fifty-six v avela (bob marley rop) (plaint. resp. def. msj)

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

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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 Plaintiff and Counter-DefendantFIFTY-SIX HOPE ROAD MUSIC, LTD.

UNITED STATES DISTRICT COURT

DISTRICT OF NEVADA

Fifty-Six Hope Road Music, Ltd., a Bahamiancorporation; and Zion Rootswear, LLC, aFlorida limited liability company,

Plaintiffs,

vs.

A.V.E.L.A., Inc., a Nevada corporation; Sci-FiProductions, Inc., dba X One X MovieArchives, a Nevada corporation; JEMSportswear, a California corporation; CentralMills, Inc. (Freeze), a New York corporation;

and Leo Valencia, an individual,

Defendants.

AND RELATED COUNTERCLAIM.

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

PLAINTIFFS OPPOSITION TODEFENDANTS MOTION FORSUMMARY JUDGMENT

Hearing Date: February 22, 2010Time: 2:00 p.m.Courtroom: 7C - Honorable Philip M.Pro

Case 2:08-cv-00105-PMP-GWF Document 127 Filed 12/18/09 Page 1 of 35


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TABLE OF CONTENTS

Page

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

II. STATEMENT OF FACTS ............................................................................................... 3A. Plaintiffs Own Valid Rights in the Marley IP....................................................... 3

1. Fifty-Sixs Registration of Bob Marleys Right of Publicity.................... 3

2. Plaintiffs Own and Alleged Trademark Rights inBob Marleys Image.................................................................................. 4

B. AVELAs Acquisition, Licensing, and Exploitation of theBob Marley Images............................................................................................... 5

1. AVELAs Acquisition of the Images From Rabanne ............................... 6

2. AVELAs First Use of the Rabanne Images............................................. 6

3. Plaintiffs First Knowledge of DefendantsInfringing Activities.................................................................................. 7

C. AVELAs Use of Bob Marleys Name, Music Titles,and Lyrics.............................................................................................................. 8

III. DEFENDANTS MOTION FOR SUMMARY JUDGMENTSHOULD BE DENIED .................................................................................................... 9

A. Summary Judgment Should Not Be Granted on the Rightof Publicity Claim ............................................................................................... 10

1. Plaintiffs Right of Publicity Claim Against Defendantsis Not Forfeited By Registration After UnrelatedThird-Party Infringements....................................................................... 10

2. Plaintiffs Registered Their Right of Publicity ClaimWithin 6 Months of Their First Knowledge of DefendantsInfringement............................................................................................ 15

3. Nevadas Right of Publicity Statute Applies toDefendants Commercial Use of Bob Marleys Image........................... 16

B. Defendants Are Not Entitled to Summary Judgment on PlaintiffsTrademark and False Association Claims........................................................... 20

1. Plaintiffs Own Trademark Rights in Bob MarleysIdentity .................................................................................................... 21

2. Defendants Have Used Reproductions of the Marley IP

in Connection with the Sale and Distribution of Goods ......................... 22a. Defendants Have Used Copies and Reproductions

of Plaintiffs Trademark in Bob Marleys Identity ..................... 22

b. Defendants Have Used Copies and Reproductionsof Plaintiffs BOB MARLEY Trademark................................... 25

c. Defendants Are Unable to Establish Their Fair UseDefense........................................................................................ 28

IV. CONCLUSION............................................................................................................... 30



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TABLE OF AUTHORITIES

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CASES

Allen v. National Video,610 F. Supp. 612 (S.D.N.Y. 1985).......................................................................................... 22

AMF Inc. v. Sleekcraft Boats,599 F.2d 341 (9th Cir. 1979)................................................................................................... 26

Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc.,457 F.3d 1062 (9th Cir. 2006)................................................................................................. 29

Brookfield Communications, Inc. v. West Coast Entertainment Corp.,174 F.3d 1036 (9th Cir. 1999)................................................................................................. 26

Citizens for Cold Springs v. City of Reno,2009 Nev., LEXIS 53, *10 (2009) .......................................................................................... 15

Comedy III Productions, Inc. v. Gary Saderup, Inc.,

25 Cal.4th 387 (2001) ............................................................................................................. 19Downing v. Abercrombie & Fitch,

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

E&J Gallo Winery v. Gallo Cattle Company,967 F.2d 1280 (9th Cir. 1992)................................................................................................. 23

EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos Inc.,228 F.3d 56 (2d Cir. 2000)...................................................................................................... 30

ETW Corp. v. Jireh Pub., Inc.,332 F.3d 915 (6th Cir. 2003)................................................................................. 21, 22, 23, 24

Exxon Corp. v. Texas Motor Exchange, Inc.,

628 F.2d 500 (5th Cir. 1980)................................................................................................... 23Fifty-Six Hope Road Music, Ltd. v. Mayah Collections, Inc. ,

Case No. 2:05-CV-05-1059-KJD-GWF............................................................................ 12, 15

Gugliemi v. Spelling-Goldberg Productions,25 Cal.3d 860 (1979) .............................................................................................................. 19

In re Sloppy Joes Intl, Inc.,43 U.S.P.Q.2d 1350 (TTAB 1997) ......................................................................................... 27

International Stamp Art, Inc. v. U.S. Postal Service,456 F.3d 1270 (11th Cir. 2006)............................................................................................... 28

Jada Toys, Inc., v. Mattel, Inc.,

518 F.3d 628 (9th Cir. 2008)................................................................................................... 23KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.,

408 F.3d 596 (9th Cir. 2005)................................................................................................... 29

List v. Whisler,99 Nev. 133 (1983) ................................................................................................................. 15

Lozano Enterprise v. La Opinion Publishing Co.,44 U.S.P.Q.2d 1764 (C.D. Cal. 1997)..................................................................................... 25



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(continued)

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Miller v. Burke,124 Nev. 56, 188 P.3d 1112 (2008) ........................................................................................ 18

Milton H. Greene Archives, Inc. v. CMG Worldwide, Inc., 2008 WL 655604, *3(C.D. Cal. Jan. 7, 2008)........................................................................................................... 20

Mobil Oil Corp. v. Pegasus Corp.,818 F.2d 254 (2d Cir. 1987).................................................................................................... 27

Nissan Fire & Marine Ins. Co. Ltd. v. Fritz Cos., Inc.,210 F.3d 1099 (9th Cir. 2000)................................................................................................. 10

Opticians Assn v. Independent Opticians,920 F.2d 187 (3d Cir. 1990).................................................................................................... 25

Parks v. LaFace Records,329 F.3d 437 (6th Cir. 2003)................................................................................................... 28

Public Employees Benefits Program v. LVMPD,124 Nev.Adv.Op. No. 14, 179 P.3d 542 (2008)...................................................................... 18

S.N.E.A. v. Daines,108 Nev. 15, 19 (1992) ........................................................................................................... 12

Sierra On-line, Inc. v. Phoenix Software, Inc.,739 F.2d 1415 (9th Cir. 1984)................................................................................................. 29

Squirrel Brand Co. v. Green Gables Inv. Co.,223 U.S.P.Q. 154 (TTAB 1984) ............................................................................................. 27

Tahoe Regional Planning Agency v. McKay,769 F.2d 534 (9th Cir. 1985)................................................................................................... 15

