Fifty-Six Hope Road Music v. A.V.E.L.A.

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
FIFTY-SIX HOPE ROAD MUSIC, LTD.; No. 12-17502
ZION ROOTSWEAR, LLC,
Plaintiffs-Appellees, D.C. No.
2:08-cv-00105-
v. PMP-GWF
A.V.E.L.A., INC.; X ONE X MOVIE
ARCHIVE, INC.; CENTRAL MILLS,
INC. (FREEZE); LEO VALENCIA,
Defendants-Appellants,
and
JEM SPORTSWEAR,
Defendant.
FIFTY-SIX HOPE ROAD MUSIC, LTD.; No. 12-17519
ZION ROOTSWEAR, LLC,
Plaintiffs-Appellees, D.C. No.
2:08-cv-00105-
v. PMP-GWF
A.V.E.L.A., INC.; X ONE X MOVIE
ARCHIVE, INC.; CENTRAL MILLS,
INC. (FREEZE); LEO VALENCIA,
Defendants,
2 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
and
JEM SPORTSWEAR,
Defendant-Appellant.
FIFTY-SIX HOPE ROAD MUSIC, LTD.; No. 12-17595
ZION ROOTSWEAR, LLC,
Plaintiffs-Appellants, D.C. No.
2:08-cv-00105-
v. PMP-GWF
A.V.E.L.A., INC.; X ONE X MOVIE
ARCHIVE, INC.; CENTRAL MILLS,
INC. (FREEZE); LEO VALENCIA; JEM
SPORTSWEAR,
Defendants-Appellees.
FIFTY-SIX HOPE ROAD MUSIC, LTD.; No. 13-15407
ZION ROOTSWEAR, LLC,
Plaintiffs-Appellees, D.C. No.
2:08-cv-00105-
v. PMP-GWF
A.V.E.L.A., INC.; X ONE X MOVIE
ARCHIVE, INC.; LEO VALENCIA,
Defendants-Appellants.
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 3
FIFTY-SIX HOPE ROAD MUSIC, LTD.; No. 13-15473
ZION ROOTSWEAR, LLC,
D.C. No.
Plaintiffs-Appellants, 2:08-cv-00105-
PMP-GWF
v.
A.V.E.L.A., INC.; X ONE X MOVIE OPINION
ARCHIVE, INC.; LEO VALENCIA;
CENTRAL MILLS, INC. (FREEZE); JEM
SPORTSWEAR,
Defendants-Appellees.
Appeal from the United States District Court
for the District of Nevada
Philip M. Pro, Senior District Judge, Presiding
Argued and Submitted
July 8, 2014—San Francisco, California
Filed February 20, 2015
Before: Ferdinand F. Fernandez, N. Randy Smith,
and Morgan Christen, Circuit Judges.
Opinion by Judge N.R. Smith;
Partial Concurrence and Partial Dissent by Judge Christen
4 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
SUMMARY*
Lanham Act
The panel affirmed the district court’s judgment after a
jury trial on claims under the Lanham Act and Nevada state
law regarding the use of Bob Marley images on apparel and
other merchandise.
Affirming the denial of defendants’ post-trial motion for
judgment as a matter of law on a false endorsement claim, the
panel held that sufficient evidence supported the jury’s
finding that defendants violated the Lanham Act because they
(a) used Marley’s image (b) on their t-shirts and other
merchandise, (c) in a manner likely to cause confusion as to
plaintiffs’ sponsorship or approval of these t-shirts and other
merchandise. The panel held that defendants waived several
defenses. It rejected the argument that allowing a plaintiff to
vindicate a false endorsement claim based on the use of a
deceased celebrity’s persona essentially creates a federal right
of publicity.
The panel held that the district court did not abuse its
broad discretion in determining the profits for three
defendants. There was sufficient evidence to find that
defendant Freeze willfully infringed plaintiffs’ rights. The
Seventh Amendment did not require that a jury calculate
these profits.
*
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 5
The panel held that the district court did not abuse its
discretion by ordering three defendants to pay attorneys’ fees
to plaintiffs because (1) plaintiffs were prevailing parties, and
(2) the case was exceptional, as these defendants’ conduct
was willful.
The panel affirmed the district court’s grant of summary
judgment to defendants on a right of publicity claim under
Nevada law.
The panel held that there was sufficient evidence to
support the jury’s finding that three defendants interfered
with plaintiffs’ prospective economic advantage.
The panel held that the district court did not err in
granting defendants’ motion for judgment as a matter of law
on the issue of punitive damages.
Concurring in part and dissenting in part, Judge Christen
concurred in the result but did not join the reasoning in
Subsection I.B.2 of the majority’s opinion, addressing
likelihood of confusion. Judge Christen wrote that the narrow
holding in Part I, concluding that the evidence presented at
trial was sufficient for the jury to find that defendants
violated the Lanham Act by using Marley’s likeness, was
dictated by the standard of review on appeal, and by the
defenses actually pursued by defendants.
6 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
COUNSEL
Jill M. Pietrini (argued) and Paul A. Bost, Sheppard, Mullin,
Richter & Hampton, Los Angeles, California, for Plaintiff-
Appellee/Cross-Appellant Fifty-Six Hope Road Music, Ltd.
Timothy J. Ervin (argued), Gallant & Ervin, Chelmsford,
Massachusetts, for Plaintiff-Appellee/Cross-Appellant Zion
Rootswear, LLC.
Michael Bergman (argued), Law Offices of Michael
Bergman, Century City, California, and Melissa W. Woo,
Carlsbad, California, for Defendants-Appellants/Cross-
Appellees A.V.E.L.A., Inc., X One X Movie Archive, Inc.,
Central Mills, Inc., and Leo Valencia.
John Yates (argued), Greenberg & Bass LLP, Encino,
California, for Defendant-Appellant/Cross-Appellee Jem
Sportswear, Inc.
OPINION
N.R. SMITH, Circuit Judge:
1. The district court did not err by denying Defendants’
post-trial motion for judgment as a matter of law on the
Lanham Act false endorsement claim of Fifty-Six Hope Road
Music (“Hope Road”) and Zion Rootswear, LLC (“Zion”).
The jury found Appellees, A.V.E.L.A., X One X Movie
Archive, Leo Valencia, Freeze, and Jem Sportswear
(collectively “Defendants”), (a) used Bob Marley’s image
(b) on their t-shirts and other merchandise, (c) in a manner
likely to cause confusion as to Plaintiffs’ sponsorship or
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 7
approval of these t-shirts and other merchandise. See 15
U.S.C. § 1125(a); White v. Samsung Elecs. Am., Inc., 971
F.2d 1395, 1400 (9th Cir. 1992). Defendants waived several
defenses to the Plaintiffs’ claim by failing to properly raise
them in the district court. See Arizona v. Components Inc., 66
F.3d 213, 217 (9th Cir. 1995). Given such waivers, and
without opining on the merits of those defenses, we must
affirm on the basis that there was sufficient evidence to
support the jury’s verdict for Plaintiffs.
2. The district court did not abuse its broad discretion in
determining the profits for A.V.E.L.A., Freeze, and Jem
Sportwear (“Jem”). There was sufficient evidence to find
Freeze willfully infringed Plaintiffs’ rights, because Freeze’s
vice president of licensing testified that she knew that
Plaintiffs had the right to merchandise Marley’s image before
Freeze began selling similar goods. The Seventh Amendment
does not require that a jury calculate these profits, because
juries have not traditionally done so, and a claim for profit
disgorgement is equitable in nature. See Reebok Int’l, Ltd. v.
Marnatech Enters., Inc., 970 F.2d 552, 561 (9th Cir. 1992).
3. The district court did not abuse its discretion by
ordering A.V.E.L.A., X One X Movie Archive, and Valencia
(collectively “A.V.E.L.A. Defendants”) to pay attorneys’ fees
to Plaintiffs, because (1) Plaintiffs were prevailing parties,
having achieved a material alteration in their legal
relationship with Defendants, see Klamath Siskiyou
Wildlands Ctr. v. U.S. Bureau of Land Mgmt., 589 F.3d 1027,
1030 (9th Cir. 2009); and (2) the case was exceptional, as
Defendants’ conduct was willful, see Gracie v. Gracie,
217 F.3d 1060, 1068 (9th Cir. 2000). Because there was less
evidence of Jem’s and Freeze’s willfulness, the district court
8 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
was also not required to order them to pay Plaintiffs’
attorneys’ fees.
4. We affirm the district court’s grant of summary
judgment to Defendants on the right of publicity claim,
because Nev. Rev. Stat. § 597.800.4 and .5 unambiguously
provides that a publicity right successor waives its publicity
rights (and not just the right to sue a particular defendant)
when it fails to timely register its rights.
5. There was sufficient evidence to support the jury’s
finding that A.V.E.L.A. Defendants interfered with Plaintiffs’
prospective economic advantage, based on Hope Road’s
licensing agent’s testimony that one of Hope Road’s licensees
lost an order intended for Walmart, because Jem sold Marley
t-shirts there.
6. Finally, the district court did not err in granting
Defendants’ motion for judgment as a matter of law on the
issue of punitive damages, because the district court’s
statement during trial did not contradict its later grant of the
motion.
