fifty-six v avela (bob marley rop) (plaint. pmsj)

8/7/2019 Fifty-Six v Avela (Bob Marley ROP) (Plaint. pMSJ)

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MANATT, PHELPS & PHILLIPS, LLPJILL M. PIETRINI (Bar No. CA 138335)

e-mail: [email protected] E. MALLEN (Bar No. CA 120005)

e-mail: [email protected] A. BOST (Bar No. CA 261531)

e-mail: [email protected] West Olympic BoulevardLos Angeles, CA 90064-1614Telephone: (310) 312-4000Facsimile: (310) 312-4224

JOLLEY, URGA, WIRTH, WOODBURY & STANDISHWILLIAM R. URGA (Bar No. NV 1195)

email: [email protected]. CHRISTOPHER ROSE (Bar No. NV 7500)

email: [email protected] Howard Hughes Pkwy.Wells Fargo Tower, 16th Floor

Las Vegas, NV 89169Telephone: (702) 699-7500Facsimile: (702) 699-7555

Counsel for Plaintiffs and Counter-DefendantsFIFTY-SIX HOPE ROAD MUSIC, LTD. andZION ROOTSWEAR, LLC

UNITED STATES DISTRICT COURT

DISTRICT OF NEVADA

Fifty-Six Hope Road Music, Ltd., aBahamian corporation; and ZionRootswear, LLC, a Florida limited liabilitycompany,

Plaintiffs,

vs.

A.V.E.L.A., Inc., a Nevada corporation;Sci-Fi Productions, Inc., dba X One XMovie Archives, a Nevada corporation;JEM Sportswear, a California corporation;

Central Mills, Inc. (Freeze), a New Yorkcorporation; and Leo Valencia, anindividual,

Defendants.

AND RELATED COUNTERCLAIM.

Case No. 2:08-cv-00105-PMP-GWF

PLAINTIFFS MOTION FOR SUMMARYADJUDICATION ON PLAINTIFFS FALSEDESIGNATION OF ORIGIN ANDASSOCIATION CLAIM UNDER 15 U.S.C. 1125(a), AND BRIEF IN SUPPORTTHEREOF

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


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TABLE OF CONTENTS

Page

i

I. INTRODUCTION .............................................................................................................. 1

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

A. Bob Marley is an Iconic and Famous Figure .......................................................... 3

B. Fifty-Six Hope Roads Ownership of the Marley Intellectual Property ................. 5

1. The Identity of Bob Marley Operates as a Trademark................................ 6

2. Plaintiffs Have Consistently Exploited and Enforced their Rightsin the Marley Intellectual Property ............................................................. 7

C. Defendants Undisputed Willful Infringement of the Marley IntellectualProperty................................................................................................................... 8

III. STANDARD FOR SUMMARY ADJUDICATION........................................................ 11

IV. PLAINTIFFS ARE ENTITLED TO SUMMARY ADJUDICATION ON THEIR

FALSE ASSOCIATION CLAIM..................................................................................... 12

A. Plaintiffs Own Trademark Rights in Bob Marleys Identity ............................... 12

B. Defendants Have Used, Without Authorization, Reproductions andColorable Imitations of the Marley Intellectual Property in Connection withthe Sale and Distribution of Goods ....................................................................... 15

1. Defendants Have Used Copies and Reproductions of PlaintiffsTrademark in Bob Marleys Identity......................................................... 15

2. Defendants Use of the Bob Marley Song and Music Titles FurtherDraws the Association to Bob Marley ...................................................... 19

3. Defendants Use of Bob Marley and Marley to Advertise TheirProducts Further Draws Sponsorship and Association ............................. 20

C. Defendants Use of the Marley Intellectual Property is Likely to CauseConfusion .............................................................................................................. 21

1. Strength and Level of Recognition of Bob Marley................................... 21

2. Relatedness of the Fame of Bob Marley to Defendants Products ........... 22

3. The Similarity of the Likenesses Used by the Parties............................... 23

4. Evidence of Actual Confusion .................................................................. 24

5. Similarity of Marketing Channels Used.................................................... 25

6. The Likely Degree of Purchaser Care is Low........................................... 267. Defendants Intent in Selecting the Use of Bob Marleys Image ............. 26

D. Given the Nature of Defendants Use of the Marley Intellectual Property,the Sleekcraft Test is the Appropriate Test for Likelihood of Confusion............. 27

V. CONCLUSION................................................................................................................. 30



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TABLE OF AUTHORITIES

Page

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CASES

Abdul-Jabbar v. General Motors Corporation,

75 F.3d 1391 (9th Cir. 1996)................................................................................................... 13

Allen v. Mens World Outlet, Inc.,679 F. Supp. 360 (S.D.N.Y. 1988).......................................................................................... 13

Allen v. National Video,610 F. Supp. 612 (S.D.N.Y. 1985).................................................................................... 12, 14

AMF, Inc. v. Sleekcraft Boats,599 F.2d 341 (9th Cir. 1979)............................................................................................. 21, 27

Anderson v. Liberty Lobby, Inc.,477 U.S. 242 (1986)................................................................................................................ 11

Brookfield Communications, Inc. v. West Coast Entertainment Corp.,

174 F.3d 1036 (9th Cir. 1999)........................................................................................... 21, 27Cairns v. Franklin Mint Co.,

24 F.Supp.2d 1013 (C.D. Cal. 1998), affd., 292 F.3d 1139 (9th Cir. 2002)........ 13, 14, 16, 17

Celotex Corporation v. Catrett,477 U.S. 317 106 S. Ct. 2548 (1986)...................................................................................... 11

Cliffs Notes, Inc. v. Bantam Doubleday Dell Publishing Group, Inc.,886 F.2d 490 (2d Cir. 1989).................................................................................................... 28

Comedy III Productions, Inc. v. Gary Saderup, Inc.(2001) 25 Cal.4th 387 ................................................................................................. 28, 29, 30

Cullman Ventures, Inc. v. Columbian Art Works, Inc.,

717 F. Supp. 96 (S.D.N.Y. 1989)............................................................................................ 22Downing v. Abercrombie & Fitch,

265 F.3d 994 (9th Cir. 2001)....................................................................................... 12, 21, 23

Dr. Seuss Entertainment, L.P. v. Penguin Books U.S.A., Inc .,109 F.3d 1394 (9th Cir. 1997)................................................................................................. 29

Elvis Presley Enterprises, Inc. v. Capece,141 F.3d 188 (5th Cir. 1998)................................................................................................... 19

ETW Corp. v. Jireh Pub., Inc.,332 F.3d 915 (6th Cir. 2003)............................................................................................ passim

Experience Hendrix, LLC v. Electric Hendrix, LLC,

90 U.S.P.Q. 2d 1883 (W.D. Wash. 2008)................................................................... 23, 26, 27Exxon Corp. v. Texas Motor Exchange, Inc.,

628 F.2d 500 (5th Cir. 1980)................................................................................................... 25

GoTo.com, Inc. v. Walt Disney Co.,202 F.3d 1199 (9th Cir. 2000)........................................................................................... 21, 26

HMH Publishing Co., Inc. v. Brincat, 504 F.2d 713 (9th Cir. 1974)............................................ 27

Jada Toys, Inc., v. Mattel, Inc.,518 F.3d 628 (9th Cir. 2008)................................................................................................... 25



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TABLE OF AUTHORITIES

(continued)

Page

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Landham v. Lewis Galoob Toys, Inc.,227 F.3d 619 (6th Cir. 2000)................................................................................................... 12

Matsushita Elec. Indus. Co. v. Zenith Radio Corp.,475 U.S. 574, 106 S. Ct. 1348 (1986)..................................................................................... 11

National Football League v. Governor of Delaware,435 F. Supp. 1372 (D. Del. 1977) ........................................................................................... 25

Nutri/System, Inc. v. Can-Stan Industries, Inc.,809 F.2d 601 (9th Cir. 1987)................................................................................................... 26

Parks v. LaFace Records,329 F.3d 437 (6th Cir. 2003)....................................................................................... 12, 14, 18