Waits v. Frito-Lay, Inc.,978 F.2d 1093 (9th Cir. 1992)................................................................................................. 21

White v. Samsung Electronics America, Inc.,971 F.2d 1395 (9th Cir. 1992)................................................................................................. 23

STATUTES

15 U.S.C. 1114................................................................................................................. 9, 25, 26

15 U.S.C. 1115(b)(4).................................................................................................................. 28

15 U.S.C. 1125(a) .................................................................................................. 1, 9, 23, 26, 28

15 U.S.C. 1127........................................................................................................................... 26

Cal.Civ.Code 3344.1(a).............................................................................................................. 19

Cal.Civ.Code 3344.1(h) ............................................................................................................. 19

NRS 597.770............................................................................................................ 1, 2, 3, 10, 15

NRS 597.790(1) ................................................................................................................... 10, 17

NRS 597.790(2) ......................................................................................................................... 10

NRS 597.800.......................................................................................................................... 2, 12

NRS 597.800(3) ................................................................................................................... 12, 13



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(continued)

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NRS 597.800(4) ................................................................................................................... 13, 14

NRS 597.800(5) ................................................................................................................... 13, 14

NRS 597.800(6) ......................................................................................................................... 13

NRS 597.810................................................................................................................................ 3

NRS 598.800(3) ......................................................................................................................... 11

NRS 598.800(4) ................................................................................................................... 11, 12

NRS 598.800(5) ................................................................................................................... 11, 12

NRS 597.770-597.810.............................................................................................................. 17

OTHER AUTHORITIES

Bruce P. Keller, The Right of Publicity:

Past, Present, and Future,1207 PLI Corp. Law and Prac. Handbook, 159, 170 (Oct. 2000)........................................... 21

California Assembly Committee on Judiciary Report on SB 613, CaliforniasRight of Publicity Statute ........................................................................................................ 19

California Senate Committee on Judiciary 1983-84 Regular Session,Report onCommercial Exploitation of Deceased Celebrities ............................................................... 19

California Senate Democratic Caucus Judiciary Committee Summary ofArguments In Support of S.B. 613, Californias Posthumous Right OfPublicity Statute ...................................................................................................................... 19

McCarthy on Trademarks and Unfair Competition, 23:27........................................................ 27



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I. INTRODUCTIONDefendants motion for summary judgment (MSJ) must be denied because of glaring

material factual disputes, the incorrect interpretation of the Nevada Right of Publicity statute NRS

597.770 advanced by Defendants, and the incorrect contention by Defendants that Plaintiffs do

not allege trademark rights in Bob Marleys image. Examples of some of the material factual

disputes that preclude summary judgment are:

Conflicting declarations and documentary evidence relating to the location of theinfringers Plaintiffs found in 2001 and 2004 and then sued in 2005 in an unrelated case.The cease and desist letters and declaration of Plaintiff Zions counsel identify theinfringers locations in Florida. Defendants boldly contend that the infringers sued in the2005 action were infringing in Nevada without any supporting evidence A jury mustdecide whether the infringers were infringing the rights of publicity associated with BobMarley in Nevada in 2001 and 2004, such that Plaintiffs knew or should have been aware

of it. This fact is material to Defendants interpretation of NRS 597.770. (4th Claim forRelief.)

Conflicting testimony and documentary evidence from photographer Roberto Rabannewho purportedly licensed most of the Bob Marley photographs at issue to the AVELADefendants, from AVELAs trademark counsel Gregg Paradise, and from the AVELADefendants, as to when Valencia first obtained the Bob Marley photographs. Plaintiffsshow through their evidence that Valencia received the photographs in June 2006.Defendants claim Valencia received them in 2003 or 2004. Plaintiffs have testimony anddocuments from Rabanne and Valencia that indicate that Valencia has doctored evidenceto try to establish the earlier date of 2003 or 2004. This factual dispute is material to theinterpretation of NRS 597.770 and when Plaintiffs first had knowledge of Defendantsinfringement. (4th Claim for Relief.) Given these disputed facts, the jury must decide this

issue.

Conflicting documentary evidence and testimony as to whether Defendants use BobMarleys name in a trademark sense, as Plaintiffs contend, or descriptively, as Defendantscontend. Documentary evidence demonstrates that Defendants have used the BOBMARLEY mark and similar variations thereto on displays associated with the goods andin connection with the sale, offering for sale, distribution, or advertising of Defendantsgoods. There is ample evidence of intentional infringement in this case, whichundermines the element of good faith and fair use Defendants must prove. Thus, the jurymust decide whether Defendants use of Bob Marleys name is a trademark use, orwhether the use is descriptive and Defendants acted in good faith. (1st Claim for Relief.)

Defendants contend there is no likelihood of confusion, association, or sponsorshipbetween Defendants use of Bob Marleys name, image, likeness, and music titles andlyrics (Marley IP) and Plaintiffs and/or Bob Marley, but submit no evidence to supportthat contention. Plaintiffs, on the other hand, presented undisputed evidence of thelikelihood of confusion in support of their motion for summary adjudication on their15 U.S.C. 1125(a) claim (Plaintiffs 43(a) MSA) (2nd Claim for Relief.)

These factual disputes alone compel the denial of Defendants motion. Other factual

disputes are set forth in Plaintiffs Statement of Disputed Issues of Material Fact (SDF) filed



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concurrently herewith. Accordingly, there are numerous material factual disputes the jury must

decide in this case which preclude entry of summary judgment in Defendants favor.

Separately, Defendants advance tenuous -- if not illogical -- interpretations of applicable

trademark and right of publicity laws, and misstate the scope of Plaintiffs rights in the name,

image, likeness of Bob Marley. This also mandates the denial of Defendants motion.

First, Defendants advance an interpretation of NRS 597.770 that is illogical, draws

improbable conclusions from legislative history, and directly contradicts the obvious purpose of

the statute shown by the text itself and the legislative history. In particular, Defendants argue that

because Plaintiff Fifty-Six did not register its right of publicity associated with Bob Marley

within 6 months of when it knew or should have known of infringement by Defendants in the

2005 action, Plaintiffs are forever barred from asserting their claim now as to a completely

separate infringement (or, according to Defendants, in any other future infringements). In making

these arguments, Defendants try to limit the rights granted by the statute by reading in a manda-

tory, timely1

registration requirement which is at odds with the permissive nature of registration

under the statute and the notice system established by the statute.

Defendants also argue that the statute does not apply retroactively to create rights of

publicity for individuals who died before the statute was enacted. Defendants misread the plain

language of the statute, mistaking the statutes protected class (individuals born within 50 years of

the statutes passing) with retroactive punishment of infringements occurring before the passage

of the statute. Notably, when passing the statute, the Nevada legislature discussed the rights

associated with Orson Welles, Elvis Presley, and Liberace, all of whom were already deceased.

Second, Defendants contend that the trademark side of this case is only about the use of

Plaintiffs alleged word trademarks relating to Bob Marley. This is incorrect. Plaintiffs own

trademark rights in the image and likeness of Bob Marley pursuant to their trademark rights in

both the BOB MARLEY markandBob Marleys identity and persona. (FAC) 16, 18, 19 &

38.) Plaintiffs contend that the use by Defendants of Bob Marleys image, especially in conjunc-

1

Defendants represent that the statute contains the word timely in their motion (p. 4,[] 1.18), but nowhere does that word appear in NRS 597.800.