FACTS & PROCEDURAL HISTORY
Bob Marley transcended celebrity roles from pop idol to
muse, championing social change and diffusing his music and
message to an ever-growing audience. Even now—more than
thirty years after his death—Marley’s influence continues to
resonate, and his iconic image to command millions of
dollars each year in merchandising revenue. The primacy of
rights to Marley’s image forms the basis of the instant case.
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 9
Plaintiff Hope Road is an entity owned by Marley’s
children, formed for the purpose of acquiring and exploiting
assets, rights, and commercial interests in the late Bob
Marley. In 1999, Hope Road granted Zion an exclusive
license to design, manufacture, and sell t-shirts and other
merchandise bearing Marley’s image. Hope Road authorizes
Zion to use hundreds of different images of Marley on its
products.
Defendants were involved with the sale of competing
Marley merchandise. A.V.E.L.A. publishes and licenses
photographs, images, movie posters, and other artwork for
use in the retail marketplace. Defendant X One X Movie
Archive holds the copyrights to these photographs, images,
movie posters, and other artwork; and Valencia serves as
president and CEO of both companies. In 2004, A.V.E.L.A.
acquired some photos of Marley from a photographer named
Roberto Rabanne. After acquiring the Marley photographs,
A.V.E.L.A. began licensing them to defendants Jem and
Freeze (as well as entities not a party to this suit) for the
production of Marley t-shirts and other merchandise. These
items were sold at Target, Walmart, and other large retailers.
On January 23, 2008, Plaintiffs filed suit against
Defendants, alleging five claims arising from Defendants’ use
of Marley’s likeness: (1) trademark infringement under 15
U.S.C. § 1114, (2) false endorsement under 15 U.S.C.
§ 1125(a), (3) common law trademark infringement,
(4) unauthorized commercial use of right to publicity under
Nev. Rev. Stat. § 597.770 et seq., and (5) intentional
interference with prospective economic advantage.
The district court granted Defendants’ motion for
summary judgment as to the 15 U.S.C. § 1114 claim, the
10 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
common law trademark claim, and the state law right of
publicity claim. The two remaining claims were tried to a jury
between January 4 and January 20, 2011. Plaintiffs won on
their interference claim, although only against A.V.E.L.A.
Defendants. The jury awarded $300,000 in compensatory
damages for the interference.
The jury also returned a verdict in favor of Plaintiffs on
the 15 U.S.C. § 1125(a) claim with respect to all Defendants.
Prior to trial, Plaintiffs had requested that a jury calculate
Defendants’ profits, for which Plaintiffs sought disgorgement.
The district court denied this request and reopened discovery
after trial for submission of evidence of A.V.E.L.A.’s, Jem’s,
and Freeze’s profits from Marley merchandise. Subsequently,
the district court assessed A.V.E.L.A.’s net profits at
$348,543.00; Jem’s at $413,638.29; and Freeze’s at
$19,246.54. On July 3, 2012, the district court entered
judgment against A.V.E.L.A., Jem, and Freeze in these
amounts.
Plaintiffs also moved for attorneys’ fees, and the district
court ordered A.V.E.L.A. Defendants to pay $1,518,687.94.
Defendants appealed the judgment. A.V.E.L.A. and
Freeze additionally appealed the award of profits, and
A.V.E.L.A. Defendants also appealed the order to pay
attorneys’ fees. Plaintiffs appealed the order granting
summary judgment on the right of publicity claim, the order
granting judgment as a matter of law on their punitive
damages claim, the order awarding profits, and the order
awarding attorneys’ fees. All of these timely appeals were
consolidated.
We have jurisdiction under 28 U.S.C. § 1291.
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 11
DISCUSSION
I. The district court did not err in denying the renewed
motion for judgment as a matter of law on Plaintiffs’
false endorsement claim.
This case presents a question that is familiar in our
circuit: when does the use of a celebrity’s likeness or persona
in connection with a product constitute false endorsement that
is actionable under the Lanham Act? We conclude that the
evidence presented at trial was sufficient for a jury to find
Defendants violated the Lanham Act by using Marley’s
likeness. Our narrow holding relies on the familiar principles
that underlie celebrity false endorsement claims, and we
reject Defendants’ contention that the application of those
principles results in a federal right of publicity.
Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)
provides in relevant part:
Any person who, on or in connection with any
goods or services, or any container for goods,
uses in commerce any . . . name, symbol, or
device, or any combination thereof . . . which
. . . is likely to cause confusion, or to cause
mistake, or to deceive as to . . . the origin,
sponsorship, or approval of his or her goods,
services, or commercial activities by another
person . . . shall be liable in a civil action by
any person who believes that he or she is or is
likely to be damaged by such act.
On appeal, Defendants raise several potentially salient
defenses to challenge the judgment against them on the
12 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
§ 1125(a) claim. However, we will not undo the entirety of
the proceedings in the court below and reverse the jury’s
verdict when these defenses were not sufficiently asserted in
the district court to preserve them for appeal. See Components
Inc., 66 F.3d at 217. We express no opinion on the waived
defenses’ applicability to this case or any future case, and
address only the reviewable issues below.1
A. Hope Road has a property right under the
Lanham Act to Marley’s persona.
Defendants claim that the § 1125(a) claim fails as a
matter of law, because a celebrity’s “persona” is too
“amorphous” to constitute a “name, symbol, or device” under
§ 1125(a). This premise is incorrect. Our jurisprudence
recognizes a § 1125(a) claim for misuse of a celebrity’s
persona. “[A] celebrity whose endorsement of a product is
implied through the imitation of a distinctive attribute of the
celebrity’s identity, has standing to sue for false endorsement
1
Defendants waived the aesthetic functionality defense by raising it only
in their Answer and never developing the theory. They waived the
Copyright Act defense under Dastar Corp. v. Twentieth Century Fox Film,
Corp., 539 U.S. 23 (2003) by never addressing it in the district court. They
waived the First Amendment defense under Rogers v. Grimaldi, 875 F.2d
994 (2d Cir. 1989). On summary judgment, the Defendants argued the
alternate test (likelihood of confusion) to the exclusion of the Rogers test,
and they did not respond to Plaintiffs’ treatment of the Rogers test. We
specifically note that Curtis Publishing Company v. Butts, 388 U.S. 130
(1967) does not preclude waiver of the First Amendment defense in this
case. See id. at 145. Here, there was no intervening change in the law; this
court recognized the Rogers test well before the trial in the instant case
occurred. See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 902 (9th
Cir. 2002) (adopting the Rogers standard). Moreover, upon our review, the
record has not been sufficiently developed to rule on these issues. See
Peterson v. Highland Music, Inc., 140 F.3d 1313, 1319 (9th Cir. 1998).
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 13
under section 43(a) of the Lanham Act.” Waits v. Frito-Lay,
Inc., 978 F.2d 1093, 1110 (9th Cir. 1992), abrogated on other
grounds by Lexmark Int’l, Inc. v. Static Control Components,
Inc., 134 S. Ct. 1377, 1385, 1391 (2014); see also White,
971 F.2d at 1400 (analyzing the level of recognition of the
celebrity’s “persona” to determine whether a likelihood of
confusion exists under § 1125(a)); Wendt v. Host Int’l, Inc.,
125 F.3d 806, 809 (9th Cir. 1997) (analyzing § 1125(a)
claims actors who played characters in Cheers brought
against the creator of animatronic figures set in airport bars
modeled after the Cheers set).
B. There was sufficient evidence at trial to support
the jury’s finding that consumers would likely be
confused about whether Plaintiffs sponsored or
approved Defendants’ Marley products.2
1. Standard of review
We review de novo the denial of a renewed motion for
judgment as a matter of law. Escriba v. Foster Poultry
Farms, Inc., 743 F.3d 1236, 1242 (9th Cir. 2014). We must
sustain the verdict unless “the evidence, construed in the light
most favorable to the nonmoving party, permits only one
2
We only entertain A.V.E.L.A. Defendants’ and Freeze’s sufficiency of
the evidence challenges on appeal, because Jem failed to file a post-
verdict motion for judgment as a matter of law—an “absolute prerequisite
to any appeal based on insufficiency of the evidence.” Nitco Holding
Corp. v. Boujikian, 491 F.3d 1086, 1089 (9th Cir. 2007).
Contrary to Hope Road’s argument, A.V.E.L.A. Defendants and
Freeze argued insufficiency of the evidence in their post-verdict Rule
50(b) motion and thus preserved the issue for appeal. See Components
Inc., 66 F.3d at 217.
14 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
reasonable conclusion, and that conclusion is contrary to the
jury’s verdict.” Pavao v. Pagay, 307 F.3d 915, 918 (9th Cir.
2002). In determining whether the verdict is supported by
sufficient evidence, we do not weigh the evidence. Harper v.
City of L.A., 533 F.3d 1010, 1021 (9th Cir. 2008). Instead, we
“must . . . draw all reasonable inferences in the favor of the
non-mover, and disregard all evidence favorable to the
moving party that the jury is not required to believe.” Id.
2. Analysis
“The ‘likelihood of confusion’ inquiry generally considers
whether a reasonably prudent consumer in the marketplace is
likely to be confused” as to the sponsorship or approval of the
goods bearing the marks at issue in the case.3 Rearden LLC
v. Rearden Commerce, Inc., 683 F.3d 1190, 1209 (9th Cir.
