Fifty-Six V Avela (Bob Marley ROP) (Plaint. Resp. Def. MSJ)

Case 2:08-cv-00105-PMP-GWF Document 127 Filed 12/18/09 Page 1 of 35
1 MANATT, PHELPS & PHILLIPS, LLP

JILL M. PIETRINI (Bar No. CA 138335)
2 e-mail: jpietrini@manatt.com
BARRY E. MALLEN (Bar No. CA 120005)
3 e-mail: bmallen@manatt.com
PAUL A. BOST (Bar No. CA 261531)
4 e-mail: pbost@manatt.com
11355 West Olympic Boulevard
5 Los Angeles, CA 90064-1614
Telephone: (310) 312-4000
6 Facsimile: (310) 312-4224
7 JOLLEY, URGA, WIRTH, WOODBURY & STANDISH

WILLIAM R. URGA (Bar No. NV 1195)
8 email: wru@juww.com
L. CHRISTOPHER ROSE (Bar No. NV 7500)
9 email: lcr@juww.com
3800 Howard Hughes Pkwy.
10 Wells Fargo Tower, 16th Floor
Las Vegas, NV 89169
11 Telephone: (702) 699-7500
Facsimile: (702) 699-7555
12
Counsel for Plaintiff and Counter-Defendant
13 FIFTY-SIX HOPE ROAD MUSIC, LTD.
14
15 UNITED STATES DISTRICT COURT
16 DISTRICT OF NEVADA
17 Fifty-Six Hope Road Music, Ltd., a Bahamian Case No. 2:08-cv-00105-PMP-GWF

corporation; and Zion Rootswear, LLC, a
18 Florida limited liability company, PLAINTIFFS’ OPPOSITION TO
DEFENDANTS’ MOTION FOR
19 Plaintiffs, SUMMARY JUDGMENT
20 vs.
Hearing Date: February 22, 2010
21 A.V.E.L.A., Inc., a Nevada corporation; Sci-Fi Time: 2:00 p.m.
Productions, Inc., dba X One X Movie Courtroom: 7C - Honorable Philip M.
22 Archives, a Nevada corporation; JEM Pro
Sportswear, a California corporation; Central
23 Mills, Inc. (Freeze), a New York corporation;
and Leo Valencia, an individual,
24
Defendants.
25
26 AND RELATED COUNTERCLAIM.

27
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1 TABLE OF CONTENTS
2 Page
3
I. INTRODUCTION ............................................................................................................ 1
4 II. STATEMENT OF FACTS ............................................................................................... 3
5 A. Plaintiffs Own Valid Rights in the Marley IP....................................................... 3
1. Fifty-Six’s Registration of Bob Marley’s Right of Publicity.................... 3
6
2. Plaintiffs Own and Alleged Trademark Rights in
7 Bob Marley’s Image.................................................................................. 4
B. AVELA’s Acquisition, Licensing, and Exploitation of the
8 Bob Marley Images ............................................................................................... 5
9 1. AVELA’s Acquisition of the Images From Rabanne ............................... 6
2. AVELA’s First Use of the Rabanne Images ............................................. 6
10
3. Plaintiffs’ First Knowledge of Defendants’
11 Infringing Activities .................................................................................. 7
C. AVELA’s Use of Bob Marley’s Name, Music Titles,
12 and Lyrics.............................................................................................................. 8
13 III. DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT
SHOULD BE DENIED .................................................................................................... 9
14 A. Summary Judgment Should Not Be Granted on the Right
of Publicity Claim ............................................................................................... 10
15
1. Plaintiffs’ Right of Publicity Claim Against Defendants
16 is Not Forfeited By Registration After Unrelated
Third-Party Infringements....................................................................... 10
17 2. Plaintiffs’ Registered Their Right of Publicity Claim
Within 6 Months of Their First Knowledge of Defendants’
18 Infringement............................................................................................ 15
19 3. Nevada’s Right of Publicity Statute Applies to
Defendants’ Commercial Use of Bob Marley’s Image........................... 16
20 B. Defendants Are Not Entitled to Summary Judgment on Plaintiffs’
Trademark and False Association Claims........................................................... 20
21
1. Plaintiffs’ Own Trademark Rights in Bob Marley’s
22 Identity .................................................................................................... 21
2. Defendants Have Used Reproductions of the Marley IP
23 in Connection with the Sale and Distribution of Goods ......................... 22
24 a.
Defendants Have Used Copies and Reproductions
of Plaintiffs’ Trademark in Bob Marley’s Identity ..................... 22
25 b. Defendants Have Used Copies and Reproductions
of Plaintiffs’ BOB MARLEY Trademark................................... 25
26
c. Defendants Are Unable to Establish Their Fair Use
27 Defense........................................................................................ 28
IV. CONCLUSION ............................................................................................................... 30
28
i
1 TABLE OF AUTHORITIES
2 Page
3 CASES
4 Allen v. National Video,
610 F. Supp. 612 (S.D.N.Y. 1985).......................................................................................... 22
5 AMF Inc. v. Sleekcraft Boats,
599 F.2d 341 (9th Cir. 1979)................................................................................................... 26
6
Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc.,
7 457 F.3d 1062 (9th Cir. 2006)................................................................................................. 29
Brookfield Communications, Inc. v. West Coast Entertainment Corp.,
8 174 F.3d 1036 (9th Cir. 1999)................................................................................................. 26
9 Citizens for Cold Springs v. City of Reno,
2009 Nev., LEXIS 53, *10 (2009) .......................................................................................... 15
10 Comedy III Productions, Inc. v. Gary Saderup, Inc.,
25 Cal.4th 387 (2001) ............................................................................................................. 19
11
Downing v. Abercrombie & Fitch,
12 265 F.3d 994 (9th Cir. 2001)............................................................................................. 21, 23
E&J Gallo Winery v. Gallo Cattle Company,
13 967 F.2d 1280 (9th Cir. 1992)................................................................................................. 23
14 EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos Inc.,
228 F.3d 56 (2d Cir. 2000)...................................................................................................... 30
15 ETW Corp. v. Jireh Pub., Inc.,
332 F.3d 915 (6th Cir. 2003)................................................................................. 21, 22, 23, 24
16
Exxon Corp. v. Texas Motor Exchange, Inc.,
17 628 F.2d 500 (5th Cir. 1980)................................................................................................... 23
Fifty-Six Hope Road Music, Ltd. v. Mayah Collections, Inc.,
18 Case No. 2:05-CV-05-1059-KJD-GWF............................................................................ 12, 15
19 Gugliemi v. Spelling-Goldberg Productions,
25 Cal.3d 860 (1979) .............................................................................................................. 19
20 In re Sloppy Joe’s Int’l, Inc.,
43 U.S.P.Q.2d 1350 (TTAB 1997) ......................................................................................... 27
21
International Stamp Art, Inc. v. U.S. Postal Service,
22 456 F.3d 1270 (11th Cir. 2006)............................................................................................... 28
Jada Toys, Inc., v. Mattel, Inc.,
23 518 F.3d 628 (9th Cir. 2008)................................................................................................... 23
24 KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc.,
408 F.3d 596 (9th Cir. 2005)................................................................................................... 29
25 List v. Whisler,
99 Nev. 133 (1983) ................................................................................................................. 15
26
Lozano Enterprise v. La Opinion Publishing Co.,
27 44 U.S.P.Q.2d 1764 (C.D. Cal. 1997)..................................................................................... 25
28
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(continued)
2 Page
3 Miller v. Burke,
124 Nev. 56, 188 P.3d 1112 (2008) ........................................................................................ 18
4 Milton H. Greene Archives, Inc. v. CMG Worldwide, Inc., 2008 WL 655604, *3
(C.D. Cal. Jan. 7, 2008)........................................................................................................... 20
5
Mobil Oil Corp. v. Pegasus Corp.,
6 818 F.2d 254 (2d Cir. 1987).................................................................................................... 27
Nissan Fire & Marine Ins. Co. Ltd. v. Fritz Cos., Inc.,
7 210 F.3d 1099 (9th Cir. 2000)................................................................................................. 10
8 Opticians Ass’n v. Independent Opticians,
920 F.2d 187 (3d Cir. 1990).................................................................................................... 25
9 Parks v. LaFace Records,
329 F.3d 437 (6th Cir. 2003)................................................................................................... 28
10
Public Employees Benefits Program v. LVMPD,
11 124 Nev.Adv.Op. No. 14, 179 P.3d 542 (2008)...................................................................... 18
S.N.E.A. v. Daines,
12 108 Nev. 15, 19 (1992) ........................................................................................................... 12
13 Sierra On-line, Inc. v. Phoenix Software, Inc.,
739 F.2d 1415 (9th Cir. 1984)................................................................................................. 29
14 Squirrel Brand Co. v. Green Gables Inv. Co.,
223 U.S.P.Q. 154 (TTAB 1984) ............................................................................................. 27
15
Tahoe Regional Planning Agency v. McKay,
16 769 F.2d 534 (9th Cir. 1985)................................................................................................... 15
Waits v. Frito-Lay, Inc.,
17 978 F.2d 1093 (9th Cir. 1992)................................................................................................. 21
18 White v. Samsung Electronics America, Inc.,
971 F.2d 1395 (9th Cir. 1992)................................................................................................. 23
19
STATUTES
20
15 U.S.C. § 1114 ................................................................................................................. 9, 25, 26
21 15 U.S.C. § 1115(b)(4).................................................................................................................. 28
22 15 U.S.C. § 1125(a) .................................................................................................. 1, 9, 23, 26, 28
15 U.S.C. § 1127 ........................................................................................................................... 26
23
Cal.Civ.Code § 3344.1(a).............................................................................................................. 19
24 Cal.Civ.Code § 3344.1(h) ............................................................................................................. 19
25 NRS § 597.770 ............................................................................................................ 1, 2, 3, 10, 15
NRS § 597.790(1) ................................................................................................................... 10, 17
26
NRS § 597.790(2) ......................................................................................................................... 10
27 NRS § 597.800 .......................................................................................................................... 2, 12
28 NRS § 597.800(3) ................................................................................................................... 12, 13
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(continued)
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3 NRS § 597.800(4) ................................................................................................................... 13, 14
NRS § 597.800(5) ................................................................................................................... 13, 14
4
NRS § 597.800(6) ......................................................................................................................... 13
5 NRS § 597.810 ................................................................................................................................ 3
6 NRS § 598.800(3) ......................................................................................................................... 11
NRS § 598.800(4) ................................................................................................................... 11, 12
7
NRS § 598.800(5) ................................................................................................................... 11, 12
8 NRS §§ 597.770-597.810.............................................................................................................. 17
9 OTHER AUTHORITIES
10 Bruce P. Keller, The Right of Publicity:
Past, Present, and Future,
11 1207 PLI Corp. Law and Prac. Handbook, 159, 170 (Oct. 2000)........................................... 21
12 California Assembly Committee on Judiciary Report on § SB 613, California’s
Right of Publicity Statute ........................................................................................................ 19
13 California Senate Committee on Judiciary 1983-84 Regular Session, Report on
“Commercial Exploitation of Deceased Celebrities............................................................... 19
14
California Senate Democratic Caucus Judiciary Committee Summary of
15 “Arguments In Support” of S.B. 613, California’s Posthumous Right Of
Publicity Statute ...................................................................................................................... 19
16 McCarthy on Trademarks and Unfair Competition, § 23:27........................................................ 27
17
18
19
20
21
22
23
24
25
26
27
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1 I. INTRODUCTION
2 Defendants’ motion for summary judgment (“MSJ”) must be denied because of glaring
3 material factual disputes, the incorrect interpretation of the Nevada Right of Publicity statute NRS
4 § 597.770 advanced by Defendants, and the incorrect contention by Defendants that Plaintiffs do
5 not allege trademark rights in Bob Marley’s image. Examples of some of the material factual
6 disputes that preclude summary judgment are:
7 • Conflicting declarations and documentary evidence relating to the location of the