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tion with song titles and song lyrics uniquely associated with Bob Marley (Bob Marley

Products), created a likelihood of confusion, false association, sponsorship, or false represen-

tation of fact. The law in the Ninth Circuit is clear that Plaintiffs need not show one single image

of Bob Marley in which they claim trademark rights, as Defendants would have the Court believe

Rather, using Bob Marleys likeness on apparel and beach towels, Defendants infringe Plaintiffs

trademark rights in his identity and persona and, thus, falsely associate their products with Bob

Marley and Fifty-Six. Said use also infringes Plaintiffs trademark in the BOB MARLEY word

mark by virtue of the firmly established doctrine of legal equivalents; that is, Defendants use of

Bob Marleys image and the BOB MARLEY mark evoke the same mental impression and

source-identifying function in the mind of the consumer.

II. STATEMENT OF FACTSThe following facts contradict Defendants statement of facts (MSJ, pp 9-11) or, at the

very least, reveal genuine issues of material facts precluding summary judgment.

A. Plaintiffs Own Valid Rights in the Marley IP1. Fifty-Sixs Registration of Bob Marleys Right of Publicity

Defendants concede that Fifty-Six is the owner of Bob Marleys right of publicity. How-

ever, Defendants contend that Fifty-Six cannot enforce those rights in Nevada because, allegedly,

it did not timely register the rights in Nevada. Defendants contend that Plaintiffs first became

aware of Defendants activities in August 2004 or no later than February 2005. (MSJ, p. 25.)

There is indeed a factual dispute as to when Plaintiffs became aware of these activities.

On January 24, 2006, Fifty-Six registered its ownership of Bob Marleys right of publicity

with the Nevada Secretary of State (the Nevada Registration). (FAC 16c.) The Nevada

Registration granted Fifty-Six statutory rights of enforcement of the Bob Marley rights of

publicity pursuant to NRS 597.770 et seq., which provides redress against the unauthorized

commercial use of a persons (alive or deceased) name, voice, signature, photograph or

likeness. NRS 597.810. Fifty-Six obtained the Nevada Registration within 6 months of its

first knowledge of the unauthorized exploitation of Bob Marleys right of publicity in the State of

Nevada. (SDF 20.) Specifically, Fifty-Six registered its rights within 6 months of learning of



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The Tunes Companys (Tunes) and Legends 4 Lifes offering for sale unlicensed Bob Marley

merchandise at the August 2005 MAGIC tradeshow in Las Vegas, Nevada. (SDF 20.) Prior to

that time, in 2001 and 2004 Fifty-Sixs licensee Zion sent cease and desist letters to these

companies places of business in Florida, where Plaintiffs understood the infringement to have

occurred. (SDF 20.) Plaintiffs did not have any knowledge of the sale, offering for sale,

advertisement or the display of unauthorized Bob Marley products or images in Nevada before

the August 2005 MAGIC show. (SDF 20.) Thus, there is a factual dispute as to when Plaintiffs

first became aware of any infringement of Bob Marleys right of publicity in Nevada.

2. Plaintiffs Own and Alleged Trademark Rights in Bob Marleys ImageDefendants contend that Plaintiffs have not alleged trademark rights in Bob Marleys

image. (MSJ, p. 3.) However, the FAC plainly reflects that Plaintiffs alleged ownership of the

intellectual property and publicity rights for Bob Marley, including but not limited to: (a) com-

mon law rights in the name Bob Marley for music, entertainment services, and merchandise;

(b) U.S. Registration of BOB MARLEY for various items of merchandise, including clothing;

and (c) Nevada Registration of the right of publicity associated with Bob Marley, issued on

January 24, 2006. (FAC 16.) Plaintiffs also alleged that the Marley IP has become distinctive

(FAC 18) and that Plaintiffs have actively policed the Marley IP (FAC 19.) Further, Plaintiffs

alleged that Defendants were and are attempting to create an association between their infringing

merchandise and Plaintiffs licensed merchandise (FAC 37); that Defendants sought, with bad

faith intent, to profit from the name and likeness of Bob Marley and the associated and registered

rights of publicity owned by Fifty-Six (FAC 38); and that Defendants use of the Marley IP

constitutes a false designation of origin and/or a false or misleading description of fact which is

likely to cause confusion or deceive consumers as to the origin of Defendants products. (FAC

49.) Thus, the notion that Plaintiffs have not alleged any trademark rights in the image of Bob

Marley is simply not true and is belied by the FAC.

Defendants contention that Plaintiffs do not own any trademark rights in Bob Marleys

image is directly contradicted by the following evidence in support of Plaintiffs 43(a) MSA,

including: (a) Bob Marley was a world-famous musical performer and popular icon whose fame



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and popularity has only increased since his premature death in 1981 (Plaintiffs Statement of

Undisputed Facts filed with 43(a) MSA SUF 1); (b) since 1986, Plaintiffs, their predecessors,

and their licensees, have consistently exploited the Marley IP (including his image and likeness)

on more than 100 different goods and services, including clothing and beach towels; (SUF 22,

37); (c) Fifty-Six has entered into more than 48 licenses for the use of the Marley IP, including

his image and likeness (SUF 22); (d) since 1999, Zion has been Fifty-Sixs exclusive licensee

for certain apparel bearing Bob Marleys name, image, and likeness (SUF 23); (e) Plaintiffs and

their predecessor entities have consistently enforced their rights in the Marley IP against

unauthorized infringers for almost two decades (SUF 45); (f) since 1990, Plaintiffs have sent

400 cease and desist letters to individuals and entities manufacturing and selling various

infringing merchandise and apparel featuring the Marley IP (SUF 46); (g) Plaintiffs have filed

29 trademarks, copyright, and rights of publicity suits based on their ownership of the Marley IP

(SUF 47); (h) Plaintiffs have federally registered their trademark rights in one particular likeness

of Marley, specifically, the TUFF GONG & Design mark (Fed. Reg. No. 1,866,146) (SUF 35);

(i) Plaintiffs use other Bob Marley images all of which serve a source-identifying trademark

function (SUF 40-42, 44); (j) various requests by third parties for permission to use Bob

Marleys name and likeness in entertainment works and on merchandise (SUF 16); and

(k) Plaintiffs uncontroverted survey establishing the association and ownership of Bob Marleys

image with Fifty-Six and the heirs of Bob Marley. (SUF 79-86.)

Thus, while Plaintiffs have not alleged any particular discrete image of Bob Marley as a

trademark, Plaintiffs have nevertheless alleged trademark rights in Bob Marleys identity -- which

include Bob Marleys image, likeness, and other evocations of his persona. Fifty-Sixs and its

predecessor entities exploitation of the Marley IP for more than two decades has resulted in

consumers association of Fifty-Six with apparel and merchandise featuring and trading upon the

Marley IP, including his image. Based thereon, it is clear to consumers that the Marley IP is

owned by Fifty-Six and the Marley IP functions as a brand.