2012). In celebrity cases, the court generally applies eight
factors to determine likelihood of confusion:
1. [T]he level of recognition that the
[celebrity] has among the segment of the
society for whom the defendant’s product is
intended;
2. [T]he relatedness of the fame or success of
the [celebrity] to the defendant’s product;
3. [T]he similarity of the likeness used by the
defendant to the actual [celebrity];
4. [E]vidence of actual confusion;
3
At oral argument, Plaintiffs disclaimed any theory that consumers
would likely be confused as to the origin of Defendants’ goods.
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 15
5. [M]arketing channels used;
6. [L]ikely degree of purchaser care;
7. [D]efendant’s intent on selecting the
[celebrity]; and
8. [L]ikelihood of expansion of the product
lines.
Downing v. Abercrombie & Fitch, 265 F.3d 994, 1007–08
(9th Cir. 2001). These factors “are not necessarily of equal
importance, nor do they necessarily apply to every case.” Id.
at 1008. “The list of factors is not a score-card—whether a
party ‘wins’ a majority of the factors is not the point. Nor
should ‘[t]he factors ... be rigidly weighed; we do not count
beans.’” Thane Int’l, Inc. v. Trek Bicycle Corp., 305 F.3d 894,
901 (9th Cir. 2002), superseded by statute on other grounds,
Trademark Dilution Revision Act of 2006, Pub. L. No. 108-
312, 120 Stat. 1730 (codified at 15 U.S.C. § 1125). Where the
plaintiff is not the celebrity himself, an additional factor
becomes relevant: the strength of association between the
mark and the plaintiff. Cairns v. Franklin Mint Co., 107 F.
Supp. 2d 1212, 1217 (C.D. Cal. 2000) (“Cairns II”).
Examining the record as a whole in light of these factors,
we cannot say that the evidence compels a finding contrary to
the jury’s verdict. See Pavao, 307 F.3d at 918.
First, Plaintiffs presented undisputed testimony to
establish a high level of recognition of Marley’s image
among Defendants’ target market. As to the second factor,
Plaintiffs also introduced testimony that Marley’s image has
long been associated with apparel. Marley used to sell his
16 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
own merchandise, and his successors-in-interest have
continued to do so. No one disputes the third factor:
A.V.E.L.A. used actual photos of Marley on its merchandise.
The fourth factor, evidence of actual confusion, draws the
most fire from A.V.E.L.A. Defendants and Freeze in the form
of objections to the consumer confusion survey. The survey
collected data from 509 face-to-face interviews conducted by
professional interviewers with individuals in shopping malls.
The survey respondents were divided into a test group and a
control group. Interviewers showed the test group an actual
A.V.E.L.A. T-shirt bearing Bob Marley’s image and showed
the control group a T-shirt bearing the image of an
unrenowned African-American man with dreadlocks. Several
questions were put to both groups, including: “Who do you
think gave their permission or approval for this particular T-
shirt to be made or put out?” Thirty-seven percent of the test
group answered that “Bob Marley/the person on the shirt or
his heirs, estate, or agents” gave their permission or approval
for the T-shirt to be made or put out. Twenty percent of the
control group answered the same. Many survey respondents
subsequently opined that the law required permission from
the person whose image appeared on the shirt. We need not
entangle ourselves in lay legal opinion. Rather, we look
solely at the former set of responses, which indicates actual
confusion. The latter responses only answer why some of
those surveyed were confused.
A.V.E.L.A. Defendants and Freeze argue that the “survey
questions were indefinite with respect to endorsement by
Marley. . . . A viable false endorsement claim should have an
identifiable person as the putative endorser.” A.V.E.L.A.
offers no precedent showing that it must be a single entity
that is falsely attributed as the party that approved the product
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 17
or that the survey taker must be able to identify the party.
Thus, identifying Marley or whoever holds the rights to his
persona in the alternative does not render the survey data
useless or irrelevant. See Fleischmann Distilling Corp. v.
Maier Brewing Co., 314 F.2d 149, 155 (9th Cir. 1963).
Rather, the imprecision of the data merely decreases its
probative value. Drawing all reasonable inferences in
Plaintiffs’ favor, Harper, 533 F.3d at 1021, the survey shows
some actual confusion. See Thane Int’l, Inc., 305 F.3d at
902–03. Accordingly, the jury could rely on the data (along
with evidence of the other factors) to find likelihood of
confusion. Evidence of actual confusion is relevant to
likelihood of confusion but not required in a false
endorsement claim. See Gracie, 217 F.3d at 1068 (holding
that a 15 U.S.C. § 1114 violation does not require evidence of
actual confusion, because only “likelihood of confusion” is
mentioned in the statute).4
Regarding the fifth factor, marketing channels used, Hope
Road introduced testimony that A.V.E.L.A.’s licensees sold
A.V.E.L.A.-licensed Marley products in some of the same
retail stores as Plaintiffs and Plaintiffs’ licensees—Wet Seal,
J.C. Penney, Target, and Walmart.
4
A.V.E.L.A. Defendants and Freeze also argue that the district court
abused its discretion by failing to reopen discovery so that they could
respond to the survey evidence. However, they “forfeit[ed their] right to
appellate review” of the magistrate judge’s nondispositive order denying
their motion to reopen, for failure to file any objections with the district
court. Simpson v. Lear Astronics Corp., 77 F.3d 1170, 1174 (9th Cir.
1996); Fed. R. Civ. Proc. 72(a); Advisory Committee Notes to Fed. R.
Civ. Proc. 72, 97 F.R.D. 165, 228 (Rule 72(a) applies to oral orders read
into the record.).
18 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
Sixth, the likely low degree of purchaser care was also
supported by testimony at trial. Liza Acuna, A.V.E.L.A.’s
licensing agent, testified that she did not believe A.V.E.L.A.’s
licensed t-shirts priced $7.50 and $12.99 were expensive.
Kimberly Cauley, vice president of licensing at Freeze,
testified that Freeze’s Marley apparel priced $10.00 to $15.00
was “generally not expensive.” Jacob Goldszer of JGR Copa,
A.V.E.L.A.’s beach towel licensee, testified that beach towels
are “impulse item[s].” Heather Vogel, buyer for Target,
testified that graphic t-shirts priced $9.99 to $14.99 were “a
good value” and “an impulse purchase.” A.V.E.L.A.
Defendants and Freeze do not dispute that low prices imply
correspondingly low consumer care when purchasing
Defendants’ Marley products. See Cairns II, 107 F. Supp. 2d
at 1218.
With respect to the seventh factor, the salient inquiry is
not whether A.V.E.L.A. Defendants and Freeze knew their
actions were unlawful, but whether they intended to
“confus[e] consumers concerning the endorsement of [their
products].” White, 971 F.2d at 1400 (internal quotation mark
omitted). To that end, Plaintiffs showed the jury photographs
comparing an A.V.E.L.A.-licensed t-shirt to a t-shirt Zion had
been selling for ten years. Both t-shirts featured a single, soft-
focus image of Marley’s face with his mouth open slightly, as
if speaking. Both t-shirts are black, and overlay Rastifarian
green, yellow, and red in dithered stripes across Marley’s
face. Viewed in the light most favorable to Plaintiffs, one
would infer that A.V.E.L.A. Defendants sought to associate
their product with Plaintiffs by intentionally creating similar
merchandise.5
5
The parties do not address the eighth Downing factor, likelihood of
expansion of the product lines.
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 19
Because the celebrity himself, Marley, is not the plaintiff,
we must apply the additional factor–the strength of the
association between Marley and the Plaintiffs. That carries
greater weight where, as here, the evidence introduced to
support the Downing factors primarily demonstrates that the
celebrity himself sponsored or approved the defendants’
products. Under these circumstances, the additional factor
and the seventh factor wax in significance, because they link
likelihood of confusion to Plaintiffs. See Cairns II, 107 F.
Supp. 2d at 1217.
In Cairns II, the court held that Princess Diana’s image
was only weakly associated with the plaintiffs, largely
because Princess Diana’s image had not served a source-
identifying (trademark) function during her life or after her
death. See id. “[P]ervasive unauthorized use of a celebrity’s
persona will tend to dull the popular perception that use of
that persona signifies an endorsement at all, weakening the
initial automatic association between the celebrity and his or
her estate.” Id. (alteration in original). The Cairns defendants
had been selling products bearing Princess Diana’s image
since before her death, and other parties had been doing the
same. Id. Critical to the analysis, Princess Diana “knew of the
vast commercial uses of her image” and “did nothing to
prevent others from using her image while she was alive.” Id.
Here, unlike Princess Diana, Marley sold merchandise
bearing his image during his lifetime, and his successors-in-
interest have continued to do so, implying that his image
served (and continues to serve) a source-identifying function.
There has been significant unauthorized use of Marley’s
persona since his death. However, that use was not
“uncontested” as in Princess Diana’s situation. Plaintiffs
introduced uncontroverted evidence that they and their
20 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
predecessors have sent more than 400 cease and desist letters
and filed more than 20 lawsuits. Thus, the jury was free to
infer that the source-identifying function of Marley’s persona
had not weakened to the extent that there was no likelihood
of confusion.