Pirone v. MacMillan, Inc.,894 F.2d 579 (2d Cir. 1990).................................................................................................... 19

Playboy Enterprises, Inc. v. Netscape Communications Corp.,354 F.3d 1020 (9th Cir. 2004)................................................................................................. 21

Rogers v. Grimaldi,875 F.2d 994 (2d Cir. 1989).............................................................................................. 27, 28

Surf LineHawaii Ltd. v. Ahakuelo,13 U.S.P.Q. 2d, 1975 (D. Haw. 1989) .................................................................................... 26

Toho Co. Ltd. v. William Morrow & Co.,33 F.Supp.2d 1206 (C.D. Cal. 1998) ...................................................................................... 12

United States Jaycees v. San Francisco Junior Chamber of Commerce ,354 F. Supp. 61 (N.D. Cal. 1972), affd513 F.2d 1226 (9th Cir. 1975)................................. 11

Waits v. Frito-Lay, Inc.,978 F.2d 1093 (9th Cir. 1992)............................................................................... 12, 13, 14, 18

Wendt v. Host International, Inc.,125 F.3d 806 (9th Cir. 1997)............................................................................................. 13, 24

White v. Samsung Electronics America, Inc.,971 F.2d 1395 (9th Cir. 1992)..................................................................................... 16, 20, 21

STATUTES

15 U.S.C. 1125(a) ............................................................................................................... passim

15 U.S.C. 1127........................................................................................................................... 21

Section 43(a) [15 U.S.C. 1125(a)] ............................................................................................. 18

OTHER AUTHORITIESMcCarthy on Trademarks and Unfair Competition 23:11.50 (4th Ed. 2009) ............... 18, 28, 30

The Right of Publicity: Past, Present, and Future,1207 PLI Corp. Law and Prac. Handbook, 159 (Oct. 2000) Keller, Bruce P......................... 13

RULES

Federal Rules of Civil Procedure 56(c)......................................................................................... 11



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MOTION FOR SUMMARY ADJUDICATION AND REQUEST FOR HEARING

Plaintiffs and Counter-Defendants Fifty-Six Hope Road Music, Ltd. (Fifty-Six Hope

Road) and Zion Rootswear, LLC (Zion) (collectively, Plaintiffs) hereby submit this Motion

for Summary Adjudication on Plaintiffs second claim for relief against Defendants A.V.E.L.A.,

Inc. (AVELA), Leo Valencia, Sci-Fi Productions, Inc., dba X One X Movie Archives

(X One X), JEM Sportswear, Inc. (JEM), and Central Mills, Inc. dba Freeze (Freeze)

(collectively, Defendants), for False Designation of Origin and Sponsorship under 15 U.S.C.

1125(a) (the False Association Claim). Plaintiffs are entitled to summary adjudication on their

False Association Claim given that Defendants unauthorized use in commerce of the identity of

Bob Marley, including his image and likeness (collectively, the Marley Intellectual Property),

constitutes a false designation of origin and false association, sponsorship, or endorsement as

defined by 15 U.S.C. 1125(a) (Section 1125(a)). It is undisputed that Fifty-Six Hope Road

owns the rights associated with Bob Marley and that there is a likelihood of confusion as to

association, sponsorship, or endorsement caused by Defendants activities. Defendants have

widely, intentionally, and to great profit, used the Marley Intellectual Property without

authorization, so as to falsely associate their products with, and falsely suggest endorsement by,

Bob Marley and Plaintiffs. Defendants have no evidence to countervail these facts.

This motion is made and based upon the following attached memorandum of points and

authorities and the accompanying declarations of Doreen Crujeiras, Jill M. Pietrini and

Timothy J. Ervin, as well as the pleadings and papers on file herein. Plaintiffs request a hearing

on this motion.

MEMORANDUM OF POINTS AND AUTHORITIES

I. INTRODUCTIONThis case is ripe for summary judgment on Plaintiff Fifty-Six Hope Roads False

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

activities, in creating, marketing and exploiting unauthorized merchandise bearing the image of

the late international recording artist icon Bob Marley constitutes a false designation of origin and

violation of Section 1125(a).



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Fifty-Six Hope Road, owned by the children of Bob Marley, has succeeded to rightful

ownership of all of the Marley Intellectual Property. Appreciative of the value of these assets,

Fifty-Six Hope Road and its affiliates have invested significant time, energy, and capital into

cultivating Bob Marleys legacy. To this end, Fifty-Six Hope Road granted many licenses to sell

merchandise bearing indicia of Bob Marleys identity, specifically, his image, likeness, and name,

including an exclusive license to Zion for certain apparel (including t-shirts). In total disregard of

Plaintiffs intellectual property rights, Defendants have flooded the market with unauthorized

apparel and merchandise -- mainly, t-shirts and beach towels -- featuring the image and likeness

of Bob Marley, also bearing Bob Marleys song titles, album titles, and lyrics (Bob Marley

Products), some of which are also federally registered trademarks, e.g., CATCH A FIRE and

ROOTS ROCK REGGAE. It is undisputed that Defendants did so with full knowledge of

Plaintiffs intellectual property rights.

Defendants try to avoid liability by not using Bob Marleys name directly on the Bob

Marley Products. Those actions are ineffective. The likelihood of confusion or mistake or

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

and Plaintiffs, or as to Bob Marley and Plaintiffs sponsorship or approval of Defendants goods

and commercial activities is undisputed. To that end, Plaintiffs have an incontrovertible survey

that plainly indicates the confusion resulting from Defendants activities. The Bob Marley

Products themselves and how they are promoted under his name also amply illustrate the

likelihood of confusion. Defendants have no evidence to controvert Plaintiffs survey, or any

other material fact. Rather, Defendants claim they have a right to use the Marley Intellectual

Property solely based on their claim to having purchased photographs of Bob Marley from a third

party (Roberto Rabanne), and because they do not use Bob Marleys name directly on the Bob

Marley Products bearing those photographic images. This is insufficient as a matter of law to

defeat Plaintiffs False Association Claim. Defendants have made a transformative use of the

photographs to create merchandise. Defendants have taken everything they can from Fifty-Six

Hope Road to create an association with Bob Marley for that merchandise, and the facts are

undisputed in this regard. Accordingly, as a matter of law, Defendants have falsely associated



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their products with Bob Marley in violation of Section 1125(a), and Plaintiffs are entitled to

summary adjudication on their second claim for relief.

II. STATEMENT OF FACTSThe material facts in this motion are not in dispute, as shown below.

A. Bob Marley is an Iconic and Famous FigureBob Marley was, and is, an international icon. Bob Marley was a musical and cultural

superstar during his life whose fame and popularity has only increased since his premature death

from cancer in 1981 at the age of 36. (SUF 1.) Bob Marley was a Jamaican singer, songwriter,

performer, and guitarist responsible for introducing the world to reggae music; that said, his songs

transcend the genre and are well known amongst the general population. (SUF 2.) These songs

include the hits I Shot the Sheriff, No Woman, No Cry, One Love, Get Up, Stand Up,

Three Little Birds, Jamming, Redemption Song, Stir it Up, and Exodus, among others.

(SUF 3.) During his lifetime and posthumously, Bob Marley released 15 albums and dozens of

compilations, many still in print all well-recognized. To date, Bob Marley recordings have sold

more than 100 million units. Bob Marleys posthumously released record album, Legend, is

the biggest selling reggae album of all time, having sold more than 20 million records worldwide

and being certified ten times Platinum in the U.S. (SUF 4.)