B. AVELAs Acquisition, Licensing, and Exploitation of the Bob Marley ImagesDefendants factual account of how and when the AVELA Defendants acquired and



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2005 MAGIC trade show in Las Vegas, Nevada, Michael Conley of Zion and Kimberly Cauley

Mileski of Freeze (an AVELA licensee), both testified to meeting Valencia at the February 2005

MAGIC trade show and viewing the images that AVELA was then looking to license. Both

witnesses, including Ms. Cauley, testified that Valencia was not displaying any pictures of Bob

Marley at the MAGIC show. (SDF 4-5.) Zions licensing agent, Val Formica, negotiated with

Valencia after the show, and still there were no pictures of Bob Marley. (SDF 4-5.) Conley, in

particular, would have remembered such a dispute of Marley images by AVELA given that Zion,

as the exclusive licensee of Bob Marley apparel products, was particularly committed to policing

infringements. (SDF 4-5.) As such, Defendants claim that AVELA began actively seeking to

license the Bob Marley images at least as early as February 2005 is disputed -- and indeed contra-

dicted by their own witness (AVELA licensee Freeze).

Defendants claim of first licensing the Bob Marley images in 2005 or in the latter part of

2004 (MSJ, p. 9, l. 12-16) is also contradicted by (a) the testimony of Paradise and (b) Valencias

testimony concerning the name and likeness license he sought from one of the Bob Marleys

children. Paradise testified that he first discussed exploitation of the Bob Marley images on

merchandise with Valencia in August 2006, which is consistent with Paradises billing records

that he produced in this case (and with Rabannes testimony of having entered into an agreement

with AVELA in July 2006). Paradise further testified that it was his understanding, based on

conversations with Valencia, that Bob Marley merchandise, as of August 2006, was not yet in the

marketplace. (SDF 3.) Later, during the Fall of 2006, Valencia, on behalf of AVELA, sought a

license to exploit Bob Marleys name and likeness from Bob Marleys son, Rohan Marley, who

operated a company affiliated with Plaintiffs. (SDF 3.) Neither Plaintiffs nor Rohan Marley

ever entered into any license agreement with AVELA. (SDF 3.) Both Paradises review of the

use of Bob Marley images by AVELA and the AVELA Defendants solicitation of a license from

Rohan Marley occurred well after the date that Fifty-Six registered its right of publicity in Nevada

and had established its proprietary rights in the exploitation of Bob Marleys image and likeness.

3. Plaintiffs First Knowledge of Defendants Infringing ActivitiesPlaintiffs first became aware that AVELA was seeking licensees for the Bob Marley



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images at the Winter MAGIC tradeshow in February 2007 in Las Vegas, Nevada. (SDF 5.) As

a result, 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 (the 2007 Action). (SDF 5.) Defendants contention that the 2007

Action was nearly identical to the present case (MSJ, p. 8) is patently false. Whereas the

infringement at issue in this case is admittedly national in scope and scale ( see infra), Fame -- a

then licensee of AVELA and the would-be manufacturer of the infringing merchandise in the

2007 Action - represented that it never actually manufactured any Bob Marley products; rather it

had a single image available at the 2007 MAGIC show to retailers to select for future manufac-

ture by Fame. (SDF 5.) Plaintiffs, in 2007, believed that the single Marley image Fame was

touting in connection with an attempt to secure orders of then non-existent (i.e., to be manufac-

tured in the future) products was the full extent of AVELAs and Valencias unauthorized use of

the Marley IP. Plaintiffs had no specific knowledge of infringement perpetrated by AVELA and

Valencia beyond the very limited use by Fame at issue in the 2007 Action, and any such infringe-

ment was precluded by the TRO issued by the court on February 26, 2007, which was later

extended indefinitely, i.e., to the date Plaintiffs voluntarily dismissed the 2007 Action without

prejudice (based on assurances by Fame that it had stopped). (SUF 52-53.)

Defendants argue Plaintiffs knew of AVELAs use of Marley photographs in February

2005 or in August 2004; Plaintiffs evidence shows that Plaintiffs knew about the use of one

Marley photograph by AVELA in February 2007 -- two years later -- and one year after the

Nevada Registration -- and had no knowledge of the qualitatively different (and pervasive)

infringement in this case. Clearly, the date of Plaintiffs first awareness of the AVELA

Defendants infringing activities is a matter for the jury to decide.

C. AVELAs Use of Bob Marleys Name, Music Titles, and LyricsDefendants claim they are immune from liability in this case because they did not use the

name Bob Marley on the garments in question. (SUF 63.) However, Defendants have used

the BOB MARLEY mark and variations thereof when advertising the Bob Marley Products



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through online retailing and in the metadata underlying said internet listings, planogram label

strips (also known as shelf labels), and other documents and displays. (SUF 64; DSF 7.)

Separately, many 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; SDF 7.)

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

order to draw consumer association with Bob Marley and the BOB MARLEY mark without

actually using the trademarked BOB MARLEY name on the goods themselves. Defendants

licensees admit the intent behind this association (SUF 17, 78), and the association itself is

shown by Plaintiffs survey. (SUF 83.) AVELA cannot claim that its licensees that initiating,

without its acquiescence or consent, the use of Bob Marley music titles and lyrics in conjunction

with the Marley images. 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, and does in fact approve the use of Bob Marleys song titles, album titles,

and lyrics on the Bob Marley Products. (SUF 66.) Equally compelling, AVELA provides pre-

approved artwork with Bob Marleys image in conjunction with song and album titles and song

lyrics for its licensees to use. (SUF 67.)

Thus, there is a factual dispute as to whether Defendants use of Bob Marleys name in

advertising, metatags, and on displays constitutes use in commerce sufficient to support

Plaintiffs federal infringement claim under 15 U.S.C. 1114 (1st Claim for Relief.) Plaintiffs

do not believe that there is a factual dispute as Defendants use of Bob Marleys identity,

including his name and likeness, to support their 1125(a) claim. To the extent that there is not,

summary adjudication should be granted in Plaintiffs favor, as illustrated in Plaintiffs 43(a)

MSA.

III. DEFENDANTS MOTION FOR SUMMARY JUDGMENT SHOULD BE DENIEDWhere the defendant is the moving party, it bears the persuasion that one or more

elements of the claim in question cannot be established or that there is a complete defense thereto.



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under the statute is fundamentally permissive, and the rest of the statute must be read in this light.

Interpreting NRS 597.800(5) to allow a wholesale forfeiture of a claim cannot be reconciled

with the claimants sovereignty as to if and when he will register his claim.

Third, while Defendants wish to tip the balance of the statute to weigh in favor of

potential infringers, Plaintiffs rightly read the statute as firmly favoring rightful successor

claimants -- the statutes subject and protected class. Defendants imagine a scenario where

successor claimants wield their permission to register their claim offensively to file actions

against unsuspecting user[s]. (Def. MSJ, p. 23). This is a fallacy. Due to the statutes

registration system (see infra) and the protections provided in NRS 597.800(4) and (5) for

legitimately unsuspecting uses, all such uses are free from liability by the very terms of the

statute. In fact, it is Defendants interpretation that produces an absurd result. Namely,

Defendants propose a statutory reading whereby a successor claimant will forfeit his right of

publicity claim in total to the public domain based on one single infringement, regardless of the

scope of said infringement (e.g., for instance, a single act of infringement at a flea market), and

despite how well-known it might be that the successor, though unregistered, is the rightful

claimant to the right of publicity. For example, if Valencia is believed, he did not need the

benefit of the Nevada Registration because he knew that Plaintiffs had the rights to Bob Marley

when he allegedly approached Mike Conley of Zion in February 2005 at the MAGIC show. Even

though Valencia had such knowledge, Fifty-Sixs alleged failure to then timely register the mark

forfeits its rights of publicity in Bob Marley. This contorted result is at odds with the language of

the statute and its purpose of granting, not destroying, intellectual property rights.