infringers Plaintiffs found in 2001 and 2004 and then sued in 2005 in an unrelated case.
8 The cease and desist letters and declaration of Plaintiff Zion’s counsel identify the
infringers’ locations in Florida. Defendants boldly contend that the infringers sued in the
9 2005 action were infringing in Nevada without any supporting evidence A jury must
decide whether the infringers were infringing the rights of publicity associated with Bob
10 Marley 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 for
11 Relief.)
12 • Conflicting testimony and documentary evidence from photographer Roberto Rabanne
who purportedly licensed most of the Bob Marley photographs at issue to the AVELA
13 Defendants, from AVELA’s trademark counsel Gregg Paradise, and from the AVELA
Defendants, as to when Valencia first obtained the Bob Marley photographs. Plaintiffs
14 show through their evidence that Valencia received the photographs in June 2006.
Defendants claim Valencia received them in 2003 or 2004. Plaintiffs have testimony and
15 documents from Rabanne and Valencia that indicate that Valencia has doctored evidence
to try to establish the earlier date of 2003 or 2004. This factual dispute is material to the
16 interpretation of NRS § 597.770 and when Plaintiffs first had knowledge of Defendants’
infringement. (4th Claim for Relief.) Given these disputed facts, the jury must decide this
17 issue.
18 • Conflicting documentary evidence and testimony as to whether Defendants use Bob
Marley’s name in a trademark sense, as Plaintiffs contend, or descriptively, as Defendants
19 contend. Documentary evidence demonstrates that Defendants have used the BOB
MARLEY mark and similar variations thereto on displays associated with the goods and
20 “in connection with the sale, offering for sale, distribution, or advertising” of Defendants’
goods. There is ample evidence of intentional infringement in this case, which
21 undermines the element of good faith and fair use Defendants must prove. Thus, the jury
must decide whether Defendants’ use of Bob Marley’s name is a trademark use, or
22 whether the use is descriptive and Defendants acted in good faith. (1st Claim for Relief.)
23 • Defendants contend there is no likelihood of confusion, association, or sponsorship
between Defendants’ use of Bob Marley’s name, image, likeness, and music titles and
24 lyrics (“Marley IP”) and Plaintiffs and/or Bob Marley, but submit no evidence to support
that contention. Plaintiffs, on the other hand, presented undisputed evidence of the
25 likelihood of confusion in support of their motion for summary adjudication on their
15 U.S.C. § 1125(a) claim (“Plaintiffs’ 43(a) MSA”) (2nd Claim for Relief.)
26
These factual disputes alone compel the denial of Defendants’ motion. Other factual
27
disputes are set forth in Plaintiffs’ Statement of Disputed Issues of Material Fact (“SDF”) filed
28
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1 concurrently herewith. Accordingly, there are numerous material factual disputes the jury must
2 decide in this case which preclude entry of summary judgment in Defendants’ favor.
3 Separately, Defendants advance tenuous -- if not illogical -- interpretations of applicable
4 trademark and right of publicity laws, and misstate the scope of Plaintiffs’ rights in the name,
5 image, likeness of Bob Marley. This also mandates the denial of Defendants’ motion.
6 First, Defendants advance an interpretation of NRS § 597.770 that is illogical, draws
7 improbable conclusions from legislative history, and directly contradicts the obvious purpose of
8 the statute shown by the text itself and the legislative history. In particular, Defendants argue that
9 because Plaintiff Fifty-Six did not register its right of publicity associated with Bob Marley
10 within 6 months of when it knew or should have known of infringement by Defendants in the
11 2005 action, Plaintiffs are forever barred from asserting their claim now as to a completely
12 separate infringement (or, according to Defendants, in any other future infringements). In making
13 these arguments, Defendants try to limit the rights granted by the statute by reading in a manda-
14 tory, timely1 registration requirement which is at odds with the permissive nature of registration
15 under the statute and the notice system established by the statute.
16 Defendants also argue that the statute does not apply retroactively to create rights of
17 publicity for individuals who died before the statute was enacted. Defendants misread the plain
18 language of the statute, mistaking the statute’s protected class (individuals born within 50 years of
19 the statute’s passing) with retroactive punishment of infringements occurring before the passage
20 of the statute. Notably, when passing the statute, the Nevada legislature discussed the rights
21 associated with Orson Welles, Elvis Presley, and Liberace, all of whom were already deceased.
22 Second, Defendants contend that the trademark side of this case is only about the use of
23 Plaintiffs’ alleged word trademarks relating to Bob Marley. This is incorrect. Plaintiffs own
24 trademark rights in the image and likeness of Bob Marley pursuant to their trademark rights in
25 both the BOB MARLEY mark and Bob Marley’s identity and persona. (FAC) ¶¶16, 18, 19 &
26 38.) Plaintiffs contend that the use by Defendants of Bob Marley’s image, especially in conjunc-
27 1
Defendants represent that the statute contains the word “timely” in their motion (p. 4,
28 [¶] 1.18), but nowhere does that word appear in NRS § 597.800.
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1 tion with song titles and song lyrics uniquely associated with Bob Marley (“Bob Marley
2 Products”), created a likelihood of confusion, false association, sponsorship, or false represen-
3 tation of fact. The law in the Ninth Circuit is clear that Plaintiffs need not show one single image
4 of Bob Marley in which they claim trademark rights, as Defendants would have the Court believe.
5 Rather, using Bob Marley’s likeness on apparel and beach towels, Defendants infringe Plaintiffs’
6 trademark rights in his identity and persona and, thus, falsely associate their products with Bob
7 Marley and Fifty-Six. Said use also infringes Plaintiffs’ trademark in the BOB MARLEY word
8 mark by virtue of the firmly established doctrine of legal equivalents; that is, Defendants’ use of
9 Bob Marley’s image and the BOB MARLEY mark evoke the same mental impression and
10 source-identifying function in the mind of the consumer.
11 II. STATEMENT OF FACTS