In 1976, Bob Marley and the Wailers was named Band of the Year byRolling Stone

magazine, In 1978, Bob Marley was awarded the Peace Medal of the Third World from the

United Nations. Bob Marley was inducted into the Rock and Roll Hall of Fame in 1994. (SUF

5.) In 1999, Time magazine chose Bob Marleys Exodus album as the greatest album of the

20th Century, and the album has received similar accolades from other publications and

entertainment companies. (SUF 6.) In February 1981, before his death, Bob Marley was

awarded Jamaicas third highest honor the Jamaican Order of Merit. In February 2001, Bob

Marley received a star on the Hollywood Walk of Fame. In 2001, Bob Marley was posthumously

awarded the Grammy Lifetime Achievement Award by the National Academy of Recording

Arts and Sciences. (SUF 7.) In 2004,Rolling Stone magazine ranked Bob Marley No. 11 on

the list of 100 Greatest Artists of All Time, and recently the BBC named Bob Marleys song



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One Love the Song of the Millennium. In 2006, the State of New York established Bob

Marley Boulevard in East Flatbush in Brooklyn, New York. (SUF 8.) That same year, the

Bank of Jamaica issued 1,000 Bob Marley gold and silver coins made by the British Royal Mint,

and Bob Marley's home in Jamaica was declared a national monument. (SUF 9.) In 2008,

Bob Marley was ranked byRolling Stone No. 19 of 100 Greatest Singers of All Times in a special

issue of the magazine. (SUF 10.) And recently, Bob Marley's song "Catch A Fire" was named

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

There is a Bob Marley museum at Bob Marleys residence, located at 56 Hope Road,

Kingston, Jamaica. Fifty-Six Hope Road is named after the location of Bob Marleys residence.

Fifty-Six Hope Road maintains a website at where merchandise is sold, and

operates a fan club. Currently there are 165,000 members of the Bob Marley fan club.

(SUF 12.) Fifty-Six Hope Road also has Bob Marley websites on various social networking

sites, which collectively have more than 5 million visitors. (SUF 13.) To this day, Bob Marley

garners significant amounts of unsolicited publicity from the media. (SUF 14.) His songs,

including those song titles used by Defendants, are often licensed by third parties, e.g., the

Jamaica Tourist Board licensed One Love for a national ad campaign aired in the U.S. (SUF

15), and third parties request permission to use his name in motion pictures and other

entertainment works, e.g,Marley and Me. (SUF 16.) Bob Marley is on the short list of best

known, and most important, musical artists of the last half-century. Several of Defendants

licensees and retailers concede Bob Marleys fame. (SUF 17.)

Fifty-Six Hope Road is composed and owned by children of Bob Marley. (SUF 18.)

Fifty-Six Hope Road was formed when Rita Marley, Bob Marleys wife, and nine of his eleven

children (collectively, the Marley Beneficiaries) consolidated their interests and formed Fifty-

Six Hope Road as a Bahamian corporation. (SUF 19.) Fifty-Six Hope Road was established to

engage in the business of the acquisition, maintenance, development, and exploitation of assets,

rights, and commercial interests pertaining to the late Robert Nesta Marley . . . (SUF 20.) In

1986, Fifty-Six Hope Road, through its predecessors, entered into its first merchandise license for

Bob Marleys identity. (SUF 21.) Since then, Fifty-Six Hope Road has entered into more than



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48 licenses with third parties to use Bob Marleys identity on more than 100 products. (SUF

22.) On February 1, 1999, Fifty-Six Hope Road entered into an agreement with Zion, whereby

Zion was granted the exclusive worldwide license to design, manufacture, and sell T-shirts

bearing the image and likeness of Bob Marley and other manifestations of Bob Marleys identity.

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

B. Fifty-Six Hope Roads Ownership of the Marley Intellectual PropertyFifty-Six Hope Road is the undisputed and sole owner of the BOB MARLEY trademarks1

and Bob Marleys identity, including his name, image, and likeness. (SUF 24.) Fifty-Six Hope

Road accrued these rights from Bob Marley via intestate succession. Bob Marley died in 1981,

intestate, as a domiciliary and legal resident of Jamaica. (SUF 1.) Initially, Bob Marleys estate

and all of its assets, including all of Marleys intellectual property rights and rights to Bob

Marleys name and likeness (the Marley Rights), succeeded to the Marley Beneficiaries and

were administered by Mutual Security Merchant Bank and Trust Co. Ltd. (the Bank). (SUF

28.) The Marley Rights were subsequently purchased by Island Logic, Inc., a New York

corporation, in 1988. (SUF 29.) The circumstances of the sale were disputed by certain of the

Marley children before the Jamaican Court of Appeals, such that the Bank was made to re-

advertise the Marley Rights for sale, resulting in Island Logic, Inc.s assignment of the Marley

Rights to Island Logic Ltd., a Bahamas company in December 1989. In December 1989, the

Bank assigned all name, likeness, and biographical rights to Island Logic Ltd. The sale and

subsequent assignment were confirmed by the Supreme Court of Jamaica in December 1991.

(SUF 30.)

In 1990, the Marley Rights were gifted from Island Logic Ltd. to Stichting Bob Marley

(Stichting), a Netherlands charitable foundation. (SUF 31.) During the time it owned the

1 Fifty-Six Hope Road owns U.S. Registration No. 2,349,361 for BOB MARLEY for goods ina variety of classes, including t-shirts, thermal shirts, jackets, hats, caps, sweatshirts, ties, andbandanas in Class 25. (SUF 25.) The BOB MARLEY registration vested on May 16, 2000,and, on March 30, 2006, Fifty-Six Hope Roads Affidavit of Continued Use and Affidavit ofIncontestability were accepted, making the registration incontestable. (SUF 26.) Fifty-SixHope Road has also used MARLEY alone for clothing since 2003, and that mark is pendingfederal registration. (SUF 27.)



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Marley Rights, Stichting licensed to Bob Marley Music, Inc. (Bob Marley Music), a California

corporation, the rights to Bob Marleys name and likeness. (SUF 32.) Bob Marley Music

entered several licenses for the use of the Marley Intellectual Property, beginning at least as early

as 1986. (SUF 33.) Stichting thereafter reconveyed the Marley Rights to Island Logic Ltd. in

1994, who, in 1995, conveyed the Marley Rights to Fifty-Six Hope Road. (SUF 34.) Fifty-Six

Hope Road has owned the Marley Rights, including all rights to Bob Marleys name, image, and

likeness, since 1995, and has since licensed those rights through its affiliated entities, Hope Road

Merchandising LLC and The Robert Marley Foundation, Ltd. Defendants have no evidence to

counter the direct chain of title of the Marley Rights to Fifty-Six Hope Road.

1. The Identity of Bob Marley Operates as a TrademarkThrough its related entity, The Robert Marley Foundation Ltd., the Marley Beneficiaries

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

No. 1,866,146, which prominently features the image of Bob Marley shown below (SUF 35):

Plaintiffs also use Bob Marleys image in other ways as a trademark. His image is used

prominently on apparel, beach towels and other merchandise, and in promotional materials for

such products. (SUF 36.) Plaintiffs use Bob Marleys well-known songs, album titles and

lyrics on merchandise. (SUF 37.)

Fifty-Six Hope Road, directly and through licensees, has used Bob Marleys image and

the BOB MARLEY trademark on a variety of goods and services, including clothing and beach

towels, and has entered into more than 48 licenses for the use of BOB MARLEY, MARLEY, Bob

Marley images and likeness, as well as other trademarks and properties derived from the fame

and legacy of Bob Marley. (SUF 22.) Currently, Plaintiffs license Bob Marleys identity on

more than 100 types of products. (SUF 22.) 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

Marleys identity on merchandise. (SUF 39.) As a result, the public has come to associate Bob

Marleys image with the Marley Beneficiaries and/or Fifty-Six Hope Road and recognize that



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permission is needed to use his identity, including his image, likeness and/or name. (SUF 40.)

2. Plaintiffs Have Consistently Exploited and Enforced their Rights inthe Marley Intellectual Property

Plaintiffs and their predecessor entities have consistently and popularly exploited their

rights in the Marley Intellectual Property via the sale of apparel and merchandise featuring Bob

Marleys name, image, and likeness. (SUF 41.) As noted above, Fifty-Six Hope Road and

prior owners of the Marley Rights have licensed the right to use Bob Marleys name, image, and

likeness on various goods, including clothing, since at least as early as 1986. (SUF 42.) Since

1999, Zion has been Fifty-Six Hope Roads exclusive licensee for certain apparel bearing Bob

Marleys name, image, and likeness. (SUF 23.) Fifty-Six Hope Roads and its predecessor

entities exploitation of the Marley Intellectual Property for more than two decades has resulted in

consumers association of Fifty-Six Hope Road and Bob Marleys children with apparel and

merchandise featuring and trading upon Bob Marleys identity.

