defendants increased their sale of the Bob Marley Products
20 and expanded into other products. (SUF ¶ 59.) Through the course of this case, Plaintiffs have
21 learned that the AVELA Defendants have entered into at least twelve license agreements with
22 vendors and manufacturers of apparel and merchandise for the unauthorized exploitation of Bob
23 Marley’s identity, and the Bob Marley Products have been sold at such popular retail outlets as
24 Target, WalMart, and Wet Seal, among many others. (SUF ¶ 60.) Since September 2009,
25 Plaintiff’s learned that AVELA has entered into three new licenses to exploit Bob Marley’s
26 identity. (SUF ¶ 61.)
27 Defendants are clearly aware that Plaintiffs possess intellectual property rights derived
28 from Bob Marley, yet their actions convey a belief that they have the right and authority to pick
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1 and choose which Bob Marley-derived intellectual property they can use. For example,
2 Defendants have purposefully and conspicuously avoided use of the BOB MARLEY mark
3 directly on any of the garments, yet they allow their licensees and retailers to promote the
4 AVELA products under or using Bob Marley’s name. (SUF ¶ 63.) In conjunction with their
5 manufacturing and sale of the Bob Marley Products, Defendants have used confusingly similar
6 variations of the BOB MARLEY mark on documents and displays associated with those goods,
7 including internet listings for the Bob Marley Products, the metadata underlying said internet
8 listings, planogram label strips (also known as shelf labels), and other documents and displays.
9 (SUF ¶ 64.) Much of Defendants’ Bob Marley Products include textual design elements
10 reproducing and quoting famous Bob Marley album titles, song titles, and song lyrics, including
11 “Roots Rock Reggae,” “I Shot the Sheriff,” “One Love,” “Buffalo Soldier,” “Waiting In Vain,”
12 “Get Up, Stand Up,” “Redemption Song,” “Uprising,” and “Catch A Fire.” (SUF ¶ 65.)
13 Defendants use their Marley associated text in conjunction with images of Bob Marley in order to
14 draw consumer association with Bob Marley without actually using the trademark BOB
15 MARLEY. Per the terms of its agreement with JEM, Freeze, and other licensees, AVELA
16 maintains the right and ability to review and approve the licensees’ design of the Bob Marley
17 Products, and approves the use of Bob Marley’s song titles, album titles, and lyrics on the Bob
18 Marley Products. (SUF ¶ 66.) AVELA goes so far as to provide pre-approved artwork with Bob
19 Marley’s image using his song, album titles and lyrics, available for use by its licensees. (SUF
20 ¶¶ 67.)
21 In justification, AVELA seeks to rely upon an unpled advice of counsel defense from his
22 then attorney Gregg Paradise. (SUF ¶ 68.) Yet Attorney Paradise’s “opinion” does not support
23 the defense. Attorney Paradise warned AVELA and Valencia that there could be rights
24 associated with Bob Marley’s image and likeness, depending on which state or country’s law
25 applied, and whether AVELA was going to sell the products outside of Nevada. Further,
26 Attorney Paradise did not tell AVELA and Valencia that it was okay to use Bob Marley’s song
27 titles, album titles, and lyrics on any merchandise. (SUF ¶ 69.) In short, AVELA and Valencia
28 knew that there was substantial risk in proceeding with the unlicensed use of Bob Marley’s image
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1 and likeness, and other indicia associated with Bob Marley, but they did it anyway. (SUF ¶ 69.)
2 Further, the AVELA Defendants sought a license to use Bob Marley’s image and likeness
3 from one of the Marley Beneficiaries, Rohan Marley, who operated an affiliated company owned
4 by the Marley Beneficiaries. The license was sought in Fall 2006, but was never entered. (SUF
5 ¶ 70.) The AVELA Defendants proceeded despite that denied request for a license.
6 Defendants continue to this day to trade on Plaintiffs’ trademark rights in Bob Marley’s
7 identity, and his song and album titles, and, by offering cheaper products, unfairly siphoning
8 business from Plaintiffs. (SUF ¶¶ 71, 72.)
9 III. STANDARD FOR SUMMARY ADJUDICATION

10 Summary adjudication is proper where the pleadings and other evidence submitted to the
11 Court show that no genuine issue exists as to material fact and the moving party is entitled to
12 adjudication as a matter of law. FRCP 56(c). Summary adjudication is properly regarded as an
13 integral part of the Federal Rules of Civil Procedure, which, as a whole, were designed to “secure
14 the just, speedy and inexpensive determination of every action.” Celotex Corporation v. Catrett,
15 477 U.S. 317, 327, 106 S. Ct. 2548, 2555 (1986). Evidence that is merely “colorable” is not
16 enough to defeat summary adjudication. Disputes over irrelevant or unnecessary facts are
17 insufficient to avoid adjudication as a matter of law. Anderson v. Liberty Lobby, Inc., 477 U.S.
18 242, 248-52 (1986). Summary adjudication on behalf of a plaintiff in a trademark or unfair
19 competition case is available where the facts of liability are as clearly established as they are in
20 the instant matter. See United States Jaycees v. San Francisco Junior Chamber of Commerce,
21 354 F. Supp. 61, 68-69 (N.D. Cal. 1972), aff’d 513 F.2d 1226 (9th Cir. 1975).
22 Plaintiffs’ burden under Section 1125(a) is discharged by showing that there is no factual
23 dispute as to the elements of that claim. See Celotex, 477 U.S. at 325. The burden then shifts to
24 Defendants to show a factual dispute establishing a genuine issue for trial. See Jaycees, 354 F.
25 Supp. at 69. Defendants must “do more than simply show that there is some metaphysical doubt
26 as to the material facts.” They must set forth specific facts proving that there is a genuine issue
27 for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S. Ct. 1348,
28 1356 (1986).
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1 IV. PLAINTIFFS ARE ENTITLED TO SUMMARY ADJUDICATION ON THEIR