Fourth, Defendants interpretation also contravenes another important aspect of the

statute, namely, providing notice to prospective commercial users of a deceased persons per-

sonality and establishing an efficient system of registration. This aim can be gleaned from the

language of the statute itself. NRS 597.800(3) and (6) establish a central place where all

applications for registration of a right of publicity, namely, the Office of the Secretary of State;

mandate that all applications include information necessary for efficiently determining the

identity of the applicant and on whose behalf he is asserting the claim; and give the Secretary of



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State the power to destroy records of registration once the post-mortem right has timed out. NRS

597.800(5) mandates that any person or entity seeking to commercially use the personality of a

deceased person has a duty to first make a good faith, reasonable effort to discover the identity of

any person who qualifies as a successor in interest to the deceased person. Given that a

claimant may not assert any rights against a commercial use that begins before he files an appli-

cation to register his claim (NRS 597.800(4)), the statute plainly contemplates that any

prospective commercial user of a deceased persons personality must search the Secretary of

States records of registrations and otherwise seek to identify the successor claimant before using

the deceased persons name or likeness. This comports with the permissive nature of registration

under the statute, and the statutes built-in protections against liability for unsuspecting users.

Fifth, the statutes construction and legislative history also argue against Defendants

interpretation of NRS 597.800(5), namely, that that subsections last two sentences should be

construed to sanction a total forfeiture of rights if the claimant does not register his right within

6 months of knowledge of any infringement. Defendants refuse to read the last sentence

independent of the subsection of the prior sentence. However, Defendants ignore the first

sentence of 597.800(5) which mandates that each potential user of a deceased persons person-

ality make a diligent search to discover the identity of any applicable successor claimant. Defen-

dants cannot arbitrarily read the last two sentences of 597.800(5) together, but ignore the first

sentence. Either all three sentences must be considered together, such that the last sentences

waiver relates to each individual users responsibility to diligently confirm their right to use a

deceased persons personality, or they must be construed separately and independently, such that

the last sentence confirms that a right of publicity suit is waived absent a valid registration. The

sentences cannot be arbitrarily grouped together to support an interpretation helpful to

Defendants defense in the instant case.

Sixth, the statute is clear on its face that one instance of infringement is insufficient to

forever destroy a successors rights. To the extent the statute is deemed to be ambiguous, the

Court should view the context and spirit in which it was enacted to effect a construction that

best represents the legislative intent in enacting the statute. Citizens for Cold Springs v. City of



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Reno, 2009 Nev., LEXIS 53, *10 (2009). If possible, legislative intent should be determined by

looking at the act itself. List v. Whisler, 99 Nev. 133, 139 (1983). For determining legislative

intent, resource to extrinsic sources is not impermissible in Nevada. Tahoe Regional Planning

Agency v. McKay, 769 F.2d 534, 537 n.6 (9th Cir. 1985). Based on the statutory text itself, the

purpose of NRS 597.770, et seq. is, fundamentally, to grantpost-mortem rights of publicity to

successor claimants. SeeMinutes of the Nev. Sen. Comm. on Commerce and Labor, 65th Sess.,

June 2, 1989; Defendants Request for Judicial Notice [RJN] 7 (discussion of the significant

intellectual property rights potentially granted to estates of Orson Welles and Liberace based on

passage of statute). The statute must be interpreted to effectuate this intent. Defendants prof-

fered interpretation of the statute guts its granting of rights, mandating the total forfeiture of a

valid claim to apost-mortem right of publicity if the claimant has, or should have, knowledge of

any unauthorized use of the deceased persons personality, regardless of its scope, more than

6 months before registering his claim, which, again, is permissive in the first place. This

interpretation contravenes the spirit of the statute and the legislatures intent in enacting it, and

must be avoided lest the statute lose its remedial effect.

2. Plaintiffs Registered Their Right of Publicity Claim Within 6 Monthsof Their First Knowledge of Defendants Infringement

Even if Defendants interpretation is accepted by the Court (which it should not), there is

a factual dispute as to when Plaintiffs had knowledge or should have known of Defendants

infringement in Nevada. Fifty-Six registered its right of publicity with the Nevada Secretary of

State within 6 months of learning of Tunes and Legends 4 Lifes unauthorized use of the Marley

IP, the first unauthorized use of Bob Marleys personality in Nevada of which it had knowledge.

Tunes and Legends 4 Lifes infringement were the subject of the Mayah Collections suit. (SDF

20.) Specifically, Plaintiffs encountered Tunes and Legends 4 Lifes infringing merchandise at

the August 2005 MAGIC Tradeshow in Las Vegas, Nevada, and shortly thereafter filed suit.

(SDF 20.) Fifty-Six then registered its right of publicity on January 24, 2006, within 6 months

of its first knowledge in August 2005. (SDF 20.) Therefore, even if Defendants interpretation

of NRS 597.770, et seq. is adopted by the Court, it is of no consequence given that Plaintiffs



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registered their right of publicity within 6 months of their first knowledge of Defendants

infringement in Nevada.

Defendants cannot genuinely maintain that there is no genuine issue of material fact as to

when they began exploiting the Bob Marley images and when Plaintiffs first became aware, or

reasonably should have become aware, of said use. Defendants claim that they began showing

the Bob Marley images for license as early as August 2004. However, the only evidence

supporting this is the declaration of Valencia. Defendants have presented no other evidence of

Plaintiffs alleged specific knowledge of Defendants alleged use of the Bob Marley images.

However, as noted above, there is compelling contradictory evidence from photographer

Roberto Rabanne, Attorney Gregg Paradise, Mike Conley of Zion, and Kim Cauley of Freeze.

Rabanne testified that he and AVELA entered into their agreement in July 2006, that he did not

give Valencia the photographs of Bob Marley until June 2006, and that Valencia asked Rabanne

to backdate the contract to January 2005 in order to support an earlier date. (SDF 1.) Consistent

with the actual July 2006 contract date Rabanne testified to, Paradise testified3

that he was not

asked by Valencia to review his use of Bob Marley photographs until August 2006. (SDF 3.)

Conley of Zion testified that he did not recall seeing any Bob Marley photographs in the binder of

images Valencia presented to him at the February 2005 MAGIC tradeshow. Conleys testimony

is consistent with the declaration of his licensing agent (Formica) and with Formicas emails with

Valencia, attaching additional photographs to consider, none of which included images of Bob

Marley. (SDF 4-5.) Ms. Cauley of Freeze was more direct. She testified that the binder that

she saw at the February 2005 MAGIC show did not include any Bob Marley photographs. (SDF

4.) Put succinctly, there is clearly a question of material fact as to whether Defendants began

using the Bob Marley images before Plaintiffs registration.