Also, Plaintiffs introduced evidence that Valencia
approached Rohan Marley, one of Bob Marley’s sons and an
owner of Hope Road, seeking rights to create Bob Marley
merchandise. These actions imply Hope Road was known to
be associated with Bob Marley’s image. Additionally, Scott
Holroyd, general manager at Balzout (a former A.V.E.L.A.
licensee), testified in a video deposition played at trial that it
was “common understanding in the licensing industry” that
Hope Road owned the rights to Marley. Kimberly Cauley,
Freeze’s vice president of licensing, also stated that she knew
of Zion’s license to Marley’s persona based on “market
knowledge.”
C. The false endorsement claim does not fail for lack
of an endorsement.
Defendants argue that the 15 U.S.C. § 1125(a) claim fails,
because Marley’s image needed to have been used in
connection with a separate product or service to constitute an
“endorsement.” As Plaintiffs point out, the statute does not
mention “endorsement.” Rather, we commonly call § 1125(a)
claims “false endorsement claims” because they often involve
likelihood of confusion as to a plaintiff’s “sponsorship or
approval” of the defendant’s product. See § 1125(a)(1)(A).
Rather than the lack of the word “endorsement,” it is the
statutory phrase referring to a defendant’s use of the mark “on
. . . any goods,” § 1125(a)(1) (emphasis added), that requires
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 21
us to reject Defendants’ argument. The “goods” in the phrase
“on any goods” refers to the goods consumers may
mistakenly think are approved by the owner of the mark. See
id. Thus, the plain text of the statute establishes that a viable
false endorsement claim does not require that the mark be
used in connection with separate goods to promote the
purchase of those separate goods—but may be used directly
on the defendant’s goods. See id.; Wendt, 125 F.3d at 812–14
(denying defendants’ summary judgment motion on a
§ 1125(a) claim arising from the placement of animatronic
robots resembling Cheers actors in defendants’ bars to
purportedly imply the actors’ endorsement of defendants’
bars).
Here, the fact that Marley’s image appears directly on
Defendants’ merchandise does not preclude relief under
§ 1125(a). Instead, as in any § 1125(a) claim, the particular
use and placement of the mark is probative of likelihood of
confusion. As discussed above, the jury found Defendants’
use was likely to confuse, and we may not disturb that
finding.
D. The judgment does not overextend the Lanham
Act by creating a federal right of publicity.
A.V.E.L.A. Defendants and Freeze argue that allowing a
plaintiff to vindicate a 15 U.S.C. § 1125(a) claim predicated
on the use of a deceased celebrity’s persona essentially
creates a federal right of publicity.
Assuming Congress did not intend the Lanham Act to
protect such rights, the § 1125(a) claim in this case is not
tantamount to a federal right of publicity. State publicity right
claims protect a plaintiff when the defendant uses the
22 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
plaintiff’s identity for commercial advantage, without
permission. See e.g., Abdul-Jabbar v. Gen. Motors Corp.,
85 F.3d 407, 414 (9th Cir. 1996) (analyzing California law).
However, § 1125(a) claims require an additional element—
that the use be likely to confuse as to the sponsorship or
approval of a defendant’s goods. See 15 U.S.C. § 1125(a). We
have previously distinguished between publicity right claims
and § 1125(a) claims on the basis of this additional element.
See Abdul-Jabbar, 85 F.3d at 414; c.f. Cairns v. Franklin
Mint Co., 292 F.3d 1139, 1149 (9th Cir. 2002) (“Cairns III”)
(“Under the law of false endorsement, likelihood of customer
confusion is the determinative issue.”). Moreover, the Second
Circuit agrees that this distinction is significant. Rogers, 875
F.2d at 1004 (“Because the right of publicity, unlike the
Lanham Act, has no likelihood of confusion requirement, it
is potentially more expansive than the Lanham Act.”).
A.V.E.L.A. Defendants and Freeze assert that “the
Lanham Act false association claim is essentially a federal
right of publicity claim in disguise,” because consumers
would always “associate a deceased celebrity’s image with
that of his or her estate.” But a plaintiff must show more than
mere association to succeed in a false endorsement claim. See
Downing, 265 F.3d at 1007–08. As discussed above, we
cannot disturb the jury’s finding regarding likelihood of
confusion, but the outcome of this case is in part a function of
defenses expressly waived by Defendants. We are not in the
position to assess the Defendants’ litigation strategy.
Contrary to their assertion, our decision to affirm the jury’s
verdict does not create a federal right of publicity.
To the extent A.V.E.L.A. Defendants and Freeze argue
that Congress generally did not intend § 1125(a) to cover
claims brought by celebrities’ estates or successors-in-interest
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 23
based on celebrity persona, the legislative history does not
demonstrate limitation of such claims. Further, this court
already treats a celebrity’s persona as identifiable intellectual
property protectable under the Lanham Act. See White,
971 F.2d at 1400. This property exists whether the holder is
the celebrity or a successor in interest. Thus, the fact of the
celebrity’s death does not preclude a § 1125(a) claim. Rather,
the “determinative issue” (in any § 1125(a) claim) is
likelihood of confusion. See Cairns III, 292 F.3d at 1149.
II. The district court did not err in awarding Plaintiffs
$348,543.00 (A.V.E.L.A.’s, Jem’s, and Freeze’s total
net profits).
15 U.S.C. § 1117(a) provides:
When a violation of any right of the registrant
of a mark registered in the Patent and
Trademark Office, a violation under section
1125(a) or (d) of this title, or a willful
violation under section 1125(c) of this title,
shall have been established in any civil action
arising under this chapter, the plaintiff shall
be entitled, subject to the provisions of
sections 1111 and 1114 of this title, and
subject to the principles of equity, to recover
(1) defendant's profits, (2) any damages
sustained by the plaintiff, and (3) the costs of
the action. The court shall assess such profits
and damages or cause the same to be assessed
under its direction. In assessing profits the
plaintiff shall be required to prove defendant’s
sales only; defendant must prove all elements
of cost or deduction claimed. . . . If the court
24 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
shall find that the amount of the recovery
based on profits is either inadequate or
excessive the court may in its discretion enter
judgment for such sum as the court shall find
just, according to the circumstances of the
case. Such sum . . . shall constitute
compensation and not a penalty.
An award of profits “is not automatic” upon a finding of
infringement. Lindy Pen Co. v. Bic Pen Corp., 982 F.2d 1400,
1405 (9th Cir. 1993), superseded by statute on other grounds,
Trademark Amendments Act of 1999, Pub. L. No. 106-43,
113 Stat. 218. Rather, profits “must be granted in light of
equitable considerations.” Id. In seeking to achieve equity
between the parties, the court must fashion a remedy wherein
the defendant may “not retain the fruits, if any, of
unauthorized trademark use or continue that use [and the]
plaintiff is not . . . [given] a windfall.” Bandag, Inc. v. Al
Bolser’s Tire Stores, Inc., 750 F.2d 903, 918 (Fed. Cir. 1984).
Awarding profits “is proper only where the defendant is
‘attempting to gain the value of an established name of
another.’” Lindy Pen Co., 982 F.2d at 1406 (quoting Maier
Brewing Co. v. Fleischmann Distilling Co., 390 F.2d 117, 123
(9th Cir. 1968)). “Willful infringement carries a connotation
of deliberate intent to deceive.” Id. Generally, “deliberate,
false, misleading, or fraudulent . . . conduct . . . meets this
standard.” Id. (internal quotation marks omitted).
“Willfulness . . . ‘require[s] a connection between a
defendant’s awareness of its competitors and its actions at
those competitors’ expense.’” Id. (quoting ALPO Petfoods,
Inc. v. Ralston Purina Co., 913 F.2d 958, 966 (D.C. Cir.
1990)).
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 25
A. There was sufficient evidence to support the
finding of willfulness as to Freeze.
Freeze claims that there was insufficient evidence to
support the jury’s finding that Freeze violated 15 U.S.C.
§ 1125(a) willfully, requiring reversal of the district court’s
order disgorging Freeze’s profits. Freeze is incorrect.
At trial, Kim Cauley, vice president of licensing for
Freeze, testified as follows: Before Freeze began selling
Marley merchandise, Cauley received a phone call from
Doreen Crujeiras, a licensing agent for Hope Road, who
notified her that “Hope Road or the Marley family owned the
rights in Bob Marley.” Crujeiras said that A.V.E.L.A. did not
have the right to use Marley’s name and likeness. Cauley also
knew that Zion had a license to sell Bob Marley merchandise,
and this awareness predated Freeze’s first sales of Marley
merchandise. Thus, viewing the evidence in the light most
favorable to Plaintiffs, Cauley’s testimony demonstrates
Freeze’s “awareness of its competitors and its actions at those
competitors’ expense.” Lindy Pen Co., 982 F.2d at 1406
(internal quotation marks omitted); see also E. & J. Gallo
Winery v. Consorzio del Gallo Nero, 782 F. Supp. 472, 475
(N.D. Cal. 1992) (“Use of an infringing mark, in the face of
warnings about potential infringement, is strong evidence of
willful infringement.”).
B. There is no Seventh Amendment right to have a
jury calculate profits.