FALSE ASSOCIATION CLAIM
2
3 To succeed on their Section 1125(a) claim, Plaintiffs must establish: “(1) ownership of
4 the trademark[s] at issue; (2) use by [Defendants] without authorization, of a copy, reproduction,
5 counterfeit or colorable imitation of [Plaintiffs’ marks] in connection with the sale, distribution or
6 advertising of goods or services; and (3) that [Defendants’] use of the mark[s] is likely to cause
7 confusion, or to cause mistake or to deceive.” Toho Co. Ltd. v. William Morrow & Co., 33
8 F.Supp.2d 1206, 1210 (C.D. Cal. 1998). A false designation of origin claim brought by an
9 entertainer under Section 1125(a) is equivalent to a false association or endorsement claim.
10 Landham v. Lewis Galoob Toys, Inc., 227 F.3d 619, 626 (6th Cir. 2000), citing Waits v. Frito-
11 Lay, Inc., 978 F.2d 1093, 1110 (9th Cir. 1992). In celebrity cases, the term “mark” applies to the
12 celebrity’s persona. Downing v. Abercrombie & Fitch, 265 F.3d 994, 1007 (9th Cir. 2001).
13 Likelihood of confusion in a celebrity case is more clearly stated by an examination of the
14 following eight factors: (1) the level of recognition that the celebrity has among the segment of
15 the society for whom the defendant’s product is intended; (2) the relatedness of the fame or
16 success of the celebrity to the defendant’s product; (3) the similarity of the likeliness used by the
17 defendant to the actual plaintiff, (4) evidence of actual confusion; (5) marketing channels used;
18 (6) likely degree of purchaser care; (7) defendant’s intent on selecting the celebrity; and
19 (8) likelihood of expansion of the product lines. Id. at 1007-1008. Not all factors are of equal
20 importance, nor do they necessarily apply to every case. Id. at 1008. The undisputed facts
21 support each element of this claim in Plaintiffs’ favor.
22 A. Plaintiffs’ Own Trademark Rights in Bob Marley’s Identity
23 Plaintiffs clearly own trademark rights in the identity, and all features composing the
24 identity, of Bob Marley. “Celebrities have standing to sue under [Section 1125(a)] because they
25 possess an economic interest in their identities akin to that of a traditional trademark holder.”
26 Parks v. LaFace Records, 329 F.3d 437, 445 (6th Cir. 2003); see also Allen v. National Video,
27 610 F. Supp. 612, 625, 628 (S.D.N.Y. 1985) (recognizing celebrity’s claim under Section 1125(a)
28 because he has commercial investment in name and face tantamount to interests of a trademark
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1 holder in distinctive mark). As the Ninth Circuit has held:
2 A false endorsement claim based on the unauthorized use of a celebrity’s identity

is a type of false association claim, for it alleges the misuse of a trademark, i.e., a
3 symbol or device such as a visual likeness, voice imitation, or other uniquely
distinguishing characteristic, which is likely to confuse consumers as to the
4 plaintiff’s sponsorship or approval of the product.
5 Waits, 978 F.2d at 1110.
6 A celebrity’s trademark rights in his or her identity has been held to include: unique
7 physical characteristics (see Wendt v. Host International, Inc., 125 F.3d 806, 812 (9th Cir. 1997));
8 voice (see Waits, 978 F.2d at 1110); name (see Abdul-Jabbar v. General Motors Corporation, 75
9 F.3d 1391, 1395 (9th Cir. 1996)); and likeness (see Allen v. Men’s World Outlet, Inc., 679 F.
10 Supp. 360, 368 (S.D.N.Y. 1988)). Courts have noted that a “Lanham Act false endorsement
11 claim is the federal equivalent of the right of publicity.” ETW Corp. v. Jireh Pub., Inc., 332 F.3d
12 915, 924 (6th Cir. 2003), citing Bruce P. Keller, The Right of Publicity: Past, Present, and
13 Future, 1207 PLI Corp. Law and Prac. Handbook, 159, 170 (Oct. 2000).
14 Plaintiffs’ trademark rights in the identity of Bob Marley are not compromised or
15 remotely effected by the fact that he is deceased, but remain strong nevertheless. By allowing
16 standing to “another person,” the very terms of Section 1125(a) contemplate the assertion of an
17 unfair competition claim by a person or entity other than the celebrity at issue. See Cairns v.
18 Franklin Mint Co., 24 F.Supp.2d 1013, 1032 (C.D. Cal. 1998), aff’d., 292 F.3d 1139, 1150 (9th
19 Cir. 2002). The court held in Cairns:

20 By using the term “another person,” Congress selected language broad enough to
encompass a claim by a deceased celebrity’s Estate or by any celebrity’s assignee.
21
This point was expanded upon at length in Cairns:
22
The provision that any person likely to be damaged may bring a claim under
23 § 43(a) is similarly expansive and provides another indication of Congressional
intent to protect any person injured by a false suggestion of celebrity endorsement,
24 not just the celebrity.
25 Id., at 1032-33.
26 The court then upheld the plaintiffs’ right and standing to bring such an action:
27 Here, plaintiffs assert a commercial interest in preventing unauthorized use of

Princess Diana’s persona because use will allegedly create confusion concerning
28 plaintiffs’ endorsement of [the defendants’] products . . . In short, plaintiffs
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1 satisfactorily allege a false endorsement claim based on defendants’ use of

Princess Diana’s persona.
2
Cairns, 24 F.Supp.2d at 1033.
3
Plaintiffs, as successors to the Marley Rights, avid licensors of those rights and now
4
unwilling competitors to Defendants, clearly have a commercial interest in the exploitation of
5
aspects of Bob Marley’s identity, including his image and likeness. Even if the parties were not
6
competitors, it is of no consequence. Where a claim under Section 1125(a) is presented, “the
7
plaintiff need not be a competitor, for the Lanham Act also grants a cause of action to certain
8
noncompetitors who have been injured commercially by the ‘deceptive and misleading use of
9
marks.’” Waits, 978 F.2d at 1109; see Parks, 329 F.3d at 445 (“the scope of [Section 1125(a)]
10
extends beyond disputes between [competitors]. It also permits celebrities to vindicate property
11
rights in their identities against allegedly misleading commercial use by others.”)
12
Plaintiffs have consistently used the identity of Bob Marley as a trademark and enforced
13
its unauthorized use as a contravention of Plaintiffs’ rights therein. Fifty-Six Hope Road has
14
licensed Bob Marley’s identity to licensees for the manufacture and sale of apparel and other
15
merchandise since at least as early at 1986. (SUF ¶ 22.) Fifty-Six Hope Road’s related company
16
owns an incontestable trademark registration that includes Bob Marley’s image. (SUF ¶ 35.)
17
Fifty-Six Hope Road has exclusively licensed Bob Marley’s identity to Zion for Zion’s
18
manufacture and sale of the various apparel and merchandise since 1999, and Bob Marley’s
19
image and likeness has been prominently placed on merchandise manufactured and sold by Zion
20
and others. (SUF ¶ 23.) Plaintiffs have diligently and consistently policed the unauthorized use
21
of Bob Marley’s identity on apparel and other types of merchandise. (SUF ¶ 45.) As a result, all
22
recognizable and distinctive aspects of Bob Marley’s identity, not least of which is his image and
23
likeness, serve a source-identifying function. See Waits, 978 F.2d 1093, 1106 (9th Cir. 1992)
24
(“courts have recognized false endorsement claims brought by plaintiffs, including celebrities, for
25
the unauthorized imitation of their distinctive attributes, where those attributes amount to an
26
unregistered commercial ‘trademark’”); see also Allen, 610 F. Supp. at 625-26 (celebrity has
27
commercial investment in name and face tantamount to interests of a trademark holder in a
28
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1 distinctive mark”). Plaintiffs have established trademark rights in the identity of Bob Marley
2 sufficient to support their False Association Claim under Section 1125(a).
3 B. Defendants Have Used, Without Authorization, Reproductions and Colorable

