Three years after filing a federal lawsuit in Las Vegas, the widow and children of reggae legend Bob Marley are trying to persuade a jury to award them damages in the case, which stems from the sale of T-shirts bearing Marley's image in retail stores across the United States.
In a trial that began Jan. 4, Marley's heirs have accused the defendants of unfair competition in selling unlicensed merchandise with Marley's identity and persona.
They also claim the defendants have intentionally interfered with their business relationships, causing retailers such as Walmart and Target to drop the Marley family's products in favor of the defendants' cheaper merchandise.
"The basic tension here is between the idea that celebrities ought to be able to get paid or get control over their image versus the idea that everybody should be free to talk about popular culture," Georgetown University law professor Rebecca Tushnet said.
Tushnet, who teaches intellectual property law and has written about the Marley family's lawsuit, said potential profits from images of the musician and social activist, still popular nearly 30 years after his death, probably prompted the lawsuit.
"Celebrity identities can be very valuable," Tushnet said. Just how valuable will be determined at trial, she added.
The Las Vegas trial comes just four months after a New York judge ruled against the Marley family in an unrelated federal lawsuit over copyrights to five albums that include some of Marley's best-known songs, including "Get Up, Stand Up" and "I Shot the Sheriff."
U.S. District Judge Philip Pro is presiding over the Las Vegas trial, which is expected to conclude next week. Marley's son Rohan has testified at the trial and another son, Robert, was in the courtroom this week. But no family members nor any of the lawyers in the case would comment for this article.
Before trial, Pro dismissed the family's claims of trademark infringement and infringement of the right of publicity. Those rulings focus the case on the family's claim for false endorsement.
"Liability can no longer be established by demonstrating the unauthorized use of Bob Marley's identity for commercial gain," the defendants' lawyers wrote in their trial brief. "Instead, under their 'celebrity endorsement' theory, Plaintiffs must prove that Defendants used Bob Marley's identity in a manner which is likely to cause consumer confusion as to (the family's) sponsorship or endorsement of Defendants' products."
Marley died of cancer in 1981 at the age of 36.
"Bob Marley died more than two decades before Defendants ever used his image on any product," defense attorneys wrote. "There is no possibility that Bob Marley could have been associated with Defendants or their products, or could have sponsored or endorsed any of Defendants' products."
Tushnet said the area of law involved in the Las Vegas case has become "really big and complicated" in the past decade, with "all sorts of overlapping claims" and underlying First Amendment free speech issues. Nevertheless, she sides with the defendants, calling herself an "extremist" in that respect.
"First of all, Bob Marley is dead; he's not endorsing anyone," the law professor said. "I don't think that's a reasonable implication to take away from his image on a T-shirt."
Tushnet said T-shirts are a common method for delivering speech in today's society.
"I think that claims like this shouldn't succeed unless the plaintiffs can prove that consumers care," she added.
The case was filed in 2008 by Fifty-Six Hope Road Music Ltd., a Bahamian corporation named for Marley's address in Kingston, Jamaica; and Zion Rootswear, a Florida-based company. Fifty-Six Hope Road was formed by Marley's widow, Rita, and nine of his 11 children.
According to the family's trial brief, the company first licensed Marley's identity in 1986. In 1999, it granted Zion exclusive worldwide license to design, manufacture and sell T-shirts bearing Marley's image.
"Currently, Plaintiffs license Bob Marley's identity on more than 100 types of products," according to their trial brief. "These licensees, who pay significant royalties to Fifty-Six Hope Road or its related entities, do so because of the tremendous value in using Bob Marley's identity on merchandise."
The plaintiffs have sent 400 cease-and-desist letters and filed numerous lawsuits over the past two decades.
"In no such proceeding has Fifty-Six Hope Road's status as the rightful owners of all rights in Bob Marley's name and likeness been successfully challenged," according to the family's trial brief.
The Las Vegas lawsuit was filed after Fifty-Six Hope Road learned that AVELA, a Nevada corporation, and its licensees were making and selling apparel featuring Marley's identity through Target stores.
Rather than stop, according to the plaintiffs' trial brief, the defendants "increased their sale of Bob Marley clothing and expanded into other products," such as beach towels, bobbleheads and stickers. The defendants' products also have been sold at such popular retail stores as Walmart and Wet Seal.
The defendants have avoided using the Bob Marley trademark directly on their products, the plaintiffs allege, but have allowed licensees and retailers to promote products under the singer's name and have used his song titles and lyrics directly on their products.
"Defendants use their Marley associated text together with images of Bob Marley in order to draw consumer association with Bob Marley without actually using the trademark BOB MARLEY," the family claims.
The defendants unsuccessfully sought a license from the Marleys in 2006.
Named in the lawsuit are Leo Valencia, owner of Reno-based AVELA and X One X Movie Archive; Jem Sportswear; and Central Mills (Freeze).
AVELA publishes and licenses photographs, movie posters and other artwork for retail use. Jem and Freeze are licensees of AVELA that make and sell T-shirts and other apparel bearing images licensed by AVELA.
"In 2004, AVELA first acquired some photographs of Bob Marley from photographer Roberto Rabanne, who represented to Mr. Valencia that he was an acquaintance of Bob Marley and had the permission to take, sell and merchandise the images..." according to the defendants' trial brief. "Because AVELA was aware that Hope Road had a trademark registration for the words 'BOB MARLEY,' AVELA prohibited licensees from selling apparel with the words MARLEY or BOB MARLEY."
The defendants claim their conduct has caused no "actual harm" to the Marley family.
Rabanne and Valencia both testified this week. Rabanne said he now believes he made a "huge mistake" when he made the deal with Valencia.
"I started to realize that I had been had," he told the jury.
Bruce Lee Enterprises, owned by the family of the late actor Bruce Lee, also has a federal trademark infringement lawsuit against Valencia and AVELA pending in New York.
SOURCE: Las Vegas Journal Review