3. Nevadas Right of Publicity Statute Applies to DefendantsCommercial Use of Bob Marleys Image

Defendants argument that Nevadas right of publicity statute does not apply to their

3The AVELA Defendants waived the privilege relating to Paradise to support their unpled

advice of counsel defense.



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commercial use of Bob Marleys image because Bob Marley died before the statute was enacted

fails for several reasons.

First, it is repudiated by the plain language of the statute. NRS 597.780 states that the

provisions of NRS 597.770-597.810, inclusive [i.e., Nevadas right of publicity statute], apply

to any commercial use within this state of a . . . deceased persons . . . likeness regardless of the

persons domicile. (Emphasis added.) As only persons who had died before the statute became

effective could be deceased when it became effective, this statutory language mandates that

persons who died before its effective date be covered by it. NRS 597.790(1) further provides

that this protection endures for a term consisting of the life of the person and 50 years after his

death . . . The statute thus expressly prohibits unauthorized commercial use of the publicity

rights of persons who had died up to 50 years before its 1989 enactment, such as Bob Marley.

Second, legislative history surrounding Nevadas right of publicity statute confirms that it

applies to persons who died before its enactment. When considering passage of Nevadas right of

publicity statute, the Nevada Senate Committee on Commerce and Labor discussed unauthorized

commercial uses of Orson Welles image without the permission of his estate, and stated that a

right of publicity bill will stop that practice. (Minutes of the Nevada Senate Committee on

Commerce and Labor, 65th Sess., June 2, 1989; RJN 7.) The same Committee noted that a

Nevada statute was needed because Elvis Presleys estate had filed suit in Tennessee to stop an

unauthorized Nevada tribute show, which could prohibit imitations of Elvis in Nevada absent a

Nevada statute. Id. It contemplated that passage of a Nevada right of publicity statute would

solve that problem, which it could do only if the statute applied to Elvis Presleys estate. Id. The

Nevada legislature also considered the rights associated with Liberace. Id. The Nevada legis-

lature thus obviously intended the Nevada right of publicity statute to both protect and regulate

the commercial uses of deceased persons who died before its enactment, such as Orson Welles,

Elvis Presley, Liberace, and Bob Marley.4

4 Orson Welles died on October 10, 1985. (Plaintiffs Request for Judicial Notice (PRJN)5.) Elvis Presley died on August 16, 1977. (PRJN 4.) Liberace died on February 4, 1987.(PRJN 6.) Bob Marley died on May 11, 1981. (SUF 1.)



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Third, Defendants argument to the contrary is based on the erroneous premise that Plain-

tiffs ask this Court to apply Nevadas right of publicity statute retroactively. Plaintiffs do not

do so, because all of the infringing conduct that Plaintiffs complain of took place at least 12 years

(depending who the jury believes) after the statute was enacted. As the Nevada Supreme Court

stated in Public Employees Benefits Program v. LVMPD, 124 Nev.Adv.Op. No. 14, 179 P.3d

542, 553 (2008):

[J]ust because the statute draws upon past facts does not mean that it operatesretrospectively. A statute has retroactive effect when it takes away or impairsvested rights acquired under existing laws, or creates a new obligation, imposes anew duty, or attaches a new disability, in respect of transactions or considerationsalready passed.

179 P.3d at 553 (internal quotations and citations omitted.) A statute acts retroactively only

when it takes away vested rights a party previously had, or makes illegal acts that were legal

when done.

Here, Nevadas right of publicity statute was enacted in 1989. Even if Defendants

allegations were true, any transactions or considerations upon which they base their infringe-

ment first took place in 2004 or 2007, more than 15 years after the statutes enactment. (MSJ,

p. 21.) Thus, Defendants had no vested right to exploit Bob Marleys image when they did so,

and the statute did not make illegal any transactions or product distributions which were legal

when Defendants engaged in them. Instead, Plaintiffs seek to apply Nevadas right of publicity

statute prospectively to infringements that occurred years after the statute became law. Defen-

dants entire retroactivity argument is therefore irrelevant, regardless of the date of Bob

Marleys death. See Miller v. Burke, 124 Nev. 56, 188 P.3d 1112, 1121 (2008) (term limits

legislation applied to officials elected before the statutes enactment, because the term limits did

not affect the officials until years that statute was enacted, and applying the statutory limits to

such officials was not retroactive and constitutes a prospective-only application).

Fourth, Defendants citation to California law to support its arguments lacks merit

because the California right of publicity statute affirmatively supports application of Nevadas

right of publicity statute to Bob Marley to the extent it is relevant here. The legislative history

indicates (and Defendants argue (MSJ, p. 27) that the Nevada right of publicity statute is indeed



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based in part on the California posthumous right of publicity statute. (Minutes of the Nevada

Senate Committee on Commercial Labor, RJN 7.) First enacted in 1984, the California statute

now contains express language which creates publicity rights that apply to individuals who died

up to 50 (and later, 70) years before its effective date. Cal.Civ.Code 3344.1(a),(h). California

legislative history demonstrates that the California statute was always intended to apply to a

deceased personality who died before its January 1, 1985 effective date. The statute was

enacted in 1984 to legislatively overrule a California Supreme Court decision which held that the

estate of Bela Lugosi had no common law posthumous right of publicity in California.

(California Senate Committee on Judiciary 1983-84 Regular Session,Report on Commercial

Exploitation of Deceased Celebrities, PRJN 1, pp 2-3; California Assembly Committee on

Judiciary Report on SB 613, Californias Right of Publicity Statute, PRJN 2, p. 2.) See also

Gugliemi v. Spelling-Goldberg Productions, 25 Cal.3d 860, 861 (1979). Pricilla Presley and

celebrity estate representatives testified in support of the California posthumous right of publicity

statute. (See PRJN 1, p. 3); California Senate Democratic Caucus Judiciary Committee Summary

of Arguments In Support of S.B. 613, Californias Posthumous Right Of Publicity Statute,

PRJN 3, p. 1.) The California Assembly Committee on Judiciary noted that S.B. 613 protected

deceased personalities, who would include any natural person who died after January 1,

1935. (PRJN 2, pp. 2, 8.) The California Supreme Court and other courts construing

Californias 1984 posthumous right of publicity statute have routinely applied it to persons who

died before its enactment. See, e.g., Comedy III Productions, Inc. v. Gary Saderup, Inc., 25

Cal.4th 387 (2001), (applying Californias posthumous right of publicity statute to the Three

Stooges, who all died before 1976.)

Indeed, the California legislature felt so strongly about this issue that it legislatively

overruled the only California district court to mistakenly rule otherwise. Within a few months of

that mistaken ruling, the California legislature passed legislation which clarified that it always

intended Californias posthumous right of publicity statute to apply to individuals who died

before the statutes effective date. As the district court which had made the initial ruling subse-

quently acknowledged, [t]he bill [clarifying California right of publicity law] states that all



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celebrities who died within 70 years of January 1, 1985 . . . have a posthumous right of publicity

that is deemed to have existed at the time of their death. Milton H. Greene Archives, Inc. v.