A jury found Defendants had violated § 1125(a). Over
Plaintiffs’ objection, the trial judge calculated A.V.E.L.A.’s,
Jem’s, and Freeze’s net profits from Marley merchandise
based on the evidence the parties submitted. Plaintiffs claim
26 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
that this procedure violated their Seventh Amendment right
to a jury trial, because the Seventh Amendment necessitates
a jury calculation of profits to be disgorged.6 We review the
question of entitlement to a jury trial de novo. S.E.C. v. Rind,
991 F.2d 1486, 1493 (9th Cir. 1993).
The Seventh Amendment guarantees a litigant’s right to
a jury trial on “suits at common law.” U.S. Const. amend.
VII. “Although the thrust of the Amendment was to preserve
the right to jury trial as it existed in 1791, it has long been
settled that the right extends beyond the common-law forms
of action recognized at that time.” Curtis v. Loether, 415 U.S.
189, 193 (1974). “Suits at common law” include statutory
claims that are legal (as opposed to equitable). Feltner, 523
U.S. at 348. To determine whether a particular claim invokes
this right, we (1) “must ‘compare the statutory action to the
18th-century actions brought in the courts of England prior to
merger of the courts of law and equity,” and (2) “must
‘examine the remedy sought and determine whether it is legal
or equitable in nature.’” Rind, 991 F.2d at 1493 (quoting Tull
v. United States, 481 U.S. 412, 417–18 (1987)). “The second
inquiry is more important.” Id.
6
Plaintiffs do not argue that the trial judge violated § 1117 by
calculating the profits himself. Indeed, § 1117(a) vests “the court”
(meaning the judge) with the power to assess profits. See Feltner v.
Columbia Pictures Television, Inc., 523 U.S. 340, 346 (1998) (The word
“court” means “judge” when used “in contexts generally thought to confer
authority on a judge, rather than a jury,” e.g., granting injunctions.);
15 U.S.C. § 1114(2)(D)(iv) (“The court may also grant injunctive relief
. . . .”); 15 U.S.C. § 1116(d) (authorizing “the court” to grant an order
“providing for the seizure of goods and counterfeit marks” and requiring
such order to contain findings of fact and conclusions of law).
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 27
If the overall claim “belongs in the law category, we then
ask whether the particular trial decision must fall to the jury
in order to preserve the substance of the common-law right as
it existed in 1791” (when the Seventh Amendment was
ratified). City of Monterey v. Del Monte Dunes at Monterey,
Ltd., 526 U.S. 687, 708 (1999). We consider whether, in
1791, juries typically decided the issue in question (or an
analogous one). Id. at 718. If “history does not provide a clear
answer, we look to precedent and functional considerations.”
Id.
In applying this framework, we keep in mind that the
narrow Seventh Amendment right “preserve[s] the basic
institution of jury trial in only its most fundamental
elements.” Tull, 481 U.S. at 426 (quoting Galloway v. United
States, 319 U.S. 372, 392 (1943)). Accordingly, “[o]nly those
incidents which are regarded as fundamental, as inherent in
and of the essence of the system of trial by jury, are placed
beyond the reach of the legislature.” Id.
A claim for disgorgement of profits under § 1117(a) is
equitable, not legal. Litigants filed trademark-like actions in
“deceit” prior to 1791, but these suits were rare. See Mark A.
Thurman, Ending the Seventh Amendment Confusion: A
Critical Analysis of the Right to a Jury Trial in Trademark
Cases, 11 Tex. Intell. Prop. L.J. 1, 60–63 (2002) (only three
known cases prior to 1791—two in courts of law, one in court
of equity). While this historical record illuminates little, the
current law recognizes that actions for disgorgement of
improper profits are equitable in nature. See Chauffeurs,
Teamsters & Helpers, Local No. 391 v. Terry, 494 U.S. 558,
570 (1990); Tull, 481 U.S. at 424; City of Monterey, 526 U.S.
at 710 (equitable monetary remedies focus on “what . . . the
[defendant] gained”); Reebok Int’l, Ltd., 970 F.2d at 559 (“An
28 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
accounting of profits under § 1117(a) is not synonymous with
an award of monetary damages: [a]n accounting for profits
. . . is an equitable remedy subject to the principles of equity.”
(internal quotation marks omitted)).
Contrary to Plaintiffs’ argument, Dairy Queen, Inc. v.
Wood, 369 U.S. 469 (1962) does not broadly hold that a
Lanham Act claim for disgorgement of profits is a legal
claim. Rather, the Supreme Court characterizes the Dairy
Queen claim as a legal claim for damages (not disgorgement
of profits). See Feltner, 523 U.S. at 346.
Moreover, even if the claim were legal, the specific issue
of profit determination cannot be said to be traditionally tried
to a jury. See City of Monterey, 526 U.S. at 718. Again, the
slim history of pre-1791, trademark-like cases certainly does
not support that notion. Turning to current law, § 1117’s
language allows judges to determine the amount of profits,
which judges regularly do. Consequently, the determination
of profits under § 1117 is not “fundamental, . . . inherent in
and of the essence of the system of trial by jury.” Tull,
481 U.S. at 426.
C. The district court did not err in calculating profits.
“[A]ny decision concerning the awarding of an
accounting of profits remedy should remain within the
discretion of the trial court.” Playboy Enters., Inc. v. Baccarat
Clothing Co., 692 F.2d 1272, 1275 (9th Cir. 1982).
Accordingly, we will not disturb the district court’s decision
“unless there is a ‘definite and firm conviction that the court
below committed a clear error of judgement in the conclusion
it reached upon a weighing of the relevant factors.’” Id.
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 29
(quoting Chism v. Nat’l Heritage Life Ins. Co., 637 F.2d
1328, 1331 (9th Cir. 1981).
The trademark holder has the burden to prove the
defendant infringer’s gross revenue from the infringement.
Lindy Pen Co., 982 F.2d at 1408. Then the burden shifts to
the defendant infringer to prove expenses that should be
deducted from the gross revenue to arrive at the defendant
infringer’s lost profits. See Experience Hendrix v.
Hendrixlicensing.com, Nos. 11-35858, 11-35872, slip op. at
27 (9th Cir. Aug. 8, 2014).
1. A.V.E.L.A.’s deductions
A.V.E.L.A. claims that the district court abused its
discretion by not allowing deductions reflecting (1) a 40%
royalty fee paid to V. International, which A.V.E.L.A.
claimed equaled $222,771.00; and (2) marketing, travel,
overhead, and trade show expenses connected with promoting
Marley merchandise. Not so. Acting within its discretion, the
district court held that A.V.E.L.A. failed to meet its burden to
prove these deductions. The royalty fee arrangement was not
an arms’ length transaction. The sole shareholder and
employee of V. International was Valencia’s girlfriend, Liza
Acuna. Moreover, the documentary evidence leaves
uncertainty as to the amount of royalty fees paid. Regarding
the other expenses, Plaintiffs argue A.V.E.L.A. did not
produce sufficient documentation to prove the specific
amounts. A.V.E.L.A. does not attempt to rebut any of these
arguments. Given these doubts, the district court was within
its discretion to deny these deductions.
30 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
2. Jem’s deductions
First, Plaintiffs claim the district court erred by reopening
discovery to allow Jem to produce proof of its deductible
costs after trial, when Jem had only produced an unsupported
summary document of its costs prior to trial. While Plaintiffs
might consider this unfair, the district court’s decision was
within its broad discretion. Plaintiffs cite no legal support
showing otherwise.
Second, Plaintiffs claim that Jem introduced insufficient
supporting documentation to sustain its burden to prove that
it paid salespersons $130,271.47. The district court did not
abuse its discretion by relying on the report by Jem’s
controller, Linda Lyth. Lyth testified in her declaration as an
expert, and in general, experts need not disclose all
underlying documents on which they rely. See Fed. R. Evid.
705.7 For the same reason, we reject Plaintiffs’ objection to
Jem’s Gross Margin Invoice Summary Register.
Third, Plaintiffs challenge the $72,989.64 deduction for
discounts given to retailers. The district court considered
Jem’s agreements with retailers showing their respective
discounts. The dollar value of retailer discounts was reached
by multiplying these rates by the total sales. Contrary to
Plaintiffs’ argument, Jem did not need to submit proof that
the retailers used their discounts, when there was no evidence
that they did not do so. It would be reasonable to infer that the
retailers took advantage of wholesale markdowns when they
7
While Plaintiffs claim Lyth “admitted she had no personal knowledge
of [the commission] payments,” the record evidence they cite contains no
such admission.
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 31
contracted for them, a matter within the district court’s
discretion. See Playboy Enters., Inc., 692 F.2d at 1275.
Finally, Plaintiffs argue that Jem did not prove that the
$0.80-per-garment processing cost Jem paid its affiliate (Jem
Equipment) was competitive. However, the law does not
require that an infringer prove its expenses were competitive
in addition to proving it actually incurred them.
3. Increased profits
Plaintiffs also argue that the district court abused its
discretion by declining to award increased profits. The district
court has discretion to increase the profit award above the net
profits proven “[i]f the court shall find . . . the amount of the
recovery . . . inadequate.” 15 U.S.C. § 1117(a). It must apply
“principles of equity,” id., and ensure that the defendant “may
not retain the fruits, if any, of unauthorized trademark use or
continue that use [and the] plaintiff is not . . . [given] a
windfall,” Bandag, Inc., 750 F.2d at 918. “The Lanham Act
allows an award of profits only to the extent the award
‘shall constitute compensation and not a penalty.’”