12 The following facts contradict Defendants’ statement of facts (MSJ, pp 9-11) or, at the
13 very least, reveal genuine issues of material facts precluding summary judgment.
14 A. Plaintiffs Own Valid Rights in the Marley IP
15 1. Fifty-Six’s Registration of Bob Marley’s Right of Publicity

16 Defendants concede that Fifty-Six is the owner of Bob Marley’s right of publicity. How-
17 ever, Defendants contend that Fifty-Six cannot enforce those rights in Nevada because, allegedly,
18 it did not timely register the rights in Nevada. Defendants contend that Plaintiffs first became
19 aware of Defendants’ activities in August 2004 or no later than February 2005. (MSJ, p. 25.)
20 There is indeed a factual dispute as to when Plaintiffs became aware of these activities.
21 On January 24, 2006, Fifty-Six registered its ownership of Bob Marley’s right of publicity
22 with the Nevada Secretary of State (“the Nevada Registration”). (FAC ¶16c.) The Nevada
23 Registration granted Fifty-Six statutory rights of enforcement of the Bob Marley rights of
24 publicity pursuant to NRS § 597.770 et seq., which provides redress against the unauthorized
25 commercial use of a person’s (alive or deceased) “name, voice, signature, photograph or
26 likeness.” NRS § 597.810. Fifty-Six obtained the Nevada Registration within 6 months of its
27 first knowledge of the unauthorized exploitation of Bob Marley’s right of publicity in the State of
28 Nevada. (SDF ¶20.) Specifically, Fifty-Six registered its rights within 6 months of learning of
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1 The Tunes Company’s (“Tunes”) and Legends 4 Life’s offering for sale unlicensed Bob Marley
2 merchandise at the August 2005 MAGIC tradeshow in Las Vegas, Nevada. (SDF ¶20.) Prior to
3 that time, in 2001 and 2004 Fifty-Six’s licensee Zion sent cease and desist letters to these
4 companies’ places of business in Florida, where Plaintiffs understood the infringement to have
5 occurred. (SDF ¶20.) Plaintiffs did not have any knowledge of the sale, offering for sale,
6 advertisement or the display of unauthorized Bob Marley products or images in Nevada before
7 the August 2005 MAGIC show. (SDF ¶20.) Thus, there is a factual dispute as to when Plaintiffs
8 first became aware of any infringement of Bob Marley’s right of publicity in Nevada.
9 2. Plaintiffs Own and Alleged Trademark Rights in Bob Marley’s Image