Plaintiffs and their predecessor entities have consistently enforced their rights in the

Marley Intellectual Property against unauthorized infringers for almost two decades. (SUF 45.)

Specifically, as early as 1990 and continuing, Plaintiffs have sent 400 cease-and-desist letters to

individuals and entities manufacturing and selling various items of merchandise and apparel

featuring the image and likeness of Bob Marley, the BOB MARLEY or MARLEY trademarks,

and other intellectual property rights now owned by Fifty-Six Hope Road and derived from the

legacy and identity of Bob Marley. (SUF 46.) Plaintiffs have filed numerous trademarks,

copyright, and rights of publicity suits based on their ownership of the Marley Intellectual

Property and other intellectual property rights derived from Bob Marley and his legacy. In no

such proceeding has Fifty-Six Hope Roads status as the rightful owners of the Marley

Intellectual Property been successfully challenged. (SUF 47.) On the contrary, Fifty-Six Hope

Road, as representative of the heirs of Bob Marley and owner of his Intellectual Property, has

consistently policed and sought enforcement of its rights (SUF 45), such that it is clear that the

Marley Rights are owned by Fifty-Six Hope Road and the Marley Intellectual Property functions

as a brand.



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Plaintiffs have previously sought enforcement of their rights in the Marley Intellectual

Property against AVELA and Valencia in this District. On February 14, 2007, Plaintiffs filed a

complaint and ex parte application for temporary restraining order (TRO) against Fame Jeans,

Inc. (Fame), Fames principal Charles Friedman, AVELA, and Valencia (collectively, the

2007 Defendants) for trademark and rights of publicity infringement based on commercial

activity at the Winter 2007 MAGIC tradeshow in Las Vegas, Nevada (the 2007 Action). (SUF

48.) On February 15, 2007, the court granted Plaintiffs application for a TRO against the 2007

Defendants based on their activities at the then-ongoing MAGIC tradeshow. Although the court

held that the TRO would expire within ten days and would be followed by a hearing for a

preliminary injunction on February 26, 2007, the hearing was never held because the parties

entered into prolonged settlement negotiations and agreed to extend the TRO indefinitely, i.e., to

the date the case was voluntarily dismissed. (SUF 49.) During these negotiations, Fame -- the

manufacturer of the infringing merchandise at issue -- represented that they never actually made

any of the Bob Marley Products, rather they only had the image available to retailers to select for

future manufacture by Fame. Fame also agreed not to sell any Bob Marley Products in the future

(SUF 50.) Defendants confirmed Fame's failure to ever make any Bob Marley Products and its

decision not to do so in the future in communications with AVELAs attorney Gregg Paradise,

who represented all of the Defendants in the 2007 Action. (SUF 51.)

Plaintiffs were under the impression at the time in 2007 that the products manufactured

and sold by Fame were the full extent of AVELAs and Valencias unauthorized use of the

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

AVELA and Valencia beyond that at issue in the 2007 Action, and any such infringement was

precluded by the TRO issued therein and still in effect. (SUF 52.) As a result, Plaintiffs there-

fore dismissed the 2007 Action without prejudice. (SUF 53.) Plaintiffs thereafter monitored

the commercial activities of AVELA and Valencia to detect future infringement. (SUF 54.)

C. Defendants Undisputed Willful Infringement of the Marley IntellectualProperty

AVELA and X One X are self-proclaimed licensing and distribution companies owned



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and operated exclusively by Valencia (collectively, the AVELA Defendants). Essentially, the

business model of the AVELA Defendants is to purchase artwork, photographs, and designs,

usually depicting individual celebrities, movies, and various fictional characters. (SUF 55.)

The AVELA Defendants then commercially exploit their purported ownership in the images they

have purchased by selling them to manufacturers and vendors, such as JEM and Freeze, who in

turn then produce garments bearing these images and sell them to mass retailers such as Target,

WalMart and K-Mart. The AVELA Defendants represent that their ownership of the actual

images (i.e., photographs) gives the AVELA Defendants the right to license their use in a

transformative way for use on apparel and merchandise, all without the authorization from the

rights-holders in the depicted celebrities, movies, and fictional characters. (SUF 56.)

The AVELA Defendants have never been granted license, permission, ownership, or

authority to manufacture, design, market, or sell any merchandise bearing any of the Marley

Intellectual Property. (SUF 57.) Yet despite this, the claim brought in the 2007 Action, and

their knowledge of Plaintiffs ownership of the Marley Intellectual Property, Plaintiffs learned in

January 2008 that Defendants were actually making and selling apparel featuring Bob Marleys

identity in various Target retail stores. From Defendants own admissions, in January 2008, the

Bob Marley Products created by Defendants were being sold in over 3,000 Target stores and was

worth at least $500,000. (SUF 58.) Although Plaintiffs initiated the instant matter on

January 23, 2008, rather than stop, Defendants increased their sale of the Bob Marley Products

and expanded into other products. (SUF 59.) Through the course of this case, Plaintiffs have

learned that the AVELA Defendants have entered into at least twelve license agreements with

vendors and manufacturers of apparel and merchandise for the unauthorized exploitation of Bob

Marleys identity, and the Bob Marley Products have been sold at such popular retail outlets as

Target, WalMart, and Wet Seal, among many others. (SUF 60.) Since September 2009,

Plaintiffs learned that AVELA has entered into three new licenses to exploit Bob Marleys

identity. (SUF 61.)

Defendants are clearly aware that Plaintiffs possess intellectual property rights derived

from Bob Marley, yet their actions convey a belief that they have the right and authority to pick



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and choose which Bob Marley-derived intellectual property they can use. For example,

Defendants have purposefully and conspicuously avoided use of the BOB MARLEY mark

directly on any of the garments, yet they allow their licensees and retailers to promote the

AVELA products under or using Bob Marleys name. (SUF 63.) In conjunction with their

manufacturing and sale of the Bob Marley Products, Defendants have used confusingly similar

variations of the BOB MARLEY mark on documents and displays associated with those goods,

including internet listings for the Bob Marley Products, the metadata underlying said internet

listings, planogram label strips (also known as shelf labels), and other documents and displays.

(SUF 64.) Much of Defendants Bob Marley Products include textual design elements

reproducing and quoting famous Bob Marley album titles, song titles, and song lyrics, including

Roots Rock Reggae, I Shot the Sheriff, One Love, Buffalo Soldier, Waiting In Vain,

Get Up, Stand Up, Redemption Song, Uprising, and Catch A Fire. (SUF 65.)

Defendants use their Marley associated text in conjunction with images of Bob Marley in order to

draw consumer association with Bob Marley without actually using the trademark BOB

MARLEY. Per the terms of its agreement with JEM, Freeze, and other licensees, AVELA

maintains the right and ability to review and approve the licensees design of the Bob Marley

Products, and approves the use of Bob Marleys song titles, album titles, and lyrics on the Bob

Marley Products. (SUF 66.) AVELA goes so far as to provide pre-approved artwork with Bob

Marleys image using his song, album titles and lyrics, available for use by its licensees. (SUF

67.)

In justification, AVELA seeks to rely upon an unpledadvice of counsel defense from his

then attorney Gregg Paradise. (SUF 68.) Yet Attorney Paradises opinion does not support

the defense. Attorney Paradise warned AVELA and Valencia that there could be rights

associated with Bob Marleys image and likeness, depending on which state or countrys law

applied, and whether AVELA was going to sell the products outside of Nevada. Further,

Attorney Paradise did not tell AVELA and Valencia that it was okay to use Bob Marleys song

titles, album titles, and lyrics on any merchandise. (SUF 69.) In short, AVELA and Valencia

knew that there was substantial risk in proceeding with the unlicensed use of Bob Marleys image



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and likeness, and other indicia associated with Bob Marley, but they did it anyway. (SUF 69.)