TrafficSchool.com, Inc. v. Edriver Inc., 653 F.3d 820, 831
(9th Cir. 2011) (quoting 15 U.S.C. § 1117(a)).
The district court ought to tread lightly when deciding
whether to award increased profits, because granting an
increase could easily transfigure an otherwise-acceptable
compensatory award into an impermissible punitive measure.
See Skydive Ariz., Inc. v. Quattrocchi, 673 F.3d 1105,
1114–15 (9th Cir. 2012). Generally, actual, proven profits
will adequately compensate the plaintiff. Because the profit
disgorgement remedy is measured by the defendant’s gain,
the district court should award actual, proven profits unless
32 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
the defendant infringer gained more from the infringement
than the defendant’s profits reflect.
Plaintiffs have not presented evidence or argument to
inspire a “definite and firm conviction” that the district court
“committed a clear error of judgement,” Playboy Enters.,
Inc., 692 F.2d at 1275, in declining to award increased
profits. While Plaintiffs allude to Defendants accruing
goodwill from their infringement, they cite no supporting
evidence. Similarly, Plaintiffs only cursorily explain how
putative sales abroad might fall within the Lanham Act’s
coverage under Ocean Garden, Inc. v. Marktrade Co.,
953 F.2d 500 (9th Cir. 1991). We will not manufacture
arguments on their behalf or pick through the record without
further direction. See Greenwood v. FAA, 28 F.3d 971, 977
(9th Cir. 1994). Nor do we find compelling the evidence
Plaintiffs cited to show that Defendants concealed some of
their profits.
Given the district court’s “wide scope of discretion . . . in
. . . fashioning . . . a remedy,” Faberge, Inc. v. Saxony Prods.,
Inc., 605 F.2d 426, 429 (9th Cir. 1979) (internal quotation
marks omitted), it did not err by denying Plaintiffs an
increased award of profits.
III. The district court did not err in ordering
A.V.E.L.A. Defendants to pay attorneys’ fees.
“The court in exceptional cases may award reasonable
attorney fees to the prevailing party.” 15 U.S.C. § 1117(a).
We review an attorneys’ fee award for abuse of discretion,
except that “the district court’s legal determination that an
action is ‘exceptional’ under the Lanham Act” we review de
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 33
novo. Secalt S.A. v. Wuxi Shenxi Constr. Mach. Co., 668 F.3d
677, 687 (9th Cir. 2012).
A. Prevailing party
The district court determined that Plaintiffs were the
prevailing party. A party is a prevailing party for purposes of
an attorneys’ fee award if it “achieved a material alteration in
the legal relationship of the parties that is judicially
sanctioned.” Klamath Siskiyou Wildlands Ctr., 589 F.3d at
1030 (internal quotation marks omitted).8 “The material
alteration in the legal relationship of the parties must be relief
that the would-be prevailing party sought.” Id. A party need
not succeed in all of its claims to be the prevailing party. San
Diego Police Officers’ Ass’n v. San Diego City Emps.’ Ret.
Sys., 568 F.3d 725, 741 (9th Cir. 2009). Because Plaintiffs
obtained an injunction against all Defendants and
disgorgement of profits from A.V.E.L.A., Jem, and Freeze,
Plaintiffs obtained “a material alteration in the legal
relationship of the parties that is judicially sanctioned.” See
Klamath Siskiyou Wildlands Ctr., 589 F.3d at 1030.9 Thus,
the district court did not abuse its discretion in finding
Plaintiffs were the prevailing party.
8
The term “prevailing party” is interpreted consistently throughout the
U.S. Code. Klamath Siskiyou Wildlands Ctr., 589 F.3d at 1030.
9
Also, the record does not support A.V.E.L.A. Defendants’ surmise that
the district court relied on a media headline stating Plaintiffs were
prevailing parties in making its determination.
34 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
B. Exceptional case
The district court also held that the instant action was an
exceptional case within the meaning of § 1117(a) as to all
Defendants. A case is considered exceptional “when the
infringement is malicious, fraudulent, deliberate, or willful.”
Gracie, 217 F.3d at 1068 (internal quotation marks omitted).
Egregious conduct is not required. TrafficSchool.com, Inc.,
653 F.3d at 833. Nor is bad faith. See Earthquake Sound
Corp. v. Bumper Indus., 352 F.3d 1210, 1218 (9th Cir. 2003).
We consider the relief obtained, see TrafficSchool.com, Inc.,
653 F.3d at 832, and whether the relevant area of law was
unclear when the defendant’s conduct occurred, Tamko
Roofing Prods., Inc. v. Ideal Roofing Co., 282 F.3d 23, 32–33
(1st Cir. 2002).
The district court properly considered the relevant
evidence and held that Defendants had acted willfully. See id.
at 31. A.V.E.L.A. Defendants argue that the uncertainty of
the law makes A.V.E.L.A.’s infringement not willful. In this
case, the uncertainty of the law weighs in A.V.E.L.A.
Defendants’ favor, but that consideration is only one aspect
of the willfulness inquiry. There was significant evidence that
A.V.E.L.A. Defendants were aware their conduct conflicted
with Plaintiffs’ rights. Rohan Marley testified that Valencia
(president and CEO of both A.V.E.L.A. and X One X)
approached him seeking a license to sell Marley merchandise,
which neither Rohan nor Hope Road granted. Roberto
Rabanne, a photographer who took pictures of Bob Marley,
testified that Valencia had convinced him to write a false
email to help Valencia negotiate with the Marley family for
a license. The email falsely stated that Rabanne had used
photographs of Marley on merchandise during Marley’s
lifetime. Rabanne also testified that he refused Valencia’s
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 35
request to backdate a 2006 photograph licensing agreement
between them to 2003 or 2004. According to Rabanne,
Valencia claimed that backdating the agreement would help
him in “negotiations.” Valencia also asked Rabanne to delete
emails from him and files on his hard drive and said he would
flood the market with Marley merchandise so that Plaintiffs
could not use the photographs of Marley anymore. Liza
Acuna, A.V.E.L.A.’s licensing agent and Valencia’s
girlfriend, testified that she had known since 2005 that Zion
had the license for Marley. Thus, even considering the
uncertainty of the law, this conduct exhibits a subjective
belief that A.V.E.L.A. Defendants’ conduct infringed
Plaintiffs’ intellectual property rights.
A.V.E.L.A. Defendants also assert that the district court
erred in finding the case “exceptional,” because (1) Plaintiffs
achieved only limited success, and (2) Plaintiffs’ other
awards make A.V.E.L.A.’s infringement unprofitable. We
reject these contentions. While it is true that Plaintiffs only
prevailed on two of their five claims, they successfully
enjoined Defendants from any future merchandising of
Marley’s image and disgorged profits. The five claims were
merely different means to that end.
Regarding the next issue, whether A.V.E.L.A.’s conduct
was rendered unprofitable is inapposite. The attorneys’ fee
award served the separate purpose of encouraging the
enforcement of trademark rights by more fully compensating
Plaintiffs. See id. at 34. Thus, we affirm the district court’s
award of attorneys’ fees against A.V.E.L.A. Defendants.
36 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
C. Declining to award attorneys’ fees as to Jem and
Freeze
Plaintiffs claim that the district court abused its discretion
by determining the case “exceptional . . . as to each
Defendant” but then failing to assess attorneys’ fees against
Jem and Freeze. However, the plain language of the statute
allows the court to choose whether to award fees, even after
finding the case exceptional. See 15 U.S.C. § 1117(a) (“The
court in exceptional cases may award . . . fees .”). The fact
that “in exceptional cases” precedes “may” means that the
case must be exceptional for attorneys’s fees to be awarded,
but in an exceptional case, the district court “may” (or may
not) award fees.
Plaintiffs also argue that the district court’s decision that
the evidence of willfulness was sufficient to support the
jury’s finding and the court’s statement that the evidence of
Jem’s willfulness was weak were in conflict. Plaintiffs are
wrong, because the sufficiency of the evidence standard is
lower than the standard for showing a case is exceptional. See
Harper, 533 F.3d at 1021. Thus, the court consistently
concluded that evidence of Jem’s willfulness was sufficient,
yet too weak to merit an award of attorneys’ fees as to Jem
and Freeze.
Plaintiffs seemingly claim that the district court’s decision
to not grant fees as to Jem and Freeze was illogical or
inconsistent with its decision to grant fees as to A.V.E.L.A.
Defendants. Plaintiffs claim that some of the bases on which
the district court relied to deny fees as to Jem and Freeze also
existed with respect to A.V.E.L.A. Defendants (prevailing on
“one Lanham Act claim,” other monetary awards serve
different purposes than an award of attorneys’ fees).
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 37
However, the mere fact that the district court, after weighting
the various considerations, awarded fees as to the A.V.E.L.A.
Defendants does not demonstrate that the district court was
required to award fees as to the other Defendants. On balance,
the weightier evidence of A.V.E.L.A. Defendants’ willfulness
justified an award of fees. Moreover, the district court pointed
out that the evidence that Jem and Freeze caused actual
damages was comparatively weak.
Plaintiffs’ argument that the district court should not have
relied on the award of profits to deny fees as to Jem and
Freeze has some merit. A monetary award should support the
decision to assess fees. See TrafficSchool.com, Inc., 653 F.3d
at 832. However, the district court discussed the weight of the
evidence of willfulness and actual damages at length and only
mentioned profits briefly, apparently considering the
underlying actions of the parties to be the main reason to
deny fees as to Jem and Freeze. Consequently, the district
court did not abuse its discretion in denying attorneys’ fees as
to Jem and Freeze.