10 Defendants contend that Plaintiffs have not alleged trademark rights in Bob Marley’s
11 image. (MSJ, p. 3.) However, the FAC plainly reflects that Plaintiffs alleged ownership of the
12 intellectual property and publicity rights for Bob Marley, including but not limited to: (a) com-
13 mon law rights in the name Bob Marley for music, entertainment services, and merchandise;
14 (b) U.S. Registration of BOB MARLEY for various items of merchandise, including clothing;
15 and (c) Nevada Registration of the right of publicity associated with Bob Marley, issued on
16 January 24, 2006. (FAC ¶16.) Plaintiffs also alleged that the Marley IP has become distinctive
17 (FAC ¶18) and that Plaintiffs have actively policed the Marley IP (FAC ¶19.) Further, Plaintiffs
18 alleged that Defendants were and are attempting to create an association between their infringing
19 merchandise and Plaintiffs’ licensed merchandise (FAC ¶37); that Defendants sought, with bad
20 faith intent, to profit from the name and likeness of Bob Marley and the associated and registered
21 rights of publicity owned by Fifty-Six (FAC ¶38); and that Defendants’ use of the Marley IP
22 constitutes a false designation of origin and/or a false or misleading description of fact which is
23 likely to cause confusion or deceive consumers as to the origin of Defendants’ products. (FAC
24 ¶49.) Thus, the notion that Plaintiffs have not alleged any trademark rights in the image of Bob
25 Marley is simply not true and is belied by the FAC.
26 Defendants’ contention that Plaintiffs do not own any trademark rights in Bob Marley’s
27 image is directly contradicted by the following evidence in support of Plaintiffs’ 43(a) MSA,
28 including: (a) Bob Marley was a world-famous musical performer and popular icon whose fame
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1 and popularity has only increased since his premature death in 1981 (Plaintiffs’ Statement of
2 Undisputed Facts filed with 43(a) MSA “SUF” ¶1); (b) since 1986, Plaintiffs, their predecessors,
3 and their licensees, have consistently exploited the Marley IP (including his image and likeness)
4 on more than 100 different goods and services, including clothing and beach towels; (SUF ¶22,
5 37); (c) Fifty-Six has entered into more than 48 licenses for the use of the Marley IP, including
6 his image and likeness (SUF ¶22); (d) since 1999, Zion has been Fifty-Six’s exclusive licensee
7 for certain apparel bearing Bob Marley’s name, image, and likeness (SUF ¶23); (e) Plaintiffs and
8 their predecessor entities have consistently enforced their rights in the Marley IP against
9 unauthorized infringers for almost two decades (SUF ¶45); (f) since 1990, Plaintiffs have sent
10 400 cease and desist letters to individuals and entities manufacturing and selling various
11 infringing merchandise and apparel featuring the Marley IP (SUF ¶46); (g) Plaintiffs have filed
12 29 trademarks, copyright, and rights of publicity suits based on their ownership of the Marley IP
13 (SUF ¶47); (h) Plaintiffs have federally registered their trademark rights in one particular likeness
14 of Marley, specifically, the TUFF GONG & Design mark (Fed. Reg. No. 1,866,146) (SUF ¶35);
15 (i) Plaintiffs use other Bob Marley images all of which serve a source-identifying trademark
16 function (SUF ¶¶40-42, 44); (j) various requests by third parties for permission to use Bob
17 Marley’s name and likeness in entertainment works and on merchandise (SUF ¶16); and
18 (k) Plaintiffs’ uncontroverted survey establishing the association and ownership of Bob Marley’s
19 image with Fifty-Six and the heirs of Bob Marley. (SUF ¶79-86.)
20 Thus, while Plaintiffs have not alleged any particular discrete image of Bob Marley as a
21 trademark, Plaintiffs have nevertheless alleged trademark rights in Bob Marley’s identity -- which
22 include Bob Marley’s image, likeness, and other evocations of his persona. Fifty-Six’s and its
23 predecessor entities’ exploitation of the Marley IP for more than two decades has resulted in
24 consumers’ association of Fifty-Six with apparel and merchandise featuring and trading upon the
25 Marley IP, including his image. Based thereon, it is clear to consumers that the Marley IP is
26 owned by Fifty-Six and the Marley IP functions as a brand.
27 B. AVELA’s Acquisition, Licensing, and Exploitation of the Bob Marley Images
28 Defendants’ factual account of how and when the AVELA Defendants acquired and
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1 began licensing Marley’s image and likeness is clearly contradicted by the following evidence.
2 1. AVELA’s Acquisition of the Images From Rabanne

3 AVELA claims to have acquired photographs of Bob Marley from photographer Roberto
4 Rabanne in 2004 (MSJ, p. 9, l. 5-8) and that Rabanne told AVELA’s owner, Valencia, that he had
5 received Bob Marley’s oral “permission” to use the photos in a transformative way, without a
6 license, on merchandise. (MSJ, p. 9, l. 9-11). Those facts are disputed. Rabanne testified that he
7 first met Valencia in June 2006 (SDF ¶1), the contract was entered between AVELA and himself
8 in July 2006 (not 2004), and he gave Valencia the photographs of Bob Marley in June 2006.
9 (SDF ¶1). Rabanne also produced an email between himself and Valencia where Valencia told
10 Rabanne that they needed to back date their contract to January 1, 2005. (SDF ¶1). Rabanne
11 testified that Valencia then, in 2006, sent him two contracts, one dated 2004 and one dated 2003,
12 specifically so that Rabanne and Valencia could back date the contract between them. (SDF ¶1).
13 Rabanne further testified that the email communication which Defendants now claim
14 establishes their right to use the Rabanne photographs in a transformative way to sell merchandise
15 was a total ruse -- dictated to Rabanne by Valencia, who was pressuring Rabanne to write a self-
16 serving email stating that Bob Marley had in fact given Rabanne the right to sell Marley merch-
17 andise. (SDF ¶2). Defendants’ assertion as to this supposed “fact” is also contradicted by
18 AVELA’s former trademark counsel, Gregg Paradise. Paradise spoke with Rabanne and
19 Valencia on the phone and Rabanne told them both that Bob Marley allowed Rabanne to sell
20 some of the photographs that he took of Bob Marley, but that he had not engaged in any merch-
21 andising activities using those photographs. All Rabanne did was to sell some of the photographs
22 he took of Bob Marley. Paradise confirmed this conversation with Rabanne in a memorandum to
23 the file, and testified that it accurately memorialized his conversation with Rabanne. (SDF ¶2).
24 2. AVELA’s First Use of the Rabanne Images

25 Defendants contend that AVELA began actively seeking to license the Bob Marley
26 images purchased from Rabanne in late 2004. In fact, the evidence clearly points to a date of first
27 use almost two years later. First, as noted supra, Rabanne testified that he did not even provide
28 any images to AVELA until June 2006. Moreover, two witnesses who attended the February
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1 2005 MAGIC trade show in Las Vegas, Nevada, Michael Conley of Zion and Kimberly Cauley
2 Mileski of Freeze (an AVELA licensee), both testified to meeting Valencia at the February 2005
3 MAGIC trade show and viewing the images that AVELA was then looking to license. Both
4 witnesses, including Ms. Cauley, testified that Valencia was not displaying any pictures of Bob
5 Marley at the MAGIC show. (SDF ¶¶4-5.) Zion’s licensing agent, Val Formica, negotiated with
6 Valencia after the show, and still there were no pictures of Bob Marley. (SDF ¶¶4-5.) Conley, in
7 particular, would have remembered such a dispute of Marley images by AVELA given that Zion,
8 as the exclusive licensee of Bob Marley apparel products, was particularly committed to policing
9 infringements. (SDF ¶¶4-5.) As such, Defendants’ claim that AVELA began actively seeking to
10 license the Bob Marley images at least as early as February 2005 is disputed -- and indeed contra-
11 dicted by their own witness (AVELA licensee Freeze).
12 Defendants’ claim of first licensing the Bob Marley images in 2005 or in the latter part of
13 2004 (MSJ, p. 9, l. 12-16) is also contradicted by (a) the testimony of Paradise and (b) Valencia’s
14 testimony concerning the name and likeness license he sought from one of the Bob Marley’s
15 children. Paradise testified that he first discussed exploitation of the Bob Marley images on
16 merchandise with Valencia in August 2006, which is consistent with Paradise’s billing records
17 that he produced in this case (and with Rabanne’s testimony of having entered into an agreement
18 with AVELA in July 2006). Paradise further testified that it was his understanding, based on
19 conversations with Valencia, that Bob Marley merchandise, as of August 2006, was not yet in the
20 marketplace. (SDF ¶3.) Later, during the Fall of 2006, Valencia, on behalf of AVELA, sought a
21 license to exploit Bob Marley’s name and likeness from Bob Marley’s son, Rohan Marley, who
22 operated a company affiliated with Plaintiffs. (SDF ¶3.) Neither Plaintiffs nor Rohan Marley
23 ever entered into any license agreement with AVELA. (SDF ¶3.) Both Paradise’s review of the
24 use of Bob Marley images by AVELA and the AVELA Defendants’ solicitation of a license from
25 Rohan Marley occurred well after the date that Fifty-Six registered its right of publicity in Nevada
26 and had established its proprietary rights in the exploitation of Bob Marley’s image and likeness.
27 3. Plaintiffs’ First Knowledge of Defendants’ Infringing Activities
28 Plaintiffs first became aware that AVELA was seeking licensees for the Bob Marley
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1 images at the Winter MAGIC tradeshow in February 2007 in Las Vegas, Nevada. (SDF ¶5.) As
2 a result, on February 14, 2007, Plaintiffs filed a complaint and ex parte application for temporary
3 restraining order (“TRO”) against Fame Jeans, Inc. (“Fame”), Fame’s principal Charles
4 Friedman, AVELA, and Valencia (collectively, “the 2007 Defendants”) for trademark and rights
5 of publicity infringement (“the 2007 Action”). (SDF ¶5.) Defendants’ contention that the 2007
6 Action was “nearly identical to the present case” (MSJ, p. 8) is patently false. Whereas the
7 infringement at issue in this case is admittedly national in scope and scale (see infra), Fame -- a
8 then licensee of AVELA and the would-be manufacturer of the infringing merchandise in the
9 2007 Action - represented that it never actually manufactured any Bob Marley products; rather it
10 had a single image available at the 2007 MAGIC show to retailers to select for future manufac-
11 ture by Fame. (SDF ¶5.) Plaintiffs, in 2007, believed that the single Marley image Fame was
12 touting in connection with an attempt to secure orders of then non-existent (i.e., to be manufac-
13 tured in the future) products was the full extent of AVELA’s and Valencia’s unauthorized use of
14 the Marley IP. Plaintiffs had no specific knowledge of infringement perpetrated by AVELA and
15 Valencia beyond the very limited use by Fame at issue in the 2007 Action, and any such infringe-
16 ment was precluded by the TRO issued by the court on February 26, 2007, which was later
17 extended indefinitely, i.e., to the date Plaintiffs voluntarily dismissed the 2007 Action without
18 prejudice (based on assurances by Fame that it had stopped). (SUF ¶¶52-53.)
19 Defendants argue Plaintiffs knew of AVELA’s use of Marley photographs in February