Imitations of the Marley Intellectual Property in Connection with the Sale
4 and Distribution of Goods
5 Defendants have indisputably widely and intentionally used the Marley Intellectual
6 Property in the sale and distribution of apparel and other merchandise. Specifically, the AVELA
7 Defendants have licensed photographs of Bob Marley to JEM, Freeze, and other licensees for the
8 manufacture and sale of the Bob Marley Products to retailers, including industry giants WalMart
9 and Target. (SUF ¶ 60.) Per the terms of its agreements with JEM, Freeze, and other licensees,
10 AVELA maintains the right and ability to review and approve the licensees’ design of the
11 Bob Marley Products. (SUF ¶ 66.) The AVELA Defendants have further licensed the use of Bob
12 Marley song titles, album titles, and lyrics to JEM, Freeze and other companies, even though the
13 AVELA Defendants have no right whatsoever to do so, for use in conjunction with the Bob
14 Marley images. (SUF ¶¶ 66, 67.) By licensing photographs of Bob Marley and music titles and
15 lyrics to manufacturers of product and maintaining control over said manufacturers’ use of the
16 photographs, the AVELA Defendants have clearly and unequivocally used the Marley Intellectual
17 Property in connection with the sale of goods. Similarly, by using the Bob Marley photographs
18 on apparel and merchandise and selling these products to retailers, JEM and Freeze are also using
19 the Marley Intellectual Property in connection with the sale of goods. Finally, Defendants
20 knowingly allowed retailers to use Bob Marley’s name in their promotion of the products (SUF
21 ¶ 73) and his music titles on price and size tags affixed to the products. (SUF ¶ 74.)
22 1. Defendants Have Used Copies and Reproductions of Plaintiffs’