IV. The district court did not err in granting summary
judgment for Defendants on Plaintiffs’ Nevada
right of publicity claim.
The district court granted summary judgment in
Defendants’ favor on the basis that Plaintiffs knew of a third-
party’s unauthorized commercial use of Marley’s publicity
right more than six months before Plaintiffs registered this
right with the Nevada Secretary of State. We review the
district court’s interpretation of a state statute de novo. Wetzel
v. Lou Ehlers Cadillac Group Long Term Disability Ins.
Program, 222 F.3d 643, 646 (9th Cir. 2000).
38 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
Nevada law establishes “a right of publicity in the name,
voice, signature, photograph or likeness of every person,”
which lasts 50 years after the person’s death. Nev. Rev. Stat.
§ 597.790.1. “Any commercial use by another of the name,
voice, signature, photograph or likeness of a person requires
the written consent of that person or his or her successor in
interest,” id. § 597.790.2, unless the person whose right of
publicity is at issue dies and has no successors in interest. Id.
§ 597.800.2.10 The right of publicity “is freely transferable.”
Id. § 597.800.1.
“A successor in interest . . . of a deceased person may file
in the Office of the Secretary of State . . . a verified
application for registration of his or her claim.” Id.
§ 597.800.3 (emphasis added). “A successor in interest . . . of
a deceased person may not assert any right against any
unauthorized commercial use of the deceased person’s name,
voice, signature, photograph or likeness that begins before the
filing of an application to register his or her claim.” Id.
§ 597.800.4.
A person, firm or corporation seeking to use
the name, voice, signature, photograph or
likeness of a deceased person for commercial
purposes must first make a reasonable effort,
in good faith, to discover the identity of any
person who qualifies as a successor in interest
to the deceased person. A person claiming to
be a successor in interest to a deceased person
must, within 6 months after the date he or she
10
There are also exceptions to the requirement of written consent for
certain types of commercial use, see § 597.790.2, but those are not at issue
here.
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 39
becomes aware or should reasonably have
become aware of an unauthorized commercial
use of the deceased person’s name, voice,
signature, photograph or likeness, register a
claim with the Secretary of State pursuant to
subsection 3. Failure to register shall be
deemed a waiver of any right of publicity.
Id. § 597.800.5 (emphasis added). The district court relied on
this last sentence to hold that Plaintiffs had waived Marley’s
publicity rights as against any defendant for any unauthorized
use. Plaintiffs became aware of the unauthorized use of
Marley’s publicity rights by someone other than Defendants,
and Plaintiffs failed to register their claim within the next six
months. Plaintiffs argue that the district court erred in its
interpretation of the statute, because the six-month
registration requirement applies with respect to each
unauthorized use, and Plaintiffs registered their rights either
before or within six months after learning of Defendants’
unauthorized use.
There is no Nevada case law interpreting this registration
timeliness requirement. Thus, we must seek to “predict how
the [Nevada] high court would resolve” the matter. Giles v.
Gen. Motors Acceptance Corp., 494 F.3d 865, 872 (9th Cir.
2007). Accordingly, we must construe the statute to give
effect to the legislature’s intent, beginning with the plain
statutory text, and giving effect to any unambiguous
language. Richardson Constr., Inc. v. Clark Cnty. Sch. Dist.,
156 P.3d 21, 23 (Nev. 2007). If the statutory language is
ambiguous, the panel should “examine the statute in the
context of the entire statutory scheme, reason, and public
policy to effect a construction that reflects the Legislature’s
intent.” Id.
40 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
Beginning with the text at issue, “[f]ailure to register shall
be deemed a waiver of any right of publicity” is
unambiguous. See Nev. Rev. Stat. § 597.800.5. “[A]ny right
of publicity” indicates that the forfeiture is broad, not limited
to the particular unauthorized use a plaintiff became aware of
six months or more before. Even assuming ambiguity, the
context, reason, and public policy align with the district
court’s interpretation. Section 597.800.3 provides for
permissive registration without reference to the successor in
interest’s knowledge of any unauthorized use. The successor
in interest may only enforce its rights with respect to
unauthorized use that occurred after registration. Id.
§ 597.800.4. However, upon learning of an unauthorized use,
registration becomes mandatory. See id. § 597.800.5. Thus,
the permissive and mandatory descriptions are in harmony, as
they apply to different situations. Read together, they
encourage successors in interest to register sooner rather than
later.
Plaintiffs argue that the legislature only intended to create
a system to perfect successor rights in § 597.800.3 through .5.
If this were so, the difference in language would not make
sense. Section 597.800.4 penalizes failure to register by not
allowing the successor to “assert any right” against
unauthorized use that occurred prior to registration. In
contrast, § 597.800.5 penalizes failure to register by deeming
a “waiver of any right” of publicity. If the legislature meant
that the successor merely could not assert its right (but still
retains it), it seems the legislature would have used language
parallel to that in § 597.800.4. Moreover, § 597.800.5 refers
to any “right of publicity,” implying the right itself, not the
right to assert claims based on the right of publicity.
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 41
Plaintiffs also argue that the purpose of the statute is to
bestow rights, not forfeit them. Of course this is broadly true.
However, the legislature apparently intended to limit a
successor’s right. The successor’s right extinguishes 50 years
after the person’s death. Id. § 597.790.1. Also, living persons
enforcing their own rights to publicity do not ever have to
register their rights. See id. § 597.790–.800. Thus, the six-
month registration requirement is in line with the qualified
nature of rights allowed successors under the statute.
V. There was sufficient evidence to support the jury’s
verdict on the interference claim.
Liability for the tort of intentional interference
with prospective economic advantage requires
proof of the following elements: (1) a
prospective contractual relationship between
the plaintiff and a third party; (2) knowledge
by the defendant of the prospective
relationship; (3) intent to harm the plaintiff by
preventing the relationship; (4) the absence of
privilege or justification by the defendant; and
(5) actual harm to the plaintiff as a result of
the defendant’s conduct.
Wichinsky v. Mosa, 847 P.2d 727, 729–30 (Nev. 1993).
With respect to Plaintiffs’ prospective relationship with
Walmart, A.V.E.L.A. Defendants claim there was insufficient
evidence to support the fifth element—whether Plaintiffs
42 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
were harmed as a result of A.V.E.L.A. Defendants’ conduct.11
At trial, Doreen Crujeiras, a licensing agent for Hope Road,
testified to the following: Hybrid was an apparel
manufacturer and one of Hope Road’s Marley merchandise
licensees that generally sold apparel at K-Mart, Target, and
Walmart. Hybrid “lost” an order “intended for Walmart.”
Jem, a licensee of A.V.E.L.A., “got the order instead.” This
order was “100,000 units of T-shirts and 100,000 units of
hoodies.” The gross sales would have been “like 1.8 million
dollar[s],” and Hope Road’s royalty on those sales would
have been “about $250,000.”
A.V.E.L.A. Defendants do not assert that they offered
evidence contradicting Crujeiras’s testimony on this point.
Rather, they argue that they impeached Crujeiras’s testimony.
Crujeiras admitted she could not remember “exactly who told
[her]” about the lost order. Also, defense counsel asked
Crujeiras, “[Y]ou don’t have any knowledge that A.V.E.L.A.
or anybody from the defendants went in and undercut
Hybrid’s efforts to sell to Walmart[?]” Crujeiras answered,
“Well, I did have that one conversation with the owner of
Hybrid. It was a conference call that I participated on. And he
was very upset and he did say that, you know, it was a
problem for him.” Crujeiras’s cryptic answer could give rise
to an inference that she had no basis for believing Defendants
were responsible for the lost order, and that she actively
avoided admitting that. However, her answer could also be
understood to mean that A.V.E.L.A. Defendants’ interference
was the “problem” to which the owner of Hybrid referred.
11
In their opening brief, A.V.E.L.A. Defendants only challenged
sufficiency of the evidence as to Walmart on this basis. Thus, claims of
insufficient evidence based on other elements of the tort are waived. See
Kim v. Kang, 154 F.3d 996, 1000 (9th Cir. 1998).
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 43
Without more, this vague answer on cross-examination does
not establish that Crujeiras’s uncontradicted testimony was
“sheer surmise and conjecture,” as A.V.E.L.A. Defendants
claim, because the evidence must be “construed in the light
most favorable to [Plaintiffs].” See Harper, 533 F.3d at 1021.
A.V.E.L.A. Defendants also argue that Crujeiras’s
testimony was biased. This argument fails, because we may
not assess the credibility of witnesses in determining whether
sufficient evidence exists. See id. A.V.E.L.A. Defendants cite
no authority for their argument that Hope Road needed to
state the exact amount of lost royalties in order for its
evidence that Hope Road was actually damaged to be
sufficient. Moreover, providing sufficient evidence that Hope
Road lost royalties from a prospective deal, no matter how
much the loss equaled, would satisfy this inquiry. The amount
of the loss is necessary for damage calculation, not proving
Hope Road was “actual[ly] harm[ed].” See Wichinsky,
847 P.2d at 730. The evidence was sufficient to support the
challenged element of actual harm.12
VI. The district court did not err in granting
Defendants’ motion for judgment as a matter of
law on the issue of punitive damages.