20 2005 or in August 2004; Plaintiffs’ evidence shows that Plaintiffs knew about the use of one
21 Marley photograph by AVELA in February 2007 -- two years later -- and one year after the
22 Nevada Registration -- and had no knowledge of the qualitatively different (and pervasive)
23 infringement in this case. Clearly, the date of Plaintiffs’ first awareness of the AVELA
24 Defendants’ infringing activities is a matter for the jury to decide.
25 C. AVELA’s Use of Bob Marley’s Name, Music Titles, and Lyrics
26 Defendants claim they are immune from liability in this case because they did not use the
27 name “Bob Marley” on the garments in question. (SUF ¶63.) However, Defendants have used
28 the BOB MARLEY mark and variations thereof when advertising the Bob Marley Products
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1 through online retailing and in the metadata underlying said internet listings, planogram label
2 strips (also known as shelf labels), and other documents and displays. (SUF ¶64; DSF ¶ 7.)
3 Separately, many of Defendants’ Bob Marley Products include textual design elements
4 reproducing and quoting famous Bob Marley album titles, song titles, and song lyrics, including
5 “Roots Rock Reggae,” “I Shot the Sheriff,” “One Love,” “Buffalo Soldier,” “Waiting In Vain,”
6 “Get Up, Stand Up,” “Redemption Song,” “Uprising,” and “Catch A Fire.” (SUF ¶65; SDF ¶ 7.)
7 Defendants use their Bob Marley associated text in conjunction with images of Bob Marley in
8 order to draw consumer association with Bob Marley and the BOB MARLEY mark without
9 actually using the trademarked BOB MARLEY name on the goods themselves. Defendants’
10 licensees admit the intent behind this association (SUF ¶¶17, 78), and the association itself is
11 shown by Plaintiffs’ survey. (SUF ¶83.) AVELA cannot claim that its licensees that initiating,
12 without its acquiescence or consent, the use of Bob Marley music titles and lyrics in conjunction
13 with the Marley images. Per the terms of its agreements with JEM, Freeze, and other licensees,
14 AVELA maintains the right and ability to review and approve the licensees’ design of the
15 Bob Marley Products, and does in fact approve the use of Bob Marley’s song titles, album titles,
16 and lyrics on the Bob Marley Products. (SUF ¶66.) Equally compelling, AVELA provides pre-
17 approved artwork with Bob Marley’s image in conjunction with song and album titles and song
18 lyrics for its licensees to use. (SUF ¶67.)
19 Thus, there is a factual dispute as to whether Defendants’ use of Bob Marley’s name in
20 advertising, metatags, and on displays constitutes “use in commerce” sufficient to support
21 Plaintiffs’ federal infringement claim under 15 U.S.C. § 1114 (1st Claim for Relief.) Plaintiffs
22 do not believe that there is a factual dispute as Defendants’ use of Bob Marley’s identity,
23 including his name and likeness, to support their §1125(a) claim. To the extent that there is not,
24 summary adjudication should be granted in Plaintiffs’ favor, as illustrated in Plaintiffs’ 43(a)
25 MSA.
26 III. DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT SHOULD BE DENIED

27 Where the defendant is the moving party, it bears the persuasion that one or more
28 elements of the claim in question cannot be established or that there is a complete defense thereto.
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1 Nissan Fire & Marine Ins. Co. Ltd. v. Fritz Cos., Inc., 210 F.3d 1099, 1102 (9th Cir. 2000).
2 Defendants’ burden is particularly high given the nature of the claims in dispute.
3 A. Summary Judgment Should Not Be Granted on the Right of Publicity Claim

4 Defendants’ motion for summary judgment on Plaintiffs’ right of publicity claim is
5 grounded upon (a) erroneous statutory interpretations of the statute at issue and its legislative
6 history, and (b) representations that material facts are not in dispute when they are not only
7 manifest, but attested to by Defendants themselves. Defendants read NRS § 597.770, et seq. to
8 mandate a successor claimant’s registration of the claimed right of publicity within 6 months of
9 any unauthorized use, regardless of its nature or scope, lest the claimant relinquish its rights of
10 publicity to the public domain in perpetuity. Not only is this interpretation nonsensical in
11 practice, it is, more fundamentally, belied by the plain language and intent of the statute and the
12 statute’s accompanying legislative history. Defendants then argue that even if Plaintiffs’
13 interpretation of the statute is correct, it is immaterial given Plaintiffs’ alleged knowledge of
14 Defendants’ infringement more than 18 months before Fifty-Six filed its Nevada Registration. In
15 doing so, Defendants misrepresent that there are no genuine issues of material fact when, on the
16 contrary, AVELA’s own licensee, Freeze, and AVELA’s former attorney, much less Plaintiffs’
17 witnesses, have offered testimony directly contradicting Defendants’ assertion as to when
18 Plaintiffs had notice of [both any] infringement and the AVELA Defendants’ infringement.
19 Lastly, Defendants’ argument that Plaintiffs seek retroactive application of the statute again
20 misreads the plain language of the statute, contravenes the statute’s legislative history and
21 purpose, and confuses the concept of retroactivity.
22 1. Plaintiffs’ Right of Publicity Claim Against Defendants is Not