Further, the AVELA Defendants sought a license to use Bob Marleys image and likeness

from one of the Marley Beneficiaries, Rohan Marley, who operated an affiliated company owned

by the Marley Beneficiaries. The license was sought in Fall 2006, but was never entered. (SUF

70.) The AVELA Defendants proceeded despite that denied request for a license.

Defendants continue to this day to trade on Plaintiffs trademark rights in Bob Marleys

identity, and his song and album titles, and, by offering cheaper products, unfairly siphoning

business from Plaintiffs. (SUF 71, 72.)

III. STANDARD FOR SUMMARY ADJUDICATIONSummary adjudication is proper where the pleadings and other evidence submitted to the

Court show that no genuine issue exists as to material fact and the moving party is entitled to

adjudication as a matter of law. FRCP 56(c). Summary adjudication is properly regarded as an

integral part of the Federal Rules of Civil Procedure, which, as a whole, were designed to secure

the just, speedy and inexpensive determination of every action. Celotex Corporation v. Catrett,

477 U.S. 317, 327, 106 S. Ct. 2548, 2555 (1986). Evidence that is merely colorable is not

enough to defeat summary adjudication. Disputes over irrelevant or unnecessary facts are

insufficient to avoid adjudication as a matter of law. Anderson v. Liberty Lobby, Inc., 477 U.S.

242, 248-52 (1986). Summary adjudication on behalf of a plaintiff in a trademark or unfair

competition case is available where the facts of liability are as clearly established as they are in

the instant matter. See United States Jaycees v. San Francisco Junior Chamber of Commerce ,

354 F. Supp. 61, 68-69 (N.D. Cal. 1972), affd513 F.2d 1226 (9th Cir. 1975).

Plaintiffs burden under Section 1125(a) is discharged by showing that there is no factual

dispute as to the elements of that claim. See Celotex, 477 U.S. at 325. The burden then shifts to

Defendants to show a factual dispute establishing a genuine issue for trial. See Jaycees, 354 F.

Supp. at 69. Defendants must do more than simply show that there is some metaphysical doubt

as to the material facts. They must set forth specific facts proving that there is a genuine issue

for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S. Ct. 1348,

1356 (1986).



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IV. PLAINTIFFS ARE ENTITLED TO SUMMARY ADJUDICATION ON THEIRFALSE ASSOCIATION CLAIM

To succeed on their Section 1125(a) claim, Plaintiffs must establish: (1) ownership of

the trademark[s] at issue; (2) use by [Defendants] without authorization, of a copy, reproduction,

counterfeit or colorable imitation of [Plaintiffs marks] in connection with the sale, distribution or

advertising of goods or services; and (3) that [Defendants] use of the mark[s] is likely to cause

confusion, or to cause mistake or to deceive. Toho Co. Ltd. v. William Morrow & Co., 33

F.Supp.2d 1206, 1210 (C.D. Cal. 1998). A false designation of origin claim brought by an

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

Landham v. Lewis Galoob Toys, Inc., 227 F.3d 619, 626 (6th Cir. 2000), citing Waits v. Frito-

Lay, Inc., 978 F.2d 1093, 1110 (9th Cir. 1992). In celebrity cases, the term mark applies to the

celebritys persona. Downing v. Abercrombie & Fitch, 265 F.3d 994, 1007 (9th Cir. 2001).

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

following eight factors: (1) the level of recognition that the celebrity has among the segment of

the society for whom the defendants product is intended; (2) the relatedness of the fame or

success of the celebrity to the defendants product; (3) the similarity of the likeliness used by the

defendant to the actual plaintiff, (4) evidence of actual confusion; (5) marketing channels used;

(6) likely degree of purchaser care; (7) defendants intent on selecting the celebrity; and

(8) likelihood of expansion of the product lines. Id. at 1007-1008. Not all factors are of equal

importance, nor do they necessarily apply to every case. Id. at 1008. The undisputed facts

support each element of this claim in Plaintiffs favor.

A. Plaintiffs Own Trademark Rights in Bob Marleys IdentityPlaintiffs clearly own trademark rights in the identity, and all features composing the

identity, of Bob Marley. Celebrities have standing to sue under [Section 1125(a)] because they

possess an economic interest in their identities akin to that of a traditional trademark holder.

Parks v. LaFace Records, 329 F.3d 437, 445 (6th Cir. 2003); see also Allen v. National Video,

610 F. Supp. 612, 625, 628 (S.D.N.Y. 1985) (recognizing celebritys claim under Section 1125(a)

because he has commercial investment in name and face tantamount to interests of a trademark



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

A false endorsement claim based on the unauthorized use of a celebritys identityis a type of false association claim, for it alleges the misuse of a trademark, i.e., asymbol or device such as a visual likeness, voice imitation, or other uniquelydistinguishing characteristic, which is likely to confuse consumers as to theplaintiffs sponsorship or approval of the product.

Waits, 978 F.2d at 1110.

A celebritys trademark rights in his or her identity has been held to include: unique

physical characteristics (see Wendt v. Host International, Inc., 125 F.3d 806, 812 (9th Cir. 1997));

voice (see Waits, 978 F.2d at 1110); name (see Abdul-Jabbar v. General Motors Corporation, 75

F.3d 1391, 1395 (9th Cir. 1996)); and likeness (see Allen v. Mens World Outlet, Inc., 679 F.

Supp. 360, 368 (S.D.N.Y. 1988)). Courts have noted that a Lanham Act false endorsement

claim is the federal equivalent of the right of publicity. ETW Corp. v. Jireh Pub., Inc., 332 F.3d

915, 924 (6th Cir. 2003), citing Bruce P. Keller, The Right of Publicity: Past, Present, and

Future, 1207 PLI Corp. Law and Prac. Handbook, 159, 170 (Oct. 2000).

Plaintiffs trademark rights in the identity of Bob Marley are not compromised or

remotely effected by the fact that he is deceased, but remain strong nevertheless. By allowing

standing to another person, the very terms of Section 1125(a) contemplate the assertion of an

unfair competition claim by a person or entity other than the celebrity at issue. See Cairns v.

Franklin Mint Co., 24 F.Supp.2d 1013, 1032 (C.D. Cal. 1998), affd., 292 F.3d 1139, 1150 (9th

Cir. 2002). The court held in Cairns:

By using the term another person, Congress selected language broad enough toencompass a claim by a deceased celebritys Estate or by any celebritys assignee.

This point was expanded upon at length in Cairns:

The provision that any person likely to be damaged may bring a claim under 43(a) is similarly expansive and provides another indication of Congressionalintent to protect any person injured by a false suggestion of celebrity endorsement,not just the celebrity.

Id., at 1032-33.

The court then upheld the plaintiffs right and standing to bring such an action:

Here, plaintiffs assert a commercial interest in preventing unauthorized use ofPrincess Dianas persona because use will allegedly create confusion concerningplaintiffs endorsement of [the defendants] products . . . In short, plaintiffs



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satisfactorily allege a false endorsement claim based on defendants use ofPrincess Dianas persona.

Cairns, 24 F.Supp.2d at 1033.

Plaintiffs, as successors to the Marley Rights, avid licensors of those rights and now

unwilling competitors to Defendants, clearly have a commercial interest in the exploitation of

aspects of Bob Marleys identity, including his image and likeness. Even if the parties were not

competitors, it is of no consequence. Where a claim under Section 1125(a) is presented, the

plaintiff need not be a competitor, for the Lanham Act also grants a cause of action to certain

noncompetitors who have been injured commercially by the deceptive and misleading use of

marks. Waits, 978 F.2d at 1109; see Parks, 329 F.3d at 445 (the scope of [Section 1125(a)]

extends beyond disputes between [competitors]. It also permits celebrities to vindicate property

rights in their identities against allegedly misleading commercial use by others.)

Plaintiffs have consistently used the identity of Bob Marley as a trademark and enforced

its unauthorized use as a contravention of Plaintiffs rights therein. Fifty-Six Hope Road has

licensed Bob Marleys identity to licensees for the manufacture and sale of apparel and other

merchandise since at least as early at 1986. (SUF 22.) Fifty-Six Hope Roads related company

owns an incontestable trademark registration that includes Bob Marleys image. (SUF 35.)