CMG Worldwide, Inc., 2008 WL 655604, *3 (C.D. Cal. Jan. 7, 2008).

The California right of publicity statute was always intended to protect individuals who

died before its effective date, as Californias legislature recently clarified. Defendants ask this

Court to ignore this clarification, as well as the statutory language, legislative history, and earlier

judicial applications of the California statute which preceded it, to make the same mistake in

construing Nevadas right of publicity statute that another court made in construing Californias.

The Nevada right of publicity statutes plain language, legislative history, and predecessor

California statute all demonstrate that the Nevada statute applies, and was always intended to

apply, to persons such as Bob Marley, who died within 50 years of its 1989 enactment.

B. Defendants Are Not Entitled to Summary Judgment on Plaintiffs Trademarkand False Association Claims

In their MSJ, Defendants concede Plaintiffs ownership of the BOB MARLEY mark for

apparel and related items, but contend that they have not used the BOB MARLEY mark as a

trademark. However, Defendants fail to recognize Fifty-Sixs trademark rights in Bob Marleys

identity and persona, and the Ninth Circuit cases establishing those rights. Such a trademark right

is not a claim to specific images of Bob Marley or a blanket right to all Bob Marley images, but a

discrete right to use Bob Marleys identity and persona, which Defendants have brazenly

infringed by manufacturing apparel and beach towels bearing indicia of his identity.

Moreover, Defendants have incontrovertibly used the BOB MARLEY mark on displays

associated with Defendants goods. Although Defendants claim that the use of BOB MARLEY

is a descriptive, fair use under the Lanham Act, they have utterly failed to establish that there is

no genuine issue of material fact, thereby precluding summary judgment on their descriptive use

defense. Defendants ignore recent Ninth Circuit precedent establishing that the fair use defense is

inappropriate for summary judgment due to its dependence on disputed facts, ignore the role of

likelihood of confusion in determining whether a use is, in fact, fair, and decline to make any

showing that they used the BOB MARLEY mark in good faith, presumably because their bad



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faith is so easily established.

1. Plaintiffs Own Trademark Rights in Bob Marleys IdentityFifty-Six clearly owns trademark rights in the identity,5 and all features composing the

identity, of Bob Marley. In celebrity cases, the term mark applies to the celebritys persona.

Downing v. Abercrombie & Fitch, 265 F.3d 994, 1007 (9th Cir. 2001). As the Ninth Circuit 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 v. Frito-Lay, Inc., 978 F.2d 1093, 1110 (9th Cir. 1992).

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 clearly have a commercial interest in the exploitation of aspects of Bob Marleys

identity, including his image and likeness. Plaintiffs have consistently used the identity of Bob

Marley as a trademark, and enforced its unauthorized use. Fifty-Six 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 42.) Fifty-Sixs affiliate company owns an incontestable trademark

registration that includes Bob Marleys image. (SUF 35.) Fifty-Six 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.) 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. (SUF 40.) See Waits, 978 F.2d at 1106 (courts have

recognized false endorsement claims brought by plaintiffs, including celebrities, for the unautho-

5 Plaintiffs set forth all of the facts and authority establishing Fifty-Sixs ownership in BobMarleys identity, including his image, in its 43(a) MSA, pp. 3-8, 12-21. To avoid repetition,Plaintiffs do not reassert all of those facts and authority in this opposition.



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rized imitation of their distinctive attributes, where those attributes amount to an unregistered

commercial trademark ); see also Allen v. National Video, 610 F. Supp. 612, 625-26 (S.D.N.Y.

1985) (celebrity has commercial investment in name and face tantamount to interests of a trade-

mark holder in a distinctive mark). Plaintiffs have established trademark rights in the identity of

Bob Marley sufficient to support their Lanham Act claim.

2. Defendants Have Used Reproductions of the Marley IP in Connectionwith the Sale and Distribution of Goods

Defendants have widely and intentionally used the Marley IP in the sale and distribution

of apparel and other merchandise on a nationwide basis. Specifically, the AVELA Defendants

have licensed photographs of Bob Marley to Defendants JEM and Freeze, as well as to ten other

licensees for the manufacture and sale of the Bob Marley Products. Defendants have also

knowingly allowed retailers to use the BOB MARLEY mark in promotion of their products and

in displays and advertisements accompanying their products. By licensing photographs of Bob

Marley and music titles and lyrics to manufacturers and maintaining control over use of those

photographs, as well as knowingly allowing retailers to use the BOB MARLEY mark, the

AVELA Defendants have clearly and unequivocally used the Marley IP in connection with the

sale of goods. Similarly, by using the Bob Marley photographs on apparel and selling these

products to retailers and knowingly allowing retailers to use the BOB MARLEY mark, JEM and

Freeze are also using the Marley IP in connection with the sale of goods.

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

Defendants use of photographs depicting Bob Marley on their products is an unautho-

rized use of Plaintiffs trademark in Bob Marleys identity. Defendants fail to address this point.

Despite Defendants characterization of the Sixth Circuits decision inETW, the Ninth Circuit has

consistently held that commercial exploitation of a celebritys identity is an infringing trademark

use. Without a doubt, 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.,



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971 F.2d 1395, 1396 (9th Cir. 1992) (court upheld television personality Vanna Whites unfair

competition claim under 1125(a) based on the defendants use of a robot constructed in a way to

resemble Whites hair and dress in advertisement); see Downing, 265 F.3d at 1008 (entry of

summary judgment reversed because plaintiffs, legendary surfers, raised valid 1125(a) claim for

use of their pictures in defendants clothing catalog). 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 beach towels,

thereby casting the same impression upon consumers as that cast by Plaintiffs.

Plaintiffs survey results strengthen Plaintiffs position that Defendants are using Bob

Marleys identity -- namely, his image and likeness -- in a source-identifying, trademark manner.

SeeE&J Gallo Winery v. Gallo Cattle Company, 967 F.2d 1280, 1292 (9th Cir. 1992). Plaintiffs

survey expert 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

found that 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%,

resulting in a net confusion rate of 20% (the control groups 22% confusion is subtracted from the

test groups 42% confusion rate to eliminate guessing or other noise). (SUF 86.) 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); see also Exxon Corp. v. Texas Motor Exchange, Inc., 628 F.2d

500, 507 (5th Cir. 1980). Defendants attacks on the Survey miss the point; the Survey was

conducted to establish, and certainly does establish, the rate of confusion related to Defendants

use of Bob Marleys identity on their products.

Defendants reliance on theETWdecision is unavailing. First, the Ninth Circuit has



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firmly established that celebrities have trademark rights in their identities and personas. To the

extentETW, a Sixth Circuit opinion, contradicts this position, it must be disregarded. Second,

ETWdoes not stand for the proposition that celebrities do not have trademark rights in their

identities6, but instead that, in the context of that particular case, [i]mages and likenesses of

[plaintiff Tiger] Woods are not protectable as a trademark because they do not perform the

function of designation. ETW, 332 F.3d at 922. InETW, the goods at issue were reproductions

of expensive serigraphs and lithographs, not bargain bin t-shirts priced to sell. These paintings

featured numerous transformative elements, including the depiction of other golfing legends

looking upon Tiger Woods from the heavens and a depiction of the clubhouse at the Masters

Tournament, so that the value and appeal of the painting derived from the creativity and skill of

the artist, not Woods identity or celebrity. See Id. at 937 (holding that literal depictions of

celebrities versus the greater protection afforded transformative, artistic renderings -- are relevant

in determining whether the Lanham Act applies to a product). Notably, Woods had not exploited

his identity through paintings such that consumers might associate such a product with him.