Forfeited By Registration After Unrelated Third-Party Infringements
23
24 Notably lost on Defendants, the purpose of the statute is to create rights of publicity, not
25 destroy them. See NRS § 597.790(1) (“There is a right of publicity in the name, voice, signature,
26 photograph or likeness of every person. The right endures for a term consisting of the life of the
27 person and 50 years after his death, regardless of whether the person commercially exploits the
28 right during his lifetime.”); and NRS § 597.790(2) (“Any commercial use by another of the name,
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1 voice, signature, photograph or likeness of a person requires the written consent of that person or
2 successor in interest unless . . .”.
3 Next, registration under the Nevada right of publicity statute is permissive, not mandatory.
4 (“A successor in interest or a licensee of a deceased person may file in the office of the secretary
5 of state, . . . a verified application for registration of his claim.” NRS § 598.800(3) (emphasis
6 added.) Registration is clearly a factor of providing notice to people and businesses wanting to
7 use another’s right of publicity. NRS § 598.800(5) (“A person, firm or corporation seeking to use
8 the name, voice, signature, photograph or likeness of a deceased person for commercial purposes
9 must first make a reasonable effort, in good faith, to discover the identity of any person who
10 qualifies as a successor in interest to the deceased person.”)
11 It is the next sentence in NRS § 598.800(5) that Defendants contort to try to have the
12 statute provide for a forfeiture of rights when registration is not effected within 6 months after the
13 date the claimant “becomes aware or should reasonably have been aware of an unauthorized
14 commercial use of the deceased person’s” personality. Defendants somehow extrapolate from
15 this a draconian statutory regime mandating a claimant’s registration within 6 months of any
16 unauthorized commercial use. If he does not, according to Defendants’ self-serving reading of
17 the statute, the claimant loses all future right of publicity claims for all unauthorized uses and
18 releases the deceased person’s personality to the public domain for anyone to use free of charge.
19 Defendants’ interpretation is at odds with the statutory language providing that registration is
20 permissive, not mandatory, not to mention the purpose of the statute which is to memorialize
21 post-mortem rights of publicity in Nevada, not to eliminate them forever, merely by failing to
22 register upon notice of any infringement, no matter how small or trivial. Defendants argue a
23 statutory intent to wipe out, rather than to protect, celebrity name and likeness rights.
24 Plaintiffs submit that NRS § 598.800(5) stands for the proposition that registration must
25 occur within 6 months of a successor claimant’s knowledge of a particular infringer’s commercial
26 use. If registration occurs after 6 months of the infringer’s use, that a particular infringer is
27 immune from a statutory right of publicity claim for that particular use. This interpretation is
28 consistent with NRS § 598.800(4), which provides that a successor claimant “may not assert any
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1 right against any unauthorized commercial use of the deceased person’s name, voice, signature,
2 photograph or likeness that begins before the filing of an application to register his claim.”
3 (emphasis added.) Thus, a particular infringer has two ways to avoid a right of publicity claim for
4 a particular use -- under NRS § 598.800(4), if he is using the deceased person’s identity before
5 registration occurs (and therefore cannot fulfill his obligation under NRS § 598.800(5) to make a
6 reasonable good faith effort to locate the successor claimant), or -- under NRS § 598.800(5), if the
7 successor claimant does not register his claim within 6 months of discovering or should have
8 discovered the infringer’s commercial use of the deceased person’s identity. The infringer is not
9 given immunity from liability under either section -- rather, only the particular use at issue is
10 given immunity. This is a case of first impression. Plaintiffs’ interpretation of the statute should
11 be accepted for these reasons and the reasons set forth below.
12 First, another district court in Nevada expressly declined to interpret the statute according
13 to the interpretation advocated by Defendants here. Specifically, in Fifty-Six Hope Road Music,
14 Ltd. v. Mayah Collections, Inc., Case No. 2:05-CV-05-1059-KJD-GWF, the Court forewent
15 examination of whether “NRS § 597.800 requires registration within 6 months of learning of any
16 unauthorized use of publicity images, or of the unauthorized use of publicity images by a
17 particular defendant.” (Order filed May 10, 2007, Docket No. 102 at pp. 5-6, RJN 5.) Thus, as
18 noted, this is an issue of first impression for this Court and there is no binding precedent of
19 consequence established in the earlier case.2
20 Second, Defendants embellish the statute by arguing that it creates a “strict” registration
21 system whereby a claimant has a “duty to register” its claim within 6 months of becoming aware
22 of any unauthorized commercial use of deceased person’s personality lest he waive all rights in
23 perpetuity. (Def. MSJ, p. 20.) This is simply not what the statute plainly says. Instead, NRS
24 § 597.800(3) states “a successor in interest . . . may file in the Office of the Secretary of State . . .
25 a verified application for registration of his claim.” Unless the context demands otherwise, the
26 term “may” is permissive. See S.N.E.A. v. Daines, 108 Nev. 15, 19 (1992). Thus, registration
27 2
Defendants contend the earlier case held there was a waiver of all rights of publicity. (MSJ,
28 p. 7.) Not so. The court said that there was a waiver “in this instance.” (RJN, Ex. 5, p. 6.)
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1 under the statute is fundamentally permissive, and the rest of the statute must be read in this light.
2 Interpreting NRS § 597.800(5) to allow a wholesale forfeiture of a claim cannot be reconciled
3 with the claimant’s sovereignty as to if and when he will register his claim.
4 Third, while Defendants wish to tip the balance of the statute to weigh in favor of
5 potential infringers, Plaintiffs rightly read the statute as firmly favoring rightful successor
6 claimants -- the statute’s subject and protected class. Defendants imagine a scenario where
7 successor claimants wield their permission to register their claim offensively to file actions
8 against “unsuspecting user[s].” (Def. MSJ, p. 23). This is a fallacy. Due to the statute’s
9 registration system (see infra) and the protections provided in NRS §§ 597.800(4) and (5) for
10 legitimately unsuspecting uses, all such uses are free from liability by the very terms of the
11 statute. In fact, it is Defendants’ interpretation that produces an absurd result. Namely,
12 Defendants propose a statutory reading whereby a successor claimant will forfeit his right of
13 publicity claim in total to the public domain based on one single infringement, regardless of the
14 scope of said infringement (e.g., for instance, a single act of infringement at a flea market), and
15 despite how well-known it might be that the successor, though unregistered, is the rightful
16 claimant to the right of publicity. For example, if Valencia is believed, he did not need the
17 benefit of the Nevada Registration because he knew that Plaintiffs had the rights to Bob Marley
18 when he allegedly approached Mike Conley of Zion in February 2005 at the MAGIC show. Even
19 though Valencia had such knowledge, Fifty-Six’s alleged failure to then timely register the mark
20 forfeits its rights of publicity in Bob Marley. This contorted result is at odds with the language of
21 the statute and its purpose of granting, not destroying, intellectual property rights.
22 Fourth, Defendants’ interpretation also contravenes another important aspect of the
23 statute, namely, providing notice to prospective commercial users of a deceased person’s per-
24 sonality and establishing an efficient system of registration. This aim can be gleaned from the
25 language of the statute itself. NRS §§ 597.800(3) and (6) establish a central place where all
26 applications for registration of a right of publicity, namely, the Office of the Secretary of State;
27 mandate that all applications include information necessary for efficiently determining the
28 identity of the applicant and on whose behalf he is asserting the claim; and give the Secretary of
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1 State the power to destroy records of registration once the post-mortem right has timed out. NRS
2 § 597.800(5) mandates that any person or entity seeking to commercially use the personality of a
3 deceased person has a duty to first make a good faith, reasonable effort to discover the identity of
4 “any person who qualifies as a successor in interest to the deceased person.” Given that a
5 claimant may not assert any rights against a commercial use that begins before he files an appli-
6 cation to register his claim (NRS § 597.800(4)), the statute plainly contemplates that any
7 prospective commercial user of a deceased person’s personality must search the Secretary of
8 State’s records of registrations and otherwise seek to identify the successor claimant before using
9 the deceased person’s name or likeness. This comports with the permissive nature of registration
10 under the statute, and the statute’s built-in protections against liability for unsuspecting users.
11 Fifth, the statute’s construction and legislative history also argue against Defendants’
12 interpretation of NRS § 597.800(5), namely, that that subsection’s last two sentences should be
13 construed to sanction a total forfeiture of rights if the claimant does not register his right within
14 6 months of knowledge of any infringement. Defendants refuse to read the last sentence
15 independent of the subsection of the prior sentence. However, Defendants ignore the first
16 sentence of § 597.800(5) which mandates that each potential user of a deceased person’s person-
17 ality make a diligent search to discover the identity of any applicable successor claimant. Defen-
18 dants cannot arbitrarily read the last two sentences of § 597.800(5) together, but ignore the first
19 sentence. Either all three sentences must be considered together, such that the last sentence’s
20 waiver relates to each individual user’s responsibility to diligently confirm their right to use a
21 deceased person’s personality, or they must be construed separately and independently, such that
22 the last sentence confirms that a right of publicity suit is waived absent a valid registration. The
23 sentences cannot be arbitrarily grouped together to support an interpretation helpful to
24 Defendants’ defense in the instant case.
25 Sixth, the statute is clear on its face that one instance of infringement is insufficient to
26 forever destroy a successor’s rights. To the extent the statute is deemed to be ambiguous, the
27 Court should view “the ‘context’ and ‘spirit’ in which it was enacted to effect a construction that
28 best represents the legislative intent in enacting the statute.” Citizens for Cold Springs v. City of
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1 Reno, 2009 Nev., LEXIS 53, *10 (2009). “If possible, legislative intent should be determined by
2 looking at the act itself.” List v. Whisler, 99 Nev. 133, 139 (1983). For determining legislative
3 intent, resource to extrinsic sources is not impermissible in Nevada. Tahoe Regional Planning
4 Agency v. McKay, 769 F.2d 534, 537 n.6 (9th Cir. 1985). Based on the statutory text itself, the
5 purpose of NRS § 597.770, et seq. is, fundamentally, to grant post-mortem rights of publicity to
6 successor claimants. See Minutes of the Nev. Sen. Comm. on Commerce and Labor, 65th Sess.,
7 June 2, 1989; Defendants’ Request for Judicial Notice [“RJN”] 7 (discussion of the significant
8 intellectual property rights potentially granted to estates of Orson Welles and Liberace based on
9 passage of statute). The statute must be interpreted to effectuate this intent. Defendants’ prof-
10 fered interpretation of the statute guts its granting of rights, mandating the total forfeiture of a
11 valid claim to a post-mortem right of publicity if the claimant has, or should have, knowledge of
12 any unauthorized use of the deceased person’s personality, regardless of its scope, more than
13 6 months before registering his claim, which, again, is permissive in the first place. This
14 interpretation contravenes the spirit of the statute and the legislature’s intent in enacting it, and
15 must be avoided lest the statute lose its remedial effect.
16 2. Plaintiffs’ Registered Their Right of Publicity Claim Within 6 Months
of Their First Knowledge of Defendants’ Infringement
17
18 Even if Defendants’ interpretation is accepted by the Court (which it should not), there is
19 a factual dispute as to when Plaintiffs had knowledge or should have known of Defendants’
20 infringement in Nevada. Fifty-Six registered its right of publicity with the Nevada Secretary of
21 State within 6 months of learning of Tunes’ and Legends 4 Life’s unauthorized use of the Marley
22 IP, the first unauthorized use of Bob Marley’s personality in Nevada of which it had knowledge.
23 Tunes’ and Legends 4 Life’s infringement were the subject of the Mayah Collections suit. (SDF
24 ¶20.) Specifically, Plaintiffs encountered Tunes’ and Legends 4 Life’s infringing merchandise at
25 the August 2005 MAGIC Tradeshow in Las Vegas, Nevada, and shortly thereafter filed suit.
26 (SDF ¶20.) Fifty-Six then registered its right of publicity on January 24, 2006, within 6 months
27 of its first knowledge in August 2005. (SDF ¶20.) Therefore, even if Defendants’ interpretation
28 of NRS § 597.770, et seq. is adopted by the Court, it is of no consequence given that Plaintiffs
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1 registered their right of publicity within 6 months of their first knowledge of Defendants’
2 infringement in Nevada.
3 Defendants cannot genuinely maintain that there is no genuine issue of material fact as to
4 when they began exploiting the Bob Marley images and when Plaintiffs first became aware, or
5 reasonably should have become aware, of said use. Defendants claim that they began showing
6 the Bob Marley images for license as early as August 2004. However, the only “evidence”
7 supporting this is the declaration of Valencia. Defendants have presented no other evidence of
8 Plaintiffs’ alleged specific knowledge of Defendants’ alleged use of the Bob Marley images.
9 However, as noted above, there is compelling contradictory evidence from photographer