Trademark in Bob Marley’s Identity
23
24 Defendants’ use of photographs depicting Bob Marley on the Bob Marley Products and
25 sale of said Products is an unauthorized use of Plaintiffs’ trademark in Bob Marley’s identity. A
26 celebrity’s or celebrity’s successor-in-interest’s trademark rights in the celebrity’s identity
27 extends to many aspects of identity and persona, including, if not most obviously, the celebrity’s
28 image and likeness. See White v. Samsung Electronics America, Inc., 971 F.2d 1395, 1396 (9th
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1 Cir. 1992) (court upheld television personality Vanna White’s unfair competition claim under
2 Section 1125(a) based on the defendant’s use of robot constructed in a way to “resemble White’s
3 hair and dress” in advertisement).
4 Defendants have argued in earlier proceedings2 that their use of Bob Marley’s image and
5 likeness is not a trademark use and is thus not a use in violation of Section 1125(a). This
6 argument, faulty in a number of respects, is partially premised on the holding in Cairns v.
7 Franklin Mint Co., 107 F.Supp.2d 1212, 1216 (C.D. Cal. 2000) (“Cairns II”), where the
8 defendants’ use of the image of Princess Diana on their products was ultimately found to not
9 imply endorsement by the plaintiffs because it did “not implicate the source-identification
10 purpose of trademark protection.” Aff’d., 292 F.3d 1139 (9th Cir. 2002) (“Cairns III”).
11 Defendants’ argument that they, like the defendants in Cairns, are making a non-trademark use of
12 Bob Marley’s image and likeness and, thus, are not falsely associating their goods with Bob
13 Marley or Plaintiffs, fails for two reasons.
14 First, Defendants do, in fact, use Bob Marley’s image and likeness as a trademark. To
15 help elucidate this point, it is helpful to note key factual differences that distinguish Cairns and its
16 progeny from the instant case. In reviewing the district court’s decision, the Ninth Circuit in
17 Cairns specifically found that “[b]etween 1981 and 1997, many products, including some that
18 were largely indistinguishable from [defendants’] products, bore the name and likeness of
19 Princess Diana, who neither endorsed nor objected to any of these products. Consumers,
20 therefore, had no reason to believe [defendants’] Diana-related products were endorsed by the
21 Princess.” Cairns III, 292 F.3d at 1149-50. The Ninth Circuit made clear that solely “[u]nder
22 these circumstances, there was no likelihood of confusion as to the origin of [defendants’] Diana-
23 related products.” Id. at 1150. The court’s holding that the defendants used Princess Diana’s
24 image in a descriptive, non-trademark manner was based on the plaintiffs’ failure to establish, and
25 thereafter, police trademark rights in Princess Diana’s identity. The two are inextricably
26 intertwined: were the plaintiffs able to show that Princess Diana developed and policed
27 2
Defendants made these arguments in opposition to Plaintiffs’ motion for preliminary
28 injunction in this case.
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1 trademark rights in her identity -- specifically, her image and likeness -- with the goods at issue,
2 the defendants’ use of Diana’s image and likeness on said goods would undoubtedly be a
3 trademark use and grounds for a claim of false endorsement and false association.
4 Unlike the plaintiffs in Cairns, Plaintiffs here have consistently used Bob Marley’s
5 identity – specifically, his image and likeness – on apparel as a trademark and identifier of the
6 apparel’s source. (SUF ¶ 40.) Plaintiffs have extensively policed the unauthorized use of Bob
7 Marley’s identity such as to maintain consumers’ belief that apparel and merchandise bearing his
8 image and likeness are endorsed by, and associated with, the Marley family and Fifty-Six Hope
9 Road. (SUF ¶ 45.) Given Plaintiffs’ unambiguous trademark rights, Defendants cannot seriously
10 assert that they are not using Bob Marley’s image and likeness as a trademark when they are
11 using it in the exact same manner as Plaintiffs, namely, conspicuously on the front of apparel and
12 on the front of beach towels. In using the image and likeness of Bob Marley in the exact same
13 manner as Plaintiffs and, thus, casting the same impression upon consumers as that cast by
14 Plaintiffs, Defendants are using the image of Bob Marley as a mark and falsely associating their
15 products with Plaintiffs. In stark contrast to Cairns, where the defendants’ use of Princess
16 Diana’s image on the goods themselves was insufficient to ground a claim of false endorsement,
17 here, Defendants’ use of Bob Marley’s image and likeness on the goods themselves is precisely
18 what implicates and grounds Plaintiffs’ false association claim under Section 1125(a).
19 Second, Defendants imply that proof of the alleged infringer’s use of the mark as a
20 trademark is a separate statutory requirement for establishing a claim of infringement. This is
21 incorrect, and a misstatement of the law. By the very terms of Section 1125(a), the accused use at
22 issue need not be use as a trademark, but instead use “on or in connection with any goods or
23 services, or any container for goods.” Section 1125(a) states in pertinent part as follows:
24 (1) Any person who, on or in connection with any goods or services, or any
container for goods, uses in commerce any word, term, name, symbol, or
25 device, or any combination thereof, or any false designation of origin, false
or misleading description of fact, or false or misleading representation of
26 fact, which—
(A) is likely to cause confusion, or to cause mistake, or to deceive as to
27 the affiliation, connection, or association of such person with
another person, or as to the origin, sponsorship, or approval of his
28 or her goods, services, or commercial activities by another person
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1 * * *
shall be liable in a civil action by any person who believes that he or she is
2 or is likely to be damaged by such act.
3 The terms of the statute are elucidated by a well-known author in the trademark field,
4 Thomas J. McCarthy, who concludes that “the Lanham Act nowhere explicitly states that ‘use as
5 a trademark’ is required for an accused use to be an infringement” and, later, “[i]t is my view that
6 there is no separate statutory requirement of ‘trademark use.’” McCarthy on Trademarks and
7 Unfair Competition § 23:11.50 (4th Ed. 2009); accord Parks, 329 F.3d at 446 (“It is not
8 necessary for [defendants] to make a ‘trademark’ use of Rosa Parks’ name in order for her to have
9 a cause of action for false advertising under [Section 1125(a)].”)
10 Defendants would like to focus the argument on the pedantic issue of whether their use of
11 Bob Marley’s image and likeness is a trademark use. Clearly, though, this is not an element
12 which Plaintiffs must establish to sustain their False Association Claim. Section 1125(a) is
13 broader than a traditional trademark infringement claim. See Waits, 978 F.3d at 1108
14 (Section 43(a) provides liability for “false representations concerning the origin, association, or
15 endorsement of goods or services through the wrongful use of another’s distinctive mark, name,
16 trade dress or other device (‘false association’)”; see also, Parks, 329 F.3d at 445 (“The language
17 of § 43(a) is broad”). More importantly, Defendants’ argument obscures the fundamental
18 query -- does Defendants’ use of Bob Marley’s image and likeness on or in connection with
19 goods create a false association or endorsement with Plaintiffs and Bob Marley? This is
20 important because even non-trademark uses of a mark may result in consumer confusion. See
21 Parks, 329 F.3d at 447. Accordingly, even if Defendants’ use of Bob Marley’s image is not a use
22 sufficient to create trademark rights in said image (it is), that use still interferes with the
23 established consumer understanding that products bearing Bob Marley’s image emanates from
24 Plaintiffs.
25 Defendants have also argued to this Court that Plaintiffs inappropriately assert trademark
26 rights in all images of Bob Marley, and as other courts have rejected such sweeping claims in the
27 past, so should this one, relying on ETW, supra (“[i]mages and likenesses of [plaintiff Tiger]
28 Woods are not protectable as a trademark because they do not perform the function of
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1 designation”), and on Pirone v. MacMillan, Inc., 894 F.2d 579, 585 (2d Cir. 1990). Defendants
2 misstate Plaintiffs’ Section 1125(a) claim. The issue is not -- in which images does Plaintiffs
3 have trademark rights, but, rather, is -- does Defendants’ unauthorized use of Bob Marley’s
4 identity create a false association with Plaintiffs or Bob Marley. Plaintiffs’ Section 1125(a) claim
5 is not premised upon Plaintiffs’ claim of trademark rights in all images of Bob Marley; it is
6 premised upon Defendants’ use of a symbol -- Bob Marley’s identity -- in a manner that falsely
7 associates their goods with Bob Marley and Plaintiffs and/or suggests that Bob Marley and
8 Plaintiffs endorse their goods. See ETW, 332 F.3d at 925 (“False endorsement occurs when a
9 celebrity’s identity is connected with a product or service in such a way that consumers are likely
10 to be misled about the celebrity’s sponsorship or approval of the product or service.”)
11 Secondly, it is Defendants’ specific use of Bob Marley’s identity -- namely, his image and
12 likeness on products in a manner identical to that exploited by Plaintiffs -- that implicates
13 Plaintiffs’ trademark rights in Bob Marley’s identity. See Elvis Presley Enterprises, Inc. v.
14 Capece, 141 F.3d 188, 201 (5th Cir. 1998) (“The relevant inquiry is whether, under the
15 circumstances of the use, the marks are sufficiently similar that prospective purchasers are likely
16 to believe that the two users are somehow associated.”) Plaintiffs are not disputing just any use
17 of Bob Marley’s identity, but Defendants’ specific use of Bob Marley’s image and likeness on
18 products directly competitive with, and substantially similar to, Plaintiffs’ products. Under these
19 circumstances and as shown by Plaintiff’s uncontroverted survey testing one of Defendants’ Bob
20 Marley t-shirts to consumers, purchasers are likely to believe that the Bob Marley Products are
21 associated with Bob Marley and/or sponsored or licensed by Plaintiffs. (SUF ¶ 83.)
22 2. Defendants’ Use of the Bob Marley Song and Music Titles Further
Draws the Association to Bob Marley
23
24 Defendants’ conspicuous and brazen use of Bob Marley’s image and likeness on the
25 Bob Marley Products most certainly impresses the same mental image on purchasers as Plaintiffs’
26 use of Bob Marley’s image. To be sure it does -- i.e., Defendants use Bob Marley’s well-known
27 song titles, album titles, and lyrics directly on the products that bear Bob Marley’s image and on
28 price and size tags affixed to the products. (SUF ¶¶ 65, 74.) Specifically, many of Defendants’
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1 products include Bob Marley song lyrics, song titles, and album titles, such as “Roots Rock
2 Reggae,” “I Shot the Sheriff,” “One Love,” “Buffalo Soldier,” “Waiting In Vain,” “Get Up, Stand
3 Up,” “Redemption Song,” “Uprising,” and “Catch a Fire,” further drawing an association
4 between Defendants’ apparel and Plaintiffs. (SUF ¶ 65.) See White, 971 F.2d at 1399 (court
5 takes into account all aspects of advertisement in determining whether it provokes an association
6 with the plaintiff celebrity; “[v]iewed together, [the individual aspects of the advertisement] leave
7 little doubt about the celebrity the ad is meant to depict.”) Fifty-Six Hope Road owns a federal
8 trademark registration for ROOTS ROCK REGGAE for clothing, and Catch a Fire Clothing,
9 LLC, an entity related to Plaintiffs, owns a an incontestable registration of CATCH A FIRE for
10 clothing. (SUF ¶ 36.) Defendants’ use of these marks on apparel also bearing Bob Marley’s
11 image evidences Defendants’ clear intention of evoking an association with Bob Marley and
12 Plaintiffs. Defendants’ actions are working, as shown by Plaintiffs’ survey. (SUF ¶ 83.)
13 Given the fame of Bob Marley, not to mention the fact that Defendants manufacture the
14 Bob Marley Products for the sole reason of capitalizing on Bob Marley’s celebrity, Defendants
15 cannot honestly argue that customers of their merchandise do not immediately equate Bob
16 Marley’s well-recognized image with him particularly when the Bob Marley Products are also
17 promoted expressly as "Licensed Marley tees" “Bob Marley apparel” or “Marley Vintage tees”.
18 (SUF ¶ 73.) Consequently, Defendants cannot seriously assert that they are not falsely
19 associating their products with Bob Marley and Plaintiffs when they prominently affix Bob
20 Marley’s image and likeness to the front of their apparel, together with his music titles and lyrics,
21 and then promote those products under his name.
22 3. Defendants’ Use of Bob Marley and Marley to Advertise Their

Products Further Draws Sponsorship and Association
23
24 Defendants consistently use Bob Marley and Marley in commerce and on the internet to
25 capitalize on Plaintiffs’ goodwill and to further draw the association and sponsorship with Bob
26 Marley. While Defendants do not use Marley or Bob Marley directly on the products themselves,
27 Defendants use those names in product descriptions for the products and as metadata on the
28 internet. (SUF ¶ 64.) Both of these uses are uses in connection with Defendants’ goods
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1 triggering the protections of Section 1125(a). Brookfield Communications, Inc. v. West Coast
2 Entertainment Corp., 174 F.3d 1036, 1062 (9th Cir. 1999) (use in metatags); see also, Playboy
3 Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1030-31 (9th Cir. 2004)
4 (use in metatags). The Lanham Act defines “use in commerce” as “the bona fide use of a mark in
5 the ordinary course of trade, on goods, when it is placed in any manner on the goods or their
6 containers or the displays associated therewith.” 15 U.S.C. § 1127 (emphasis added). All of
7 Defendants’ uses are certainly displays associated with the Bob Marley Products. Specifically,
8 Defendants’ use of Bob Marley and Marley on internet listings for the Bob Marley Products and
9 planogram label strips (shelf labels), among other uses, constitute displays associated with
10 Defendants’ apparel. In using Plaintiffs’ marks in such a manner, Defendants’ falsely associate
11 their apparel with Bob Marley and Plaintiffs.
12 C. Defendants’ Use of the Marley Intellectual Property is Likely to Cause