This is markedly different from this case where consumers are likely to believe that the

Bob Marley Products are endorsed by or associated with Plaintiffs by virtue of their longtime and

popular exploitation of Bob Marleys image and likeness on apparel. (SUF 40, 44, 83.) The

value of Defendants products is singularly premised on the celebrity of Bob Marley and

Plaintiffs trademark therein, (not as inETW) based on any added artistic or transformative

elements. To the extent text is added to Defendants products, it is almost always Marley song or

album titles or song lyrics, further associating the products bearing Bob Marleys image with his

identity. TheETWcase is factually inapposite as to preclude any meaningful application to the

instant case.

Based on the above Ninth Circuit precedent, Defendants are wrong in contending that by

not asserting trademark rights in a specific image, Plaintiffs have no redress under 1125(a) of

6 False endorsement occurs when a celebritys identity is connected with a product or servicein such a way that consumers are likely to be misled about the celebritys sponsorship or approvalof the product or service. ETW, 332 F.3d at 925.



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the Lanham Act for Defendants unauthorized exploitation of Bob Marleys image and likeness.

Plaintiffs have established their trademark rights in Bob Marleys identity. Plaintiffs 1125(a)

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

premised upon Defendants commercial 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 goods7.

Defendants argument based on Nikes Michael Jordan mark confuses the nature of

Plaintiffs claim. (MSJ, p. 17.) While Nike may not be entitled to assert a false association claim

for the unauthorized use of Michael Jordans image on a product, Michael Jordan himself, as the

rightful owner of a trademark in his identity and persona, most certainly does. Just as the Ninth

Circuit has established that unlicensed commercial use of indicia of a celebritys identity infringes

the celebritys trademark rights in his identity, Defendants unauthorized use of images of Bob

Marley infringes Plaintiffs trademark rights in Bob Marleys identity.

b. Defendants Have Used Copies and Reproductions of PlaintiffsBOB MARLEY Trademark

Defendants commercial use of the name BOB MARLEY, and the image and likeness of

Bob Marley, both constitute infringing uses of the BOB MARLEY mark. Defendants use of the

BOB MARLEY mark on and in association with apparel -- goods in which Plaintiffs have

indisputably accrued rights under the BOB MARLEY mark -- creates a presumption of

confusion. See Lozano Enterprise v. La Opinion Publishing Co., 44 U.S.P.Q.2d 1764, 1767

(C.D. Cal. 1997), quoting Opticians Assn v. Independent Opticians, 920 F.2d 187, 193 (3d Cir.

1990) (holding that a defendants use of marks identical to the plaintiffs marks for competitive

services renders the confusion test under 1114 open and shut).

Defendants use of the marks BOB MARLEY and MARLEY in commerce and on the

internet infringes Plaintiffs federally registered BOB MARLEY trademark, capitalizes on

Plaintiffs goodwill in that mark and its rights in Bob Marleys identity, and further conjures

7 Plaintiffs have also sufficiently pled their 1125(a) claim in the FAC, as noted above.



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Defendants association with and/or endorsement by Bob Marley and Plaintiffs. 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). While Defendants do not use MARLEY or

BOB MARLEY directly on the apparel itself, Defendants use the marks in displays associated

with the apparel. Specifically, Defendants use of the marks BOB MARLEY and MARLEY on

online retailers listings for the Bob Marley apparel, planogram label strips (also known as shelf

labels), on the garments themselves, and metadata, among other uses, constitute displays

associated with Defendants apparel. All of these uses are uses in connection with Defendants

goods triggering the protections of 1114 and 1125(a). Brookfield Communications, Inc. v.

West Coast Entertainment Corp., 174 F.3d 1036, 1062 (9th Cir. 1999). At a minimum, there is a

factual dispute on this issue, precluding summary judgment in Defendants favor.

Analysis of the other factors inAMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th

Cir. 1979) further ground Plaintiffs argument that the marks are likely to be confused.

Defendants Bob Marley Products and Plaintiffs products are offered through identical channels

of trade, namely, retail outlets and the internet. (SUF 72.) Indeed, Plaintiffs are aware of at

least one retailer, Wet Seal, who stopped selling Plaintiffs products in favor of Defendants solely

because they were cheaper. (SUF 75.) Plaintiffs have also established the strength of the BOB

MARLEY mark based on the 20-plus year history as an indicator of source, and Plaintiffs

concomitant and consistent policing of their rights therein. (SUF 42, 45.) Plaintiffs and

Defendants Bob Marley products (t-shirts, etc.) are also inexpensive items, such that the public is

not likely to exhibit much care or sophistication when purchasing them. (SUF 76.) To this

point, a buyer from Target and one of the AVELA Defendants licensees, JGR Copa, testified that

Defendants products were impulse buys. (SUF 77-78.) In using the BOB MARLEY mark in

such a manner and on goods offered by Plaintiffs under the BOB MARLEY mark, the Bob

Marley Products are likely to be confused with Plaintiffs licensed Bob Marley products and/or

consumers are likely to associate Defendants products with Plaintiffs or the Bob Marley heirs, or

believe that they sponsored, licensed or approved Defendants Bob Marley Products.



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Additionally, Defendants use of Bob Marleys image and likeness on the products

themselves constitutes use of the BOB MARLEY word mark by virtue of the doctrine of legal

equivalents. Under the legal equivalents or picture-word equivalency doctrine, a trademark

owners rights in a word can be infringed by use of a picture if the word and the picture evoke the

same mental impression, or vice versa. [I]t is established that where a mark comprises a

representation of an . . . individual and another mark consists of the name of that . . . individual,

such designations are to be regarded as legal equivalents in determining likelihood of confusion

under the Trademark Act. McCarthy 23:27, citing Squirrel Brand Co. v. Green Gables Inv.

Co., 223 U.S.P.Q. 154, 155 (TTAB 1984). This is based on the plain fact that a picture and a

word can have the same meaning or cast the same commercial impression to consumers and, thus

be confusingly similar. Mobil Oil Corp. v. Pegasus Corp., 818 F.2d 254, 257 (2d Cir. 1987)

(Defendants PEGASUS word mark infringed plaintiffs image mark depicting a Pegasus);In re

Sloppy Joes Intl, Inc., 43 U.S.P.Q.2d 1350, 1355-56 (TTAB 1997) (trademark registration

consisting of an image of Ernest Hemingway properly rejected because it was confusingly similar

to preexisting registration for various HEMINGWAY word marks).

Defendants argue that the doctrine does not apply to them because they are not using Bob

Marleys image as a mark. As they do in their fair use argument, Defendants offer conclusory

statements such as Defendants do not use the images of Marley as a source indicator. (Def.

MSJ, p. 18.) Defendants cannot simply claim that they do not use Bob Marleys image as a

source indicator and evade the consequences of this firmly established

fifty-six v avela (bob marley rop) (plaint. resp. def. msj)

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