Fifty-Six Hope Road has exclusively licensed Bob Marleys identity to Zion for Zions

manufacture and sale of the various apparel and merchandise since 1999, and Bob Marleys

image and likeness has been prominently placed on merchandise manufactured and sold by Zion

and others. (SUF 23.) Plaintiffs have diligently and consistently policed the unauthorized use

of Bob Marleys identity on apparel and other types of merchandise. (SUF 45.) As a result, all

recognizable and distinctive aspects of Bob Marleys identity, not least of which is his image and

likeness, serve a source-identifying function. See Waits, 978 F.2d 1093, 1106 (9th Cir. 1992)

(courts have recognized false endorsement claims brought by plaintiffs, including celebrities, for

the unauthorized imitation of their distinctive attributes, where those attributes amount to an

unregistered commercial trademark); see also Allen, 610 F. Supp. at 625-26 (celebrity has

commercial investment in name and face tantamount to interests of a trademark holder in a



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distinctive mark). Plaintiffs have established trademark rights in the identity of Bob Marley

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

B. Defendants Have Used, Without Authorization, Reproductions and ColorableImitations of the Marley Intellectual Property in Connection with the Saleand Distribution of Goods

Defendants have indisputably widely and intentionally used the Marley Intellectual

Property in the sale and distribution of apparel and other merchandise. Specifically, the AVELA

Defendants have licensed photographs of Bob Marley to JEM, Freeze, and other licensees for the

manufacture and sale of the Bob Marley Products to retailers, including industry giants WalMart

and Target. (SUF 60.) Per the terms of its agreements with JEM, Freeze, and other licensees,

AVELA maintains the right and ability to review and approve the licensees design of the

Bob Marley Products. (SUF 66.) The AVELA Defendants have further licensed the use of Bob

Marley song titles, album titles, and lyrics to JEM, Freeze and other companies, even though the

AVELA Defendants have no right whatsoever to do so, for use in conjunction with the Bob

Marley images. (SUF 66, 67.) By licensing photographs of Bob Marley and music titles and

lyrics to manufacturers of product and maintaining control over said manufacturers use of the

photographs, the AVELA Defendants have clearly and unequivocally used the Marley Intellectual

Property in connection with the sale of goods. Similarly, by using the Bob Marley photographs

on apparel and merchandise and selling these products to retailers, JEM and Freeze are also using

the Marley Intellectual Property in connection with the sale of goods. Finally, Defendants

knowingly allowed retailers to use Bob Marleys name in their promotion of the products (SUF

73) and his music titles on price and size tags affixed to the products. (SUF 74.)

1. Defendants Have Used Copies and Reproductions of PlaintiffsTrademark in Bob Marleys Identity

Defendants use of photographs depicting Bob Marley on the Bob Marley Products and

sale of said Products is an unauthorized use of Plaintiffs trademark in Bob Marleys identity. A

celebritys or celebritys successor-in-interests trademark rights in the celebritys identity

extends to many aspects of identity and persona, including, if not most obviously, the celebritys

image and likeness. See White v. Samsung Electronics America, Inc., 971 F.2d 1395, 1396 (9th



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Cir. 1992) (court upheld television personality Vanna Whites unfair competition claim under

Section 1125(a) based on the defendants use of robot constructed in a way to resemble Whites

hair and dress in advertisement).

Defendants have argued in earlier proceedings2

that their use of Bob Marleys image and

likeness is not a trademark use and is thus not a use in violation of Section 1125(a). This

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

Franklin Mint Co., 107 F.Supp.2d 1212, 1216 (C.D. Cal. 2000) (Cairns II), where the

defendants use of the image of Princess Diana on their products was ultimately found to not

imply endorsement by the plaintiffs because it did not implicate the source-identification

purpose of trademark protection. Affd., 292 F.3d 1139 (9th Cir. 2002) (Cairns III).

Defendants argument that they, like the defendants in Cairns, are making a non-trademark use of

Bob Marleys image and likeness and, thus, are not falsely associating their goods with Bob

Marley or Plaintiffs, fails for two reasons.

First, Defendants do, in fact, use Bob Marleys image and likeness as a trademark. To

help elucidate this point, it is helpful to note key factual differences that distinguish Cairns and its

progeny from the instant case. In reviewing the district courts decision, the Ninth Circuit in

Cairns specifically found that [b]etween 1981 and 1997, many products, including some that

were largely indistinguishable from [defendants] products, bore the name and likeness of

Princess Diana, who neither endorsed nor objected to any of these products. Consumers,

therefore, had no reason to believe [defendants] Diana-related products were endorsed by the

Princess. Cairns III, 292 F.3d at 1149-50. The Ninth Circuit made clear that solely [u]nder

these circumstances, there was no likelihood of confusion as to the origin of [defendants] Diana-

related products. Id. at 1150. The courts holding that the defendants used Princess Dianas

image in a descriptive, non-trademark manner was based on the plaintiffs failure to establish, and

thereafter, police trademark rights in Princess Dianas identity. The two are inextricably

intertwined: were the plaintiffs able to show that Princess Diana developed and policed

2 Defendants made these arguments in opposition to Plaintiffs motion for preliminaryinjunction in this case.



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trademark rights in her identity -- specifically, her image and likeness -- with the goods at issue,

the defendants use of Dianas image and likeness on said goods would undoubtedly be a

trademark use and grounds for a claim of false endorsement and false association.

Unlike the plaintiffs in Cairns, Plaintiffs here have consistently used Bob Marleys

identity specifically, his image and likeness on apparel as a trademark and identifier of the

apparels source. (SUF 40.) Plaintiffs have extensively policed the unauthorized use of Bob

Marleys identity such as to maintain consumers belief that apparel and merchandise bearing his

image and likeness are endorsed by, and associated with, the Marley family and Fifty-Six Hope

Road. (SUF 45.) Given Plaintiffs unambiguous trademark rights, Defendants cannot seriously

assert that they are not using Bob Marleys image and likeness as a trademark when they are

using it in the exact same manner as Plaintiffs, namely, conspicuously on the front of apparel and

on the front of beach towels. In using the image and likeness of Bob Marley in the exact same

manner as Plaintiffs and, thus, casting the same impression upon consumers as that cast by

Plaintiffs, Defendants are using the image of Bob Marley as a mark and falsely associating their

products with Plaintiffs. In stark contrast to Cairns, where the defendants use of Princess

Dianas image on the goods themselves was insufficient to ground a claim of false endorsement,

here, Defendants use of Bob Marleys image and likeness on the goods themselves is precisely

what implicates and grounds Plaintiffs false association claim under Section 1125(a).

Second, Defendants imply that proof of the alleged infringers use of the mark as a

trademark is a separate statutory requirement for establishing a claim of infringement. This is

incorrect, and a misstatement of the law. By the very terms of Section 1125(a), the accused use at

issue need not be use as a trademark, but instead use on or in connection with any goods or

services, or any container for goods. Section 1125(a) states in pertinent part as follows:

(1) Any person who, on or in connection with any goods or services, or anycontainer for goods, uses in commerce any word, term, name, symbol, ordevice, or any combination thereof, or any false designation of origin, falseor misleading description of fact, or false or misleading representation offact, which

(A) is likely to cause confusion, or to cause mistake, or to deceive as tothe affiliation, connection, or association of such person withanother person, or as to the origin, sponsorship, or approval of hisor her goods, services, or commercial activities by another person



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* * *shall be liable in a civil action by any person who believes that he or she isor is likely to be damaged by such act.