Confusion
13
14 Having established the first two elements, Plaintiffs need only prove the third element -- a
15 likelihood of confusion. Likelihood of confusion is self-evident as shown by Defendants’
16 intentional and unabashed use of Bob Marley’s image and likeness, together with the Bob Marley
17 music titles and lyrics, the promotion of the products under Bob Marley’s name, and Plaintiff’s
18 survey. (SUF ¶¶ 60, 64, 73, and 83) To the extent that confusion is deemed to be not self-
19 evident, the Court may look to the eight nonexclusive factors identified above to evaluate likely
20 confusion. Downing, 265 F.3d at 1007-08; AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th
21 Cir. 1979). Three of these factors -- namely, the similarity of the marks, goods, and marketing
22 channels -- are the “controlling troika in the Sleekcraft analysis.” GoTo.com, Inc. v. Walt Disney
23 Co., 202 F.3d 1199, 1206 (9th Cir. 2000). A review of the relevant factors and the undisputed
24 facts supporting them all strongly favor finding a likelihood of confusion.
25 1. Strength and Level of Recognition of Bob Marley

26 It is undisputed that Plaintiffs’ trademark in Bob Marley’s identity is incredibly strong.
27 When a mark is a celebrity’s identity, “the ‘strength’ of the mark refers to the level of recognition
28 the celebrity enjoys among members of society.” White, 971 F.2d at 1400. There can be no
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1 debate about the profound strength of Plaintiffs’ trademark in Bob Marley’s identity and, thus,
2 image and likeness. It is undisputed that Bob Marley is not merely the preeminent reggae
3 musician and performer of all time, but is likely one of the most famous and important figures in
4 the history of popular music. It is also undisputed that Plaintiffs have consistently and
5 exclusively exploited and enforced Bob Marley’s identity – specifically, his image and likeness –
6 on apparel, accruing strong trademark rights as a result thereof. Cullman Ventures, Inc. v.
7 Columbian Art Works, Inc., 717 F. Supp. 96, 124-27 (S.D.N.Y. 1989). It is no overstatement to
8 say that the strength of Plaintiffs’ mark in the identity and recognition of Bob Marley is
9 remarkably strong. In fact, Defendants’ offering of apparel and other merchandise featuring Bob
10 Marley’s identity itself is premised upon the fame and popular recognition of Bob Marley to the
11 same segment of society as those who buy Plaintiff’s Bob Marley products.
12 In sum, strength of the Bob Marley identity is shown by the following undisputed facts:
13 (1) Fifty-Six Hope Road currently licenses more than 100 types of goods and services bearing
14 Bob Marley’s image and/or his name, (2) Bob Marley has been recognized in court decisions as
15 being a famous musician, (3) Bob Marley has received tremendous and well-publicized awards,
16 even posthumously, e.g., his last album was dubbed the Best Album of the 20th Century by Time
17 magazine, (4) to date, Plaintiffs have sent 400 policing letters to would-be infringers, (5)
18 Plaintiffs have filed 29 infringement cases and trademark office proceedings to protect Plaintiffs’
19 rights in Bob Marley's identity, (6) to date, Plaintiffs have sold more than 100 million units of
20 Bob Marley licensed merchandise, (7) Bob Marley and Plaintiffs’ licensed merchandise is the
21 subject of substantial unsolicited publicity, (8) third parties request permission to use Bob
22 Marley’s name and likeness often in entertainment works, commercials and other uses, and (9)
23 AVELA's licensees have testified to the fame and strength of Bob Marley. (SUF ¶¶ 6, 14, 16,
24 17, 22, 46, 47, and 78.) The strength of Plaintiffs’ mark in Bob Marley’s identity weighs in favor
25 of finding that confusion is likely.
26 2. Relatedness of the Fame of Bob Marley to Defendants’ Products

27 “In cases concerning confusion over celebrity endorsement, the plaintiff’s ‘goods’ concern
28 the reasons for or sources of the plaintiff’s fame.” Id. Also, “[g]oods are related if consumers are
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1 likely to associate the two product lines.” Experience Hendrix, LLC v. Electric Hendrix, LLC, 90
2 U.S.P.Q. 2d 1883, 1893 (W.D. Wash. 2008). Bob Marley’s fame descends primarily from his
3 musical performances and recorded music output. It is well known and accepted that musical
4 performers commonly capitalize on their famous personas by selling apparel and merchandise
5 bearing their name, image and likeness. Plaintiffs have capitalized on the identity and celebrity of
6 Bob Marley by offering a wide variety of apparel bearing his image and likeness, as well as
7 apparel bearing the BOB MARLEY word mark, for more than two decades. (SUF ¶ 42.)
8 Plaintiffs have expanded to more than 100 products, including beach towels. (SUF ¶ 22.)
9 Defendants also produce apparel, beach towels, and other products meant to capitalize on the
10 identity and celebrity of Bob Marley. Because Plaintiffs offer goods identical to those offered by
11 Defendants, this factor heavily favors likely confusion. See Hendrix, 90 U.S.P.Q. 2d at 1893-94
12 (“The undisputed evidence . . . of identical goods, such as T-shirts distributed by both parties”
13 supported summary judgment for plaintiff, especially because “people purchasing both plaintiff’s
14 and defendant’s goods are primarily motivated to purchase the goods due to the goods’
15 relationship to Jim Hendrix.”) Thus, Bob Marley’s success is closely related to Defendants’
16 products bearing his image and music titles.
17 3. The Similarity of the Likenesses Used by the Parties

18 Defendants’ use of Bob Marley’s image and likeness is identical to Plaintiffs’ use of Bob
19 Marley’s identity. Defendants’ reproductions of the image and likeness of Bob Marley are actual
20 photographs of, and are all clearly and recognizably, Bob Marley. See Downing, 265 F.3d at
21 1008 (“the similarity of the likeness to the Appellants is clear because it is an actual photograph
22 of the Appellants.”) For Defendants to obscure the public’s recognition of Bob Marley would be
23 to sabotage their own business interests. Defendants further assure public recognition of Bob
24 Marley by frequently including text on the apparel directly referencing Bob Marley’s musical
25 output, such as song titles, album titles, and lyrics. (SUF ¶ 65) And in case there is any doubt,
26 Defendants’ promote their products as Bob Marley, Licensed Marley Products or Marley
27 products. (SUF ¶ 73.) In sum, Defendants’ use of Bob Marley’s image and likeness and use of
28 Bob Marley’s music titles is identical to Plaintiffs’ trademark rights in Bob Marley’s identity, and
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1 weighs heavily in favor of finding likely confusion.
2 4. Evidence of Actual Confusion