10 Roberto Rabanne, Attorney Gregg Paradise, Mike Conley of Zion, and Kim Cauley of Freeze.
11 Rabanne testified that he and AVELA entered into their agreement in July 2006, that he did not
12 give Valencia the photographs of Bob Marley until June 2006, and that Valencia asked Rabanne
13 to backdate the contract to January 2005 in order to support an earlier date. (SDF ¶1.) Consistent
14 with the actual July 2006 contract date Rabanne testified to, Paradise testified3 that he was not
15 asked by Valencia to review his use of Bob Marley photographs until August 2006. (SDF ¶3.)
16 Conley of Zion testified that he did not recall seeing any Bob Marley photographs in the binder of
17 images Valencia presented to him at the February 2005 MAGIC tradeshow. Conley’s testimony
18 is consistent with the declaration of his licensing agent (Formica) and with Formica’s emails with
19 Valencia, attaching additional photographs to consider, none of which included images of Bob
20 Marley. (SDF ¶¶4-5.) Ms. Cauley of Freeze was more direct. She testified that the binder that
21 she saw at the February 2005 MAGIC show did not include any Bob Marley photographs. (SDF
22 ¶4.) Put succinctly, there is clearly a question of material fact as to whether Defendants began
23 using the Bob Marley images before Plaintiffs’ registration.
24 3. Nevada’s Right of Publicity Statute Applies to Defendants’