The terms of the statute are elucidated by a well-known author in the trademark field,

Thomas J. McCarthy, who concludes that the Lanham Act nowhere explicitly states that use as

a trademark is required for an accused use to be an infringement and, later, [i]t is my view that

there is no separate statutory requirement of trademark use. McCarthy on Trademarks and

Unfair Competition 23:11.50 (4th Ed. 2009); accord Parks, 329 F.3d at 446 (It is not

necessary for [defendants] to make a trademark use of Rosa Parks name in order for her to have

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

Defendants would like to focus the argument on the pedantic issue of whether their use of

Bob Marleys image and likeness is a trademark use. Clearly, though, this is not an element

which Plaintiffs must establish to sustain their False Association Claim. Section 1125(a) is

broader than a traditional trademark infringement claim. See Waits, 978 F.3d at 1108

(Section 43(a) provides liability for false representations concerning the origin, association, or

endorsement of goods or services through the wrongful use of anothers distinctive mark, name,

trade dress or other device (false association); see also, Parks, 329 F.3d at 445 (The language

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

query -- does Defendants use of Bob Marleys image and likeness on or in connection with

goods create a false association or endorsement with Plaintiffs and Bob Marley? This is

important because even non-trademark uses of a mark may result in consumer confusion. See

Parks, 329 F.3d at 447. Accordingly, even if Defendants use of Bob Marleys image is not a use

sufficient to create trademark rights in said image (it is), that use still interferes with the

established consumer understanding that products bearing Bob Marleys image emanates from

Plaintiffs.

Defendants have also argued to this Court that Plaintiffs inappropriately assert trademark

rights in all images of Bob Marley, and as other courts have rejected such sweeping claims in the

past, so should this one, relying onETW, supra ([i]mages and likenesses of [plaintiff Tiger]

Woods are not protectable as a trademark because they do not perform the function of



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designation), and on Pirone v. MacMillan, Inc., 894 F.2d 579, 585 (2d Cir. 1990). Defendants

misstate Plaintiffs Section 1125(a) claim. The issue is not -- in which images does Plaintiffs

have trademark rights, but, rather, is -- does Defendants unauthorized use of Bob Marleys

identity create a false association with Plaintiffs or Bob Marley. Plaintiffs Section 1125(a) claim

is not premised upon Plaintiffs claim of trademark rights in all images of Bob Marley; it is

premised upon Defendants use of a symbol -- Bob Marleys identity -- in a manner that falsely

associates their goods with Bob Marley and Plaintiffs and/or suggests that Bob Marley and

Plaintiffs endorse their goods. See ETW, 332 F.3d at 925 (False endorsement occurs when a

celebritys identity is connected with a product or service in such a way that consumers are likely

to be misled about the celebritys sponsorship or approval of the product or service.)

Secondly, it is Defendants specific use of Bob Marleys identity -- namely, his image and

likeness on products in a manner identical to that exploited by Plaintiffs -- that implicates

Plaintiffs trademark rights in Bob Marleys identity. See Elvis Presley Enterprises, Inc. v.

Capece, 141 F.3d 188, 201 (5th Cir. 1998) (The relevant inquiry is whether, under the

circumstances of the use, the marks are sufficiently similar that prospective purchasers are likely

to believe that the two users are somehow associated.) Plaintiffs are not disputing just any use

of Bob Marleys identity, but Defendants specific use of Bob Marleys image and likeness on

products directly competitive with, and substantially similar to, Plaintiffs products. Under these

circumstances and as shown by Plaintiffs uncontroverted survey testing one of Defendants Bob

Marley t-shirts to consumers, purchasers are likely to believe that the Bob Marley Products are

associated with Bob Marley and/or sponsored or licensed by Plaintiffs. (SUF 83.)

2. Defendants Use of the Bob Marley Song and Music Titles FurtherDraws the Association to Bob Marley

Defendants conspicuous and brazen use of Bob Marleys image and likeness on the

Bob Marley Products most certainly impresses the same mental image on purchasers as Plaintiffs

use of Bob Marleys image. To be sure it does -- i.e., Defendants use Bob Marleys well-known

song titles, album titles, and lyrics directly on the products that bear Bob Marleys image and on

price and size tags affixed to the products. (SUF 65, 74.) Specifically, many of Defendants



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products include Bob Marley song lyrics, song titles, and album titles, such as Roots Rock

Reggae, I Shot the Sheriff, One Love, Buffalo Soldier, Waiting In Vain, Get Up, Stand

Up, Redemption Song, Uprising, and Catch a Fire, further drawing an association

between Defendants apparel and Plaintiffs. (SUF 65.) See White, 971 F.2d at 1399 (court

takes into account all aspects of advertisement in determining whether it provokes an association

with the plaintiff celebrity; [v]iewed together, [the individual aspects of the advertisement] leave

little doubt about the celebrity the ad is meant to depict.) Fifty-Six Hope Road owns a federal

trademark registration for ROOTS ROCK REGGAE for clothing, and Catch a Fire Clothing,

LLC, an entity related to Plaintiffs, owns a an incontestable registration of CATCH A FIRE for

clothing. (SUF 36.) Defendants use of these marks on apparel also bearing Bob Marleys

image evidences Defendants clear intention of evoking an association with Bob Marley and

Plaintiffs. Defendants actions are working, as shown by Plaintiffs survey. (SUF 83.)

Given the fame of Bob Marley, not to mention the fact that Defendants manufacture the

Bob Marley Products for the sole reason of capitalizing on Bob Marleys celebrity, Defendants

cannot honestly argue that customers of their merchandise do not immediately equate Bob

Marleys well-recognized image with him particularly when the Bob Marley Products are also

promoted expressly as "Licensed Marley tees" Bob Marley apparel or Marley Vintage tees.

(SUF 73.) Consequently, Defendants cannot seriously assert that they are not falsely

associating their products with Bob Marley and Plaintiffs when they prominently affix Bob

Marleys image and likeness to the front of their apparel, together with his music titles and lyrics,

and then promote those products under his name.

3. Defendants Use of Bob Marley and Marley to Advertise TheirProducts Further Draws Sponsorship and Association

Defendants consistently use Bob Marley and Marley in commerce and on the internet to

capitalize on Plaintiffs goodwill and to further draw the association and sponsorship with Bob

Marley. While Defendants do not use Marley or Bob Marley directly on the products themselves,

Defendants use those names in product descriptions for the products and as metadata on the

internet. (SUF 64.) Both of these uses are uses in connection with Defendants goods



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triggering the protections of Section 1125(a). Brookfield Communications, Inc. v. West Coast

Entertainment Corp., 174 F.3d 1036, 1062 (9th Cir. 1999) (use in metatags); see also, Playboy

Enterprises, Inc. v. Netscape Communications Corp., 354 F.3d 1020, 1030-31 (9th Cir. 2004)

(use in metatags). The Lanham Act defines use in commerce as the bona fide use of a mark in

the ordinary course of trade, on goods, when it is placed in any manner on the goods or their

containers or the displays associated therewith. 15 U.S.C. 1127 (emphasis added). All of

Defendants uses are certainly displays associated with the Bob Marley Products. Specifically,

Defendants use of Bob Marley and Marley on internet listings for the Bob Marley Products and

planogram label strips (shelf labels), among other uses, constitute displays associated with

Defendants apparel. In using Plaintiffs marks in such a manner, Defendants falsely associate

their apparel with Bob Marley and Plaintiffs.

C. Defendants Use of the Marley Intellectual Property is Likely to CauseConfusion

Having established the first two elements, Plaintiffs need only prove the third element -- a

likelihood of confusion. Likelihood of confusion is self-evident as shown by Defendants

intentional and unabashed use of Bob Marleys image and likeness, together with the Bob Marley

music titles and lyrics, the promotion of the products under Bob Marleys name, and Plaintiffs

survey. (SUF 60, 64, 73, and 83) To the extent that confusion is deemed to be not self-

evident, the Court may look to the eight nonexclusive factors identified above to evaluate likely

confusion. Downing, 265 F.3d at 1007-08;AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348 (9th

Cir. 1979). Three of these factors -- namely, the similarity of the marks, goods, and marketing

channels -- are the controlling troika in the Sleekcraftanalysis. GoTo.com, Inc. v. Walt Disney

Co., 202 F.3d 1199, 1206 (9th Cir. 2000). A review of the relevant factors and the undisputed

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

1. Strength and Level of Recognition of Bob MarleyIt is undisputed that Plaintiffs trademark in Bob Marleys identity is incredibly strong.