3 While Plaintiffs do not have direct evidence of actual confusion, they have circumstantial
4 evidence of actual confusion by their uncontroverted survey. See E&J Gallo Winery v. Gallo
5 Cattle Company, 967 F.2d 1280, 1292 (9th Cir. 1992) (Survey conducted by same company that
6 conducted Plaintiffs’ survey in this case admitted to establish actual confusion.) “In trademark
7 cases, surveys are to be admitted as long as they are conducted according to accepted principles
8 and are relevant.” Wendt v. Host International, Inc., 125 F.3d 806, 814 (9th Cir. 1997).
9 Plaintiffs’ survey expert, E. Deborah Jay, Ph.D., conducted a survey with the primary and
10 relevant purpose of determining “whether potential purchasers of graphic or screened T-shirts are
11 likely to mistakenly believe that the heirs, estate or agents of [Bob] Marley . . . are the source or
12 the sponsor of, or are affiliated with, [Defendants’] T-shirts bearing Bob Marley’s image” (“the
13 Survey”). (SUF ¶ 79.) The Survey was conducted according to accepted principles. It featured
14 509 participants who were identified through a screening process as potential buyers of graphic or
15 screened t-shirts, the vast majority of the Bob Marley Products sold by Defendants. That pool
16 was divided into two groups, the test group and the control group, and each group was asked
17 about a particular t-shirt. (SUF ¶ 80.) The test group’s shirt was an actual Bob Marley shirt
18 manufactured and sold by Defendants with an AVELA necktag, and the control group’s shirt was
19 a shirt identical in all relevant parts to Defendants’, except that it featured a picture of an
20 anonymous and unrenowned black man dressed in a Jamaican/Rastafarian style. (SUF ¶ 81.)
21 The Survey interviews were double-blind: neither the interviewers nor respondents were told the
22 name of the Survey’s sponsor or that it might be used in connection with litigation. (SUF ¶ 82.)
23 The Survey undisputedly “supports the conclusion that there is a ‘likelihood of confusion’
24 as to the source or sponsor of [Defendants’] T-shirts due to the use of Bob Marley’s image on the
25 shirts.” (SUF ¶ 83.) In response to the question “Who gave their permission or approval for the
26 T-shirt to be made or put out?,” 30% of the test group answered “Bob Marley, his heirs, estate,
27 agents” and 7% answered “the person on the shirt, his heirs, estate, agents,” a total of 37%. This
28 is compared to less than 1% and 19%, respectively, for the control group, a total of 20%. (SUF
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1 ¶ 84.) Even more probative of consumers’ perceived association or sponsorship of Defendants’
2 apparel with Plaintiffs and Bob Marley, 42% of Survey respondents in the test group believed
3 that Bob Marley (or “the person on the shirt”) or his heirs, estate, or agents was the source or
4 sponsor of the T-shirt bearing Bob Marley’s likeness. (SUF ¶ 85.) The comparable percentage
5 for the control group was 22%. The net confusion rate is 20% because the control group’s 22%
6 confusion is subtracted from the test group’s 42% confusion rate to eliminate guessing or other
7 “noise.” (SUF ¶ 86.) In a properly conducted survey with a control group to weed out respondent
8 guessing and noise, a 20% confusion rate constitutes strong evidence indicating a likelihood of
9 confusion. See Jada Toys, Inc., v. Mattel, Inc., 518 F.3d 628, 636 (9th Cir. 2008) (28%
10 association rate for word mark and 7% association rate for design mark indicated evidence of
11 likelihood of dilution (association) and precluded summary judgment in the defendant’s favor);
12 Exxon Corp. v. Texas Motor Exchange, Inc., 628 F.2d 500, 507 (5th Cir. 1980) (15% and 23%
13 association rate in survey constituted strong evidence indicating a likelihood of confusion);
14 National Football League v. Governor of Delaware, 435 F. Supp. 1372, 1380-81 (D. Del. 1977)
15 (19% and 21% association rate in survey supported a finding that there was substantial
16 confusion.) The Survey evidence weighs strongly in favor of a finding of likely confusion, and
17 Defendants have no evidence whatsoever to counter the survey.
18 5. Similarity of Marketing Channels Used

19 It is undisputed that Defendants market the Bob Marley Products in the same channels of
20 trade exploited by Plaintiffs. The AVELA Defendants sought to enter licenses for use of the Bob
21 Marley images they had purchased with licensees, such as JEM and Freeze, at the MAGIC
22 tradeshow in Las Vegas, the industry’s preeminent tradeshow and one at which Zion consistently
23 displays its Bob Marley licensed products. (SUF ¶¶ 43, 62.) Thus, Defendants and Zion have
24 competed for the same customers literally under the same roof. This direct competition and
25 similarity of marketing channels extends to retail of the parties’ products. Defendants market the
26 Bob Marley Products over the same marketing channels -- retail stores and the internet -- as are
27 used by Plaintiffs for their authorized Bob Marley products. Such “[c]onvergent marketing
28 channels increase the likelihood of confusion.” Nutri/System, Inc. v. Can-Stan Industries, Inc.,
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1 809 F.2d 601, 606 (9th Cir. 1987). In fact, on at least one occasion, Defendants’ and Plaintiffs’
2 products have been sold at the same retail outlet (Wet Seal) at the same time. A buyer for Wet
3 Seal, testified in her deposition that Wet Seal simultaneously offered Zion clothing featuring Bob
4 Marley’s image and likeness and the Bob Marley Products, but eventually replaced all Zion
5 product with Defendants' Bob Marley Products because the latter was cheaper. (SUF ¶ 75.)
6 Defendants’ use of identical marks on identical goods sold through identical marketing channels
7 to the same customers alone is enough to establish likely confusion. Goto.com, 202 F.3d at 1207.
8 At the very least, it weighs strongly in favor of likely confusion.
9 6. The Likely Degree of Purchaser Care is Low

10 The Bob Marley Products sold by Defendants are undeniably inexpensive; t-shirts retailed
11 at Target, for example, from $7.99 to $12.99. (SUF ¶ 76.) “Consumers of T-shirts and ball caps
12 are likely to exercise relatively little care” in purchasing said goods. Experience Hendrix, 90
13 U.S.P.Q. 2d at 1896; accord, Surf Line Hawaii Ltd. v. Ahakuelo, 13 U.S.P.Q. 2d, 1975, 1979 (D.
14 Haw. 1989) (purchasers that buy t-shirts and similar products are not likely to scrutinize them
15 carefully to discern the differences between the names and symbols displayed on them).
16 Similarly, consumers of Defendants’ and Plaintiffs’ apparel and merchandise are unlikely to
17 exercise much care in their selection of Bob Marley Products or undertake any investigation as to
18 who produced and/or sponsored the production of said products, but are, instead, prone to
19 impulsively buy these items based on their appreciation for the t-shirt or beach towel and the
20 subject thereof, Bob Marley. One of Target’s designees said as much in her deposition testimony,
21 admitting that the purchase of women’s graphic tees can be an “impulse purchase.” (SUF ¶ 77.)
22 AVELA’s beach towel licensee volunteered that the products were impulse buy. (SUF ¶ 78.)
23 AVELA’s licensees concur that Defendants' Bob Marley Products are impulse buys or not bought
24 after significant reflection. (SUF ¶ 78.) As such, this factor weighs strongly in favor of likely
25 confusion and the entry of summary judgment for Plaintiffs.
26 7. Defendants’ Intent in Selecting the Use of Bob Marley’s Image