We review de novo the district court’s order granting a
motion for judgment as a matter of law. Saman v. Robbins,
173 F.3d 1150, 1155 (9th Cir. 1999). Defendants moved for
12
Because there was sufficient evidence with respect to the prospective
business relationship with Walmart, we need not reach A.V.E.L.A.
Defendants’ other arguments regarding Wet Seal, JGR Copa, Target, and
Ecko. The interference claim only requires an expectancy of a single
business relationship. See Wichinsky, 847 P.2d at 729–30.
44 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
judgment as a matter of law at trial. The district court granted
the motion as to Plaintiffs’ claim for punitive damages and
denied as to Plaintiffs’ claim for intentional interference with
a prospective business relationship. Plaintiffs first argue that
this decision was inconsistent, because both claims relied on
the same evidence of Defendants’ intent.
Punitive damages require a showing by clear and
convincing evidence that Defendants acted with “oppression,
fraud or malice, express or implied.” Nev. Rev. Stat.
§ 42.005.1. “Malice, express or implied” is defined as
“conduct which is intended to injure a person or despicable
conduct which is engaged in with a conscious disregard of the
rights or safety of others.” Id. § 42.001. The intentional
interference claim requires a plaintiff to prove that the
defendant “inten[ded] to harm the plaintiff by preventing the
relationship.” Wichinsky, 847 P.2d at 729–30. However, the
burden of proof for an intentional interference claim is
preponderance, not clear and convincing. See Holliday v.
McMullen, 756 P.2d 1179, 1180 (Nev. 1988) (per curiam). In
a case analyzing intentional interference with a prospective
business relationship, the Nevada Supreme Court held that
“[t]ort liability alone is insufficient to support an award of
punitive damages.” Wichinsky, 847 P.2d at 730. Thus, the
district court’s decisions were not inconsistent.
We also reject Plaintiff’s second argument—that the
district court found there was sufficient evidence to instruct
the jury on punitive damages before granting judgment as a
matter of law to Defendants on the same issue. Plaintiffs are
simply wrong in their construction of the trial transcript,
which reveals that the district court did not find that there was
sufficient evidence to instruct the jury on punitive damages.
Instead, the district court merely expressed its current
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 45
thoughts on the matter, stating that “at this stage” “I think the
jury should be instructed on punitive [damages].” Due to the
inconclusive nature of the statement, there was no conflict.13
CONCLUSION
We AFFIRM all decisions of the district court appealed
in this case.
CHRISTEN, Circuit Judge, concurring in part and dissenting
in part:
I concur in the result reached by the court but do not join
the reasoning in Subsection I.B.2 of its opinion. In my view,
the narrow holding in Part I is dictated by the standard of
review on appeal, and by the defenses actually pursued by
defendants.
I.
Presented with two T-shirts—one bearing an iconic image
of Bob Marley and one bearing the image of an unknown
African American male with dreadlocks—members of the
public were asked: (1) “Who do you think made or put out
this particular T-shirt?” and (2) “Who do you think gave their
permission or approval for this particular T-shirt to be made
or put out?” The first question bears upon a “source or
13
Plaintiffs raise a new basis for challenging punitive damage decision
in their reply brief, citing for the first time evidence they claim shows
Defendants’ malice. Because Plaintiffs did not cite any of this evidence in
their first brief, we will not consider it. See Kim, 154 F.3d at 1000.
46 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
origin” claim. Because plaintiffs concede their infringement
claim “is not based on consumer confusion as to the source or
origin of Defendants’ merchandise,” the responses to the first
survey question lend no support to plaintiffs’ cause.
If any evidence of consumer confusion is to be gleaned
from the responses to plaintiffs’ survey, it would have to
come from the second question: “Who do you think gave
their permission or approval for this particular T-shirt to be
made or put out?” 37% of respondents in the test group and
20% of respondents in the control group answered “Bob
Marley” (or “the person on the shirt”) or his heirs, estate, or
agents. Respondents were then asked why they thought this
was the case. Representative answers include: “Because I
don’t know anyone else that would have those types of
rights,” “Because his picture is on the shirt,” and “I’m
assuming there’s some kind of copyright.”
The responses to the second question show two things:
(1) members of the public have no problem recognizing the
late Bob Marley, an internationally famous musician; and
(2) members of the public share a common lay legal opinion
that Marley, or someone connected with Marley, must have
sponsored the T-shirt. But this lay legal opinion is likely to be
held by the majority of survey respondents every time
merchandise bears a readily recognizable celebrity image.
See McCarthy on Trademarks and Unfair Competition
§ 24:12 (4th ed. 2014) (describing survey in which 91.2% of
consumers agreed with the statement: “No product can bear
the name of an entertainer, cartoon character, or some other
famous person unless permission is given for its use by the
owner of the name or character.”).
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 47
The T-shirts in this case do not bear an affixed,
recognizable label, logo, or mark. Indeed, plaintiffs
repeatedly refer to their asserted interest as “trademark-like.”
They argue that their interest lies in Marley’s image itself,
which appears on the T-shirt and was arguably the very
product being purchased. For this reason, this case presents
a unique situation: rather than being deceived by the mark on
the product being purchased, the facts suggest that consumers
may have received exactly what they bargained for: a T-shirt
with a picture of Bob Marley on the front.
The purpose of a § 43(a) claim is to prevent consumers
from being misled or tricked into making purchases through
use of a trademark. Pom Wonderful LLC v. Coca-Cola Co.,
134 S. Ct. 2228, 2233 (2014) (“The Lanham Act creates a
cause of action for unfair competition through misleading
advertising or labeling.”); Int’l Order of Job’s Daughters v.
Lindeburg & Co., 633 F.2d 912, 918 (9th Cir. 1980)
(observing the purpose of Lanham Act trademark provision
is “to protect consumers against deceptive designations of the
origin of goods and, conversely, to enable producers to
differentiate their products from those of others”). The
responses to the second survey question tell us nothing about
whether consumers’ purchasing decisions are likely to be
influenced by confusion about who had given permission to
produce the shirts.1 Plaintiffs did not allege that the use of
1
The record contains only three survey responses that might have
possibly affected purchasing decisions: “He should get paid when
someone uses his picture, even if he’s not with us,” “If he was my family,
I would want someone to ask my permission if they were going to sell T-
shirts of a dead family member,” and “Because it’s based on a celebrity,
and his son will probably get the royalties.” Even when construed in the
light most favorable to plaintiffs, three responses are insufficient to
establish actual consumer confusion.
48 FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A.
Marley’s image conveyed an indication or endorsement that
the T-shirts were of a particular quality, or that they were the
“official” T-shirt that had special memorabilia value.
Plaintiffs’ claim is simply that consumers mistakenly
understood that Marley (or someone connected with his
estate) must have given permission for the use of Marley’s
image on the T-shirt. Without a showing that consumers
cared whether permission had been given, the second survey
question only shows that most consumers share a common
lay legal opinion that a celebrity must give permission before
his or her image may be used; it does nothing to suggest that
the use of Marley’s image on the T-shirt runs afoul of the
purpose of the Lanham Act.
In my view, the word “confusion” in § 43(a) must be read
in light of the Lanham Act’s purpose. Therefore, where a
celebrity image is itself the only indication of sponsorship, I
would hold that a finding of actual confusion under § 43(a)
must be supported by some evidence that the confusion could
have had an impact on the consumers’ purchasing decisions.
See Stacey L. Dogan & Mark A. Lemley, The Merchandising
Right: Fragile Theory or Fait Accompli, 54 Emory L.J. 461,
488 (2005) (“If individuals don’t care one way or the other
whether the trademark holder sponsors or endorses such
products or whether the products are officially licensed, then
the competitive process certainly does not suffer from their
assumption that the use required a license.”). If not read in
context, Downing’s actual confusion factor becomes a nullity
because consumers’ common understanding about who must
have authorized the use of a celebrity image may well have
nothing to do with the product. Here, I would give no weight
to plaintiffs’ survey responses because plaintiffs did not show
that consumers might be misled into buying the T-shirt based
on whether permission had been given.
FIFTY-SIX HOPE ROAD MUSIC V. A.V.E.L.A. 49
II.
Evidence of actual consumer confusion is just one of the
eight factors considered under Downing, and, in this case,
several other Downing factors support the jury’s finding of
consumer confusion. See Hana Fin., Inc. v. Hana Bank,
574 U.S. __ (2015) (“Application of a test that relies upon an
ordinary consumer’s understanding of the impression that a
mark conveys falls comfortably within the ken of a jury. . . .
[W]hen the relevant question is how an ordinary person or
community would make an assessment, the jury is generally
the decision maker that ought to provide the fact-intensive
answer.”). On this record, I cannot conclude that “the
evidence, construed in the light most favorable to the
nonmoving party, permits only one reasonable conclusion,
and that conclusion is the contrary to the jury’s verdict.”
Pavao v. Pagay, 307 F.3d 915, 918 (9th Cir. 2002).
It is difficult to over-state the extent to which this result
is the product of the unique way this case was litigated. We
address the case as it is presented to us, but it is worth
restating that our holding is very narrow, and largely a
function of issues and defenses the parties chose not to
litigate.