When a mark is a celebritys identity, the strength of the mark refers to the level of recognition

the celebrity enjoys among members of society. White, 971 F.2d at 1400. There can be no



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debate about the profound strength of Plaintiffs trademark in Bob Marleys identity and, thus,

image and likeness. It is undisputed that Bob Marley is not merely the preeminent reggae

musician and performer of all time, but is likely one of the most famous and important figures in

the history of popular music. It is also undisputed that Plaintiffs have consistently and

exclusively exploited and enforced Bob Marleys identity specifically, his image and likeness

on apparel, accruing strong trademark rights as a result thereof. Cullman Ventures, Inc. v.

Columbian Art Works, Inc., 717 F. Supp. 96, 124-27 (S.D.N.Y. 1989). It is no overstatement to

say that the strength of Plaintiffs mark in the identity and recognition of Bob Marley is

remarkably strong. In fact, Defendants offering of apparel and other merchandise featuring Bob

Marleys identity itself is premised upon the fame and popular recognition of Bob Marley to the

same segment of society as those who buy Plaintiffs Bob Marley products.

In sum, strength of the Bob Marley identity is shown by the following undisputed facts:

(1) Fifty-Six Hope Road currently licenses more than 100 types of goods and services bearing

Bob Marleys image and/or his name, (2) Bob Marley has been recognized in court decisions as

being a famous musician, (3) Bob Marley has received tremendous and well-publicized awards,

even posthumously, e.g., his last album was dubbed the Best Album of the 20th Century by Time

magazine, (4) to date, Plaintiffs have sent 400 policing letters to would-be infringers, (5)

Plaintiffs have filed 29 infringement cases and trademark office proceedings to protect Plaintiffs

rights in Bob Marley's identity, (6) to date, Plaintiffs have sold more than 100 million units of

Bob Marley licensed merchandise, (7) Bob Marley and Plaintiffs licensed merchandise is the

subject of substantial unsolicited publicity, (8) third parties request permission to use Bob

Marleys name and likeness often in entertainment works, commercials and other uses, and (9)

AVELA's licensees have testified to the fame and strength of Bob Marley. (SUF 6, 14, 16,

17, 22, 46, 47, and 78.) The strength of Plaintiffs mark in Bob Marleys identity weighs in favor

of finding that confusion is likely.

2. Relatedness of the Fame of Bob Marley to Defendants ProductsIn cases concerning confusion over celebrity endorsement, the plaintiffs goods concern

the reasons for or sources of the plaintiffs fame. Id. Also, [g]oods are related if consumers are



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likely to associate the two product lines. Experience Hendrix, LLC v. Electric Hendrix, LLC, 90

U.S.P.Q. 2d 1883, 1893 (W.D. Wash. 2008). Bob Marleys fame descends primarily from his

musical performances and recorded music output. It is well known and accepted that musical

performers commonly capitalize on their famous personas by selling apparel and merchandise

bearing their name, image and likeness. Plaintiffs have capitalized on the identity and celebrity of

Bob Marley by offering a wide variety of apparel bearing his image and likeness, as well as

apparel bearing the BOB MARLEY word mark, for more than two decades. (SUF 42.)

Plaintiffs have expanded to more than 100 products, including beach towels. (SUF 22.)

Defendants also produce apparel, beach towels, and other products meant to capitalize on the

identity and celebrity of Bob Marley. Because Plaintiffs offer goods identical to those offered by

Defendants, this factor heavily favors likely confusion. See Hendrix, 90 U.S.P.Q. 2d at 1893-94

(The undisputed evidence . . . of identical goods, such as T-shirts distributed by both parties

supported summary judgment for plaintiff, especially because people purchasing both plaintiffs

and defendants goods are primarily motivated to purchase the goods due to the goods

relationship to Jim Hendrix.) Thus, Bob Marleys success is closely related to Defendants

products bearing his image and music titles.

3. The Similarity of the Likenesses Used by the PartiesDefendants use of Bob Marleys image and likeness is identical to Plaintiffs use of Bob

Marleys identity. Defendants reproductions of the image and likeness of Bob Marley are actual

photographs of, and are all clearly and recognizably, Bob Marley. See Downing, 265 F.3d at

1008 (the similarity of the likeness to the Appellants is clear because it is an actual photograph

of the Appellants.) For Defendants to obscure the publics recognition of Bob Marley would be

to sabotage their own business interests. Defendants further assure public recognition of Bob

Marley by frequently including text on the apparel directly referencing Bob Marleys musical

output, such as song titles, album titles, and lyrics. (SUF 65) And in case there is any doubt,

Defendants promote their products as Bob Marley, Licensed Marley Products or Marley

products. (SUF 73.) In sum, Defendants use of Bob Marleys image and likeness and use of

Bob Marleys music titles is identical to Plaintiffs trademark rights in Bob Marleys identity, and



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weighs heavily in favor of finding likely confusion.

4. Evidence of Actual ConfusionWhile Plaintiffs do not have direct evidence of actual confusion, they have circumstantial

evidence of actual confusion by their uncontroverted survey. SeeE&J Gallo Winery v. Gallo

Cattle Company, 967 F.2d 1280, 1292 (9th Cir. 1992) (Survey conducted by same company that

conducted Plaintiffs survey in this case admitted to establish actual confusion.) In trademark

cases, surveys are to be admitted as long as they are conducted according to accepted principles

and are relevant. Wendt v. Host International, Inc., 125 F.3d 806, 814 (9th Cir. 1997).

Plaintiffs survey expert, E. Deborah Jay, Ph.D., conducted a survey with the primary and

relevant purpose of determining whether potential purchasers of graphic or screened T-shirts are

likely to mistakenly believe that the heirs, estate or agents of [Bob] Marley . . . are the source or

the sponsor of, or are affiliated with, [Defendants] T-shirts bearing Bob Marleys image (the

Survey). (SUF 79.) The Survey was conducted according to accepted principles. It featured

509 participants who were identified through a screening process as potential buyers of graphic or

screened t-shirts, the vast majority of the Bob Marley Products sold by Defendants. That pool

was divided into two groups, the test group and the control group, and each group was asked

about a particular t-shirt. (SUF 80.) The test groups shirt was an actual Bob Marley shirt

manufactured and sold by Defendants with an AVELA necktag, and the control groups shirt was

a shirt identical in all relevant parts to Defendants, except that it featured a picture of an

anonymous and unrenowned black man dressed in a Jamaican/Rastafarian style. (SUF 81.)

The Survey interviews were double-blind: neither the interviewers nor respondents were told the

name of the Surveys sponsor or that it might be used in connection with litigation. (SUF 82.)

The Survey undisputedly supports the conclusion that there is a likelihood of confusion

as to the source or sponsor of [Defendants] T-shirts due to the use of Bob Marleys image on the

shirts. (SUF 83.) In response to the question Who gave their permission or approval for the

T-shirt to be made or put out?, 30% of the test group answered Bob Marley, his heirs, estate,

agents and 7% answered the person on the shirt, his heirs, estate, agents, a total of 37%. This

is compared to less than 1% and 19%, respectively, for the control group, a total of 20%. (SUF



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

apparel with Plaintiffs and Bob Marley, 42% of Survey respondents in the test group believed

that Bob Marley (or the person on the shirt) or his heirs, estate, or agents was the source or

sponsor of the T-shirt bearing Bob Marleys likeness. (SUF 85.) The comparable percentage

for the control group was 22%. The net confusion rate is 20% because the control groups 22%

confusion is subtracted from the test groups 42% confusion rate to eliminate guessing or other

noise. (SUF 86.) In a properly conducted survey with a control group to weed out respondent

guessing and noise, a 20% confusion rate constitutes strong evidence indicating a likelihood of

confusion. See Jada Toys, Inc., v. Mattel, Inc., 518 F.3d 628, 636 (9th Cir. 2008) (28%

association rate for word mark and 7% association rate for design mark indicated evidence of

likelihood of dilution (association) and precluded summary judgment in the defendants favor);

Exxon Corp. v. Texas Motor Exchange, Inc., 628 F.2d 500, 507 (5th Cir. 1980) (15% and 23%

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

National Football League v. Governor of Delaware, 435 F. Supp

fifty-six v avela (bob marley rop) (plaint. pmsj)

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