27 There is no question that Defendants are intentionally trading off of the fame of Bob
28 Marley’s image, likeness, and name, aspects of Bob Marley’s identity that Plaintiffs have
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1 invested with goodwill since his untimely death. See Experience Hendrix, 90 U.S.P.Q. 2d at 1896
2 (such a finding weighs heavily in favor of the plaintiff). Defendants could not have accidentally
3 created the Bob Marley Products; they are, by definition, inspired by and a reproduction of Bob
4 Marley’s identity and robust celebrity. Defendants intentionally adopted Plaintiffs’ mark in Bob
5 Marley’s identity to take advantage of the goodwill carefully fostered by Plaintiffs. In such
6 circumstances, a presumption that the public will be deceived arises. AMF, 599 F.2d at 354;
7 accord, Brookfield, 174 F.3d at 1059.
8 There is significant uncontroverted evidence of intent in this case including: the request
9 for a license from Fifty-Six Hope Road and proceeding without one when it was denied
10 (SUF ¶ 70); Defendants’ use of Bob Marley music titles and lyrics on their Bob Marley products
11 (SUF ¶ 65); Defendants’ use of Bob Marley, Licensed Marley and Marley to promote their
12 products (SUF ¶ 73); Defendants’ use of Bob Marley metatags to sell the products (SUF ¶ 64);
13 the 2007 Action and Defendants’ knowledge of Plaintiffs’ rights and proceeding despite that
14 knowledge (SUF ¶ 48); and the existence of the TRO in the 2007 Action and the sale of new Bob
15 Marley products within 46 days that the TRO expired. (SUF ¶ 49.) All of these facts establish
16 Defendants’ intent and that an inference of confusion should be readily drawn, and the burden
17 shifts to Defendants to show their efforts have proven unsuccessful. HMH Publishing Co., Inc. v.
18 Brincat, 504 F.2d 713, 720 (9th Cir. 1974). Defendants have no evidence to meet their burden to
19 show that their actions were not willful.

20 D. Given the Nature of Defendants’ Use of the Marley Intellectual Property, the
Sleekcraft Test is the Appropriate Test for Likelihood of Confusion
21
22 In the hearing on the preliminary injunction, Defendants argued that the Sleekcraft test for
23 likelihood of confusion was inappropriate given that Defendants’ Bob Marley Products should be
24 considered artwork. Defendants suggested that the appropriate test for determining whether they
25 have infringed the Marley Intellectual Property is the test articulated in Rogers v. Grimaldi, 875
26 F.2d 994 (2d Cir. 1989). The more First Amendment-friendly Rogers test is premised upon the
27 belief that “overextension of Lanham Act restrictions in the area of titles might intrude on First
28 Amendment values.” Id. at 997-98. Other circuits besides the Ninth Circuit have since expanded
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1 this analysis beyond the use of another’s trademark in a title but, instead, to all aspects of a
2 creative work. See Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc., 886 F.2d
3 490, 495 (2d Cir. 1989); ETW, 332 F.3d at 927. Given that Defendants do not use the Marley
4 Intellectual Property in any titles of creative works, that alone is grounds for precluding
5 application of the Rogers test. Even assuming that the Ninth Circuit applies the Rogers test to use
6 of another’s trademark in any aspect on merchandise, it is inappropriate given the exploitative and
7 non-expressive nature of Defendants’ use of the Marley Intellectual Property.
8 In determining whether Defendants are entitled to the Rogers test, it must first be
9 determined how expressive Defendants’ products are, which in this case are apparel and
10 merchandise featuring Bob Marley’s image and likeness. As Professor McCarthy has observed,
11 “[t]he Rogers decision applies only to use of a mark in accused expressive works such as art
12 works, motion pictures and books. It does not apply to ordinary, non-artistic, commercial
13 speech.” MCCARTHY § 31:144; See ETW, 332 F.3d at 937 (finding that defendant’s “work is
14 expression which is entitled to the full protection of the First Amendment and not the more
15 limited protection afforded to commercial speech.”) There is a continuum between expressive
16 works and non-artistic commercial speech, and identifying where an alleged infringer’s work is
17 on that continuum is crucial for determining whether it is entitled to the protections of Rogers. In
18 determining how much weight to afford the defendant’s interest in artistic expression, ETW cites
19 from Comedy III Productions, Inc. v. Gary Saderup, Inc. (2001) 25 Cal.4th 387, which discusses
20 the interplay between the First Amendment and a California right of publicity claim which the
21 court noted was remarkably similar to a Lanham Act false endorsement claim. See ETW, 332
22 F.3d at 924 (“cases which address both these types of claims should be instructive in determining
23 whether [defendant] is entitled to summary judgment on those claims.”)
24 At issue in Comedy III were t-shirts and lithographs featuring artist Gary Saderup’s
25 charcoal drawing of The Three Stooges. Saderup argued that judgment against him for violation
26 of The Three Stooges’ right of publicity contravened his right of free speech under the First
27 Amendment. The court agreed that Saderup’s portraits were expressive works and not
28 commercial speech; “[An expressive activity] does not lose its constitutional protection because it
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1 is undertaken for profit.” Id. at 396. Further, the court also found that “[b]ecause celebrities take
2 on public meaning, the appropriation of their likenesses may have important uses in uninhibited
3 debate on public issues.” Id. at 397.
4 However, the court ultimately found infringement. It refused to give carte blanche to any
5 cry of “freedom of expression” and focused on the actual depiction of the celebrities at issue:
6 “we follow those that have [concluded] that depictions of celebrities amounting to little more than
7 the appropriation of the celebrity’s economic value are not protected expression under the First
8 Amendment.” Id. at 400. The court continued: “When artistic expression takes the form of a
9 literal depiction or imitation of a celebrity for commercial gain . . . without adding significant
10 expression beyond that trespass, the . . . interest in protecting the fruits of artistic labor outweighs
11 the expressive interests of the imitative artist.” Id. at 405; accord Dr. Seuss Entertainment, L.P.
12 v. Penguin Books U.S.A., Inc., 109 F.3d 1394, 1400 (9th Cir. 1997). The court termed such added
13 “significant expression” as “transformative elements or creative contributions.” Comedy III,
14 25 Cal.4th at 407. Applying this analysis to the t-shirts at issue in Comedy III, the court held,
15 We can discern no significant transformative or creative contribution. His

undeniable skill is manifestly subordinated to the overall goal of creating literal,
16 conventional depictions of The Three Stooges so as to exploit their fame.
17 ***
Moreover, the marketability and economic value of Saderup’s work derives
18 primarily from the fame of the celebrities depicted . . . [and] we can perceive no
transformative elements in Saderup’s works that would require such [First
19 Amendment] protection.”
20 Id. at 49. The facts and finding in Comedy III are almost applicable wholesale to the instant
21 dispute. The marketability and economic value of the Bob Marley Products is derived
22 exclusively from the fame of Bob Marley; while Defendants have added some stylistic elements
23 to make the apparel attractive to customers, these elements are clearly subordinate to the overall
24 goal of delivering recognizable portraits of Bob Marley so as to exploit his fame. Defendants’
25 added elements include Bob Marley song titles, album titles and lyrics that are meant to further
26 draw an association between the products and Bob Marley’s fame and celebrity. The apparel at
27 issue is almost identical in commercial effect to the shirts at issue in Comedy III and, thus, are not
28 entitled to First Amendment protection.

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1 Defendants liken the instant facts to ETW as opposed to Comedy III. However, the factual
2 differences between the instant case and ETW -- especially when compared to the factual
3 similarities between the instant case and Comedy III -- are so manifest as to defeat any such
4 application. In ETW, the goods at issue were reproductions of expensive serigraphs and
5 lithographs, not bargain bin t-shirts priced to sell. These paintings featured numerous
6 “transformative elements,” including the depiction of other golfing legends looking upon Tiger
7 Woods from the heavens and a depiction of the clubhouse at the Masters Tournament, so that the
8 value and appeal of the painting derived from the creativity and skill of the artist, not Woods’
9 identity or celebrity. Moreover, Woods had not exploited his celebrity identity through paintings
10 such that consumers might associate such a product with him. This is remarkably different from
11 this case where consumers are not only likely to believe that the Bob Marley Products are
12 endorsed by or associated with Plaintiffs by virtue of its exploitation of Bob Marley’s identity,
13 but also on Plaintiffs’ longtime and popular exploitation of Bob Marley’s image and likeness on
14 apparel. Consumers consider paintings to be art and do not expect their subjects to have endorsed
15 the painting, whereas consumers expect t-shirts to be endorsed by their subject. See McCarthy
16 § 10:43 (91.2% of survey respondents agree with statement “[n]o product can bear the name of an
17 entertainer . . . or some other famous person unless permission is given for its use of [sic] the
18 owner of the name or character.”) Defendants’ actions are not reminiscent of those of the ETW
19 defendants, but instead the Comedy III defendants, and are correctly analyzed under the
20 traditional test for likelihood of confusion.
21 V. CONCLUSION
22 Summary adjudication should be granted on Plaintiffs’ False Association Claim under
23 Section 1125(a). There are no material facts in dispute as to that claim, and the Court only need
24 apply the law presented herein to those facts.
25 MANATT, PHELPS & PHILLIPS LLP
26 Dated: November 30, 2009 By: /s/ Jill M. Pietrini

Jill M. Pietrini
27 Attorneys for Plaintiff and Counter-Defendant
FIFTY-SIX HOPE ROAD MUSIC, LTD.
28
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Fifty-Six V Avela (Bob Marley ROP) (Plaint. PMSJ)

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Case 2:08-cv-00105-PMP-GWF Document 114 Filed 11/30/09 Page 1 of 34

1 MANATT, PHELPS & PHILLIPS, LLP

7 JOLLEY, URGA, WIRTH, WOODBURY & STANDISH

15 UNITED STATES DISTRICT COURT

17 Fifty-Six Hope Road Music, Ltd., a Case No. 2:08-cv-00105-PMP-GWF

27 AND RELATED COUNTERCLAIM.

4 II. STATEMENT OF FACTS ................................................................................................. 3

17 3. Defendants’ Use of Bob Marley and Marley to Advertise Their

1 MOTION FOR SUMMARY ADJUDICATION AND REQUEST FOR HEARING

22 MEMORANDUM OF POINTS AND AUTHORITIES

25 Association Claim. As explained by the undisputed facts summarized below, Defendants’

28 violation of Section 1125(a).

12 Plaintiffs’ intellectual property rights.

15 deceive consumers as to Defendants’ affiliation, endorsement, or association with Bob Marley

2 summary adjudication on their second claim for relief.

3 II. STATEMENT OF FACTS

5 A. Bob Marley is an Iconic and Famous Figure

7 as a 2010 inductee into the Grammy Hall of Fame. (SUF ¶ 11.)

5 This agreement persists to the present day. (SUF ¶ 23.)

6 B. Fifty-Six Hope Road’s Ownership of the Marley Intellectual Property

12 own an incontestable trademark registration of TUFF GONG & Design, Registration

19 lyrics on merchandise. (SUF ¶ 37.)

2 2. Plaintiffs’ Have Consistently Exploited and Enforced their Rights in

13 merchandise featuring and trading upon Bob Marley’s identity.

21 Marley Intellectual Property. Plaintiffs had no specific knowledge of infringement perpetrated by

26 C. Defendants’ Undisputed Willful Infringement of the Marley Intellectual

26 identity. (SUF ¶ 61.)

8 business from Plaintiffs. (SUF ¶¶ 71, 72.)

9 III. STANDARD FOR SUMMARY ADJUDICATION

1 IV. PLAINTIFFS ARE ENTITLED TO SUMMARY ADJUDICATION ON THEIR

9 entertainer under Section 1125(a) is equivalent to a false association or endorsement claim.

13 Likelihood of confusion in a celebrity case is more clearly stated by an examination of the

21 support each element of this claim in Plaintiffs’ favor.

22 A. Plaintiffs’ Own Trademark Rights in Bob Marley’s Identity

1 holder in distinctive mark). As the Ninth Circuit has held:

2 A false endorsement claim based on the unauthorized use of a celebrity’s identity

19 Cir. 2002). The court held in Cairns:

27 Here, plaintiffs assert a commercial interest in preventing unauthorized use of

1 satisfactorily allege a false endorsement claim based on defendants’ use of

2 sufficient to support their False Association Claim under Section 1125(a).

3 B. Defendants Have Used, Without Authorization, Reproductions and Colorable

22 1. Defendants Have Used Copies and Reproductions of Plaintiffs’

26 celebrity’s or celebrity’s successor-in-interest’s trademark rights in the celebrity’s identity

3 hair and dress” in advertisement).

6 argument, faulty in a number of respects, is partially premised on the holding in Cairns v.

6 there is no separate statutory requirement of ‘trademark use.’” McCarthy on Trademarks and

9 a cause of action for false advertising under [Section 1125(a)].”)

17 of § 43(a) is broad”). More importantly, Defendants’ argument obscures the fundamental

21 and then promote those products under his name.

22 3. Defendants’ Use of Bob Marley and Marley to Advertise Their

11 their apparel with Bob Marley and Plaintiffs.

12 C. Defendants’ Use of the Marley Intellectual Property is Likely to Cause

24 facts supporting them all strongly favor finding a likelihood of confusion.

25 1. Strength and Level of Recognition of Bob Marley

25 of finding that confusion is likely.

26 2. Relatedness of the Fame of Bob Marley to Defendants’ Products

16 products bearing his image and music titles.

17 3. The Similarity of the Likenesses Used by the Parties

1 weighs heavily in favor of finding likely confusion.

2 4. Evidence of Actual Confusion

1 ¶ 84.) Even more probative of consumers’ perceived association or sponsorship of Defendants’

13 association rate in survey constituted strong evidence indicating a likelihood of confusion);