Commercial Use of Bob Marley’s Image
25
26 Defendants’ argument that Nevada’s right of publicity statute does not apply to their
27 3
The AVELA Defendants waived the privilege relating to Paradise to support their unpled
28 advice of counsel defense.
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1 commercial use of Bob Marley’s image because Bob Marley died before the statute was enacted
2 fails for several reasons.
3 First, it is repudiated by the plain language of the statute. NRS 597.780 states that “the
4 provisions of NRS §§ 597.770-597.810, inclusive [i.e., Nevada’s right of publicity statute], apply
5 to any commercial use within this state of a . . . deceased person’s . . . likeness regardless of the
6 person’s domicile.” (Emphasis added.) As only persons who had died before the statute became
7 effective could be “deceased” when it became effective, this statutory language mandates that
8 persons who died before its effective date be covered by it. NRS § 597.790(1) further provides
9 that this protection “endures for a term consisting of the life of the person and 50 years after his
10 death . . .” The statute thus expressly prohibits unauthorized commercial use of the publicity
11 rights of persons who had died up to 50 years before its 1989 enactment, such as Bob Marley.
12 Second, legislative history surrounding Nevada’s right of publicity statute confirms that it
13 applies to persons who died before its enactment. When considering passage of Nevada’s right of
14 publicity statute, the Nevada Senate Committee on Commerce and Labor discussed unauthorized
15 commercial uses of Orson Welles’ image without the permission of his estate, and stated that “a
16 ‘right of publicity’ bill will stop that practice.” (Minutes of the Nevada Senate Committee on
17 Commerce and Labor, 65th Sess., June 2, 1989; RJN 7.) The same Committee noted that a
18 Nevada statute was needed because Elvis Presley’s estate had filed suit in Tennessee to stop an
19 unauthorized Nevada tribute show, which could prohibit imitations of Elvis in Nevada absent a
20 Nevada statute. Id. It contemplated that passage of a Nevada right of publicity statute would
21 solve that problem, which it could do only if the statute applied to Elvis Presley’s estate. Id. The
22 Nevada legislature also considered the rights associated with Liberace. Id. The Nevada legis-
23 lature thus obviously intended the Nevada right of publicity statute to both protect and regulate
24 the commercial uses of “deceased persons” who died before its enactment, such as Orson Welles,
25 Elvis Presley, Liberace, and Bob Marley.4
26
4
27 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.
28 (PRJN ¶6.) Bob Marley died on May 11, 1981. (SUF ¶1.)
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1 Third, Defendants’ argument to the contrary is based on the erroneous premise that Plain-
2 tiffs ask this Court to apply Nevada’s right of publicity statute “retroactively.” Plaintiffs do not
3 do so, because all of the infringing conduct that Plaintiffs complain of took place at least 12 years
4 (depending who the jury believes) after the statute was enacted. As the Nevada Supreme Court
5 stated in Public Employees Benefits Program v. LVMPD, 124 Nev.Adv.Op. No. 14, 179 P.3d
6 542, 553 (2008):
7 [J]ust because the statute draws upon past facts does not mean that it operates
“retrospectively.” A statute has retroactive effect when it “takes away or impairs
8 vested rights acquired under existing laws, or creates a new obligation, imposes a
new duty, or attaches a new disability, in respect of transactions or considerations
9 already passed.”
10 179 P.3d at 553 (internal quotations and citations omitted.) A statute acts “retroactively” only
11 when it takes away vested rights a party previously had, or makes illegal acts that were legal
12 when done.
13 Here, Nevada’s right of publicity statute was enacted in 1989. Even if Defendants’
14 allegations were true, any “transactions” or “considerations” upon which they base their infringe-
15 ment first took place in 2004 or 2007, more than 15 years after the statute’s enactment. (MSJ,
16 p. 21.) Thus, Defendants had no vested “right” to exploit Bob Marley’s image when they did so,
17 and the statute did not make illegal any transactions or product distributions which were legal
18 when Defendants engaged in them. Instead, Plaintiffs seek to apply Nevada’s right of publicity
19 statute prospectively to infringements that occurred years after the statute became law. Defen-
20 dants’ entire “retroactivity” argument is therefore irrelevant, regardless of the date of Bob
21 Marley’s death. See Miller v. Burke, 124 Nev. 56, 188 P.3d 1112, 1121 (2008) (term limits
22 legislation applied to officials elected before the statute’s enactment, because the term limits did
23 not affect the officials until years that statute was enacted, and applying the statutory limits to
24 such officials was not retroactive and “constitutes a prospective-only application”).
25 Fourth, Defendants’ citation to California law to “support” its arguments lacks merit
26 because the California right of publicity statute affirmatively supports application of Nevada’s
27 right of publicity statute to Bob Marley to the extent it is relevant here. The legislative history
28 indicates (and Defendants argue (MSJ, p. 27) that the Nevada right of publicity statute is indeed
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1 based in part on the California posthumous right of publicity statute. (Minutes of the Nevada
2 Senate Committee on Commercial Labor, RJN 7.) First enacted in 1984, the California statute
3 now contains express language which creates publicity rights that apply to individuals who died
4 up to 50 (and later, 70) years before its effective date. Cal.Civ.Code § 3344.1(a),(h). California
5 legislative history demonstrates that the California statute was always intended to apply to a
6 “deceased personality” who died before its January 1, 1985 effective date. The statute was
7 enacted in 1984 to legislatively overrule a California Supreme Court decision which held that the
8 estate of Bela Lugosi had no common law posthumous right of publicity in California.
9 (California Senate Committee on Judiciary 1983-84 Regular Session, Report on “Commercial

10 Exploitation of Deceased Celebrities, PRJN 1, pp 2-3; California Assembly Committee on
11 Judiciary Report on § SB 613, California’s Right of Publicity Statute, PRJN 2, p. 2.) See also
12 Gugliemi v. Spelling-Goldberg Productions, 25 Cal.3d 860, 861 (1979). Pricilla Presley and
13 celebrity estate representatives testified in support of the California posthumous right of publicity
14 statute. (See PRJN 1, p. 3); California Senate Democratic Caucus Judiciary Committee Summary
15 of “Arguments In Support” of S.B. 613, California’s Posthumous Right Of Publicity Statute,
16 PRJN 3, p. 1.) The California Assembly Committee on Judiciary noted that S.B. 613 protected
17 “deceased personalities,” who “would include any natural person who died after January 1,
18 1935.” (PRJN 2, pp. 2, 8.) The California Supreme Court and other courts construing
19 California’s 1984 posthumous right of publicity statute have routinely applied it to persons who
20 died before its enactment. See, e.g., Comedy III Productions, Inc. v. Gary Saderup, Inc., 25
21 Cal.4th 387 (2001), (applying California’s posthumous right of publicity statute to the “Three
22 Stooges,” who all died before 1976.)
23 Indeed, the California legislature felt so strongly about this issue that it legislatively
24 overruled the only California district court to mistakenly rule otherwise. Within a few months of
25 that mistaken ruling, the California legislature passed legislation which clarified that it always
26 intended California’s posthumous right of publicity statute to apply to individuals who died
27 before the statute’s effective date. As the district court which had made the initial ruling subse-
28 quently acknowledged, “[t]he bill [clarifying California right of publicity law] states that all
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1 celebrities who died within 70 years of January 1, 1985 . . . have a posthumous right of publicity
2 that is deemed to have existed at the time of their death.” Milton H. Greene Archives, Inc. v.
3 CMG Worldwide, Inc., 2008 WL 655604, *3 (C.D. Cal. Jan. 7, 2008).
4 The California right of publicity statute was always intended to protect individuals who
5 died before its effective date, as California’s legislature recently clarified. Defendants ask this
6 Court to ignore this clarification, as well as the statutory language, legislative history, and earlier
7 judicial applications of the California statute which preceded it, to make the same mistake in
8 construing Nevada’s right of publicity statute that another court made in construing California’s.
9 The Nevada right of publicity statute’s plain language, legislative history, and predecessor
10 California statute all demonstrate that the Nevada statute applies, