Bob Marley Heirs Succeed On Appeal In Merchandising Case

Fifty-Six Hope Road Music v. A.V.E.L.A., No 12-17502 (9th Cir. Feb. 20, 2015).

The 9th Circuit Court of Appeals affirmed judgment in favor of Bob Marley's heirs based on defendants' use of Bob Marley's image on t-shirts and other merchandise in a manner likely to cause confusion as to Plaintiffs' sponsorship of approval of the merchandise.  Additionally, the Court found that Defendants have waived several defenses by failing to properly raise them in the district court.  The appellate court also found that the lower court had not abused its discretion in determining defendant's profits and there was a sufficient evidence to find that defendants willfully infringed plaintiff's rights.  Nor did the lower court err in awarding plaintiffs their attorney's fees, as plaintiffs were the prevailing parties, and defendants' conduct was willful.  Plaintiffs also succeeded on their tortious interference claims because Plaintiffs' licensing agent testified that one of Plaintiffs' licensees lost an order intended for Wal-Mart because defendant sold t-shirts there. Defendants did succeed, however, in dismissing the right of publicity claim because under Nevada law a publicity right successor waives its publicity rights when it fails to timely register its rights.

Don Henley Suit Against Clothing Company Survives Dismissal

Henley v. Duluth Holdings, No. CV 14-7827 DSF (C.D. Cal. Jan. 21, 2015).

Don Henley's lawsuit concerning an advertisements for Henley-style shirts that urged customers to “Don a henley, take it easy,” survives defendant's motion to dismiss.  The defendant apparel company had argued that the promotion was a joke.  The Court found that Defendant has not established that its use of Plaintiff’s name – and the name of one of his band’s most famous songs – in its advertisement was sufficiently transformative on its face that a motion to dismiss should be granted.

Motion For Judgment As Matter Of Law, Or For New Trial, Denied In Beastie Boys/Monster Case

Beastie Boys v. Monster Energy, 1:12-cv-06065-PAE (SDNY filed 12/04/14) [Doc. 181].

After a jury awarded plaintiff Beastie Boys a verdict on their copyright and trademark claims, defendant Monster moved for a judgment as a matter of law under Federal Rule of Civil Procedure 50.  As to the Copyright Act claim, Monster argued that the evidence was insufficient to support the finding of willful infringement on which the award of enhanced statutory damages was based.  As to the Lanham Act claim, Monster argued that the evidence was insufficient to support either a finding of a false endorsement or that
Monster acted with intentional deception.  Monster alternatively moved for a new trial under
Rule 59 or for a reduction in damages.   The court denied Monster’s motions.

Hard Rock's CAVERN CLUB Trademark Not Subject To Cancellation

Cavern City Tours Ltd. v. Hard Rock Cafe Int'l (USA), Inc., No. 6:12-cv-1410 (M.D. Fla. Oct. 31, 2014).

The Court held that the TTAB properly dismissed the the petition of plaintiff, who owns the mark THE CAVERN CLUB in the UK and other jurisdictions, to cancel Hard Rock Cafe's CAVERN CLUB mark in the USA.  "The Cavern Club" was a venue where the Beatles performed hundreds of times early in their career.

First, the Court found that Hard Rock did not knowingly make false statements in their application for the CAVERN CLUB mark concerning the use of the mark by other people (like plaintiff), and rejected plaintiff's argument to adopt a "willful blindness" standard.  The Court found that plaintiff failed to submit sufficient evidence to prove that Hard Rock was aware of Plaintiff's mark; further, even if Hard Rock did have knowledge of plaintiff's use of the mark, the Court found that Hard Rock had reasonable basis to believe that plaintiff did not have a superior right to use the mark in commerce.

Second, the Court found that Hard Rock's mark did not falsely suggest a connection with plaintiff in violation of section 2(a) of the Lanham Act.  "The mere fact that Plaintiff's name has a word in common with the CAVERN CLUB does not establish that Plaintiff's identity or persona is the CAVERN CLUB."  Similarly, plaintiff's lease and operation of a "new" Cavern Club venue did not establish that Plaintiff's persona or identity is the CAVERN CLUB.  Moreover, Plaintiff did not establish that the CAVERN CLUB mark points uniquely and unmistakably to Plaintiff.  To the contrary, the evidence links the CAVERN CLUB with the original venue, which was demolished in 1973; thus, it did not point uniquely to Plaintiff.  Accordingly, Hard Rock was granted summary judgment dismissing the case.

Use Of Rapper's Image On Website Constitutes Copyright Infringement And Violated Right Of Publicity; Questions Remain on Trademark And Third-Party Contribution Claims

Jackson v. Odenot, No. 09-cv-05583 (S.D.N.Y. filed March 24, 2014) [Doc. 150].

Rapper 50 Cent was granted summary judgment on his claims against a website for the unauthorized use of photographs that appeared on the masthead of the website.  50 Cent's claim for copyright infringement was based on a registration for a sound recording which included the relating artwork/photos, and exact copies were used by the defendants.  50 Cent's claim under New York state law for the right of publicity (Civil Rights Law sections 50-51) succeeded because: (1) the pictures "are recognizable likenesses of Jackson because someone familiar with Jackson would be able to identify him in each of the mastheads", and (2) defendants' waived their statute of limitations defense.  However, the Court found that there were questions of fact that precluded summary judgment on 50 Cent's claim under the Lanham Act for false endorsement, 15 USC 1125(a)(1), and also on his claim for common law unfair competition.  The Court did dismiss the defendants' affirmative defenses of fair use, implied license, equitable estoppel, and unclean hands, and found that the other affirmative defenses had been abandoned.  Lastly, the Court held that defendant could not recover on a contribution theory under copyright and trademark law against the third-party defendants, but could seek contribution under the New York state claims.

Don Henley Complaint Against Politician

Don Henley v. Devore, No. 09 Cv. 0481-JVS (C.D. Cal. complaint filed 4/17/2009)


"This action arises out of the wholesale appropriation and exploitation by Defendants DeVore and Hart of the well-known and valuable song "The Boys of Summer," written by Plaintiffs Don Henley and Mike CampbelL. Defendants' infringing conduct is unauthorized, brazenly wilful, and pursued solely in order to promote DeVore and Hart's personal and professional agenda. Openly flouting Henley and Campbell's intellectual property rights, DeVore and Hart copied almost
all of Henley and Campbell's copyrighted musical composition note for note and, altering the lyrics to suit their own purpose and using a recorded performance of the work to mimic the original Henley recording, produced and distributed a video featuring Henley and Campbell's song (the "Boys of Summer Video"). DeVore and Hart's avowed aim in doingthis was to use the Boys of Summer Video to promote DeVore's campaign for th~ Republican nomination for the U.S. Senate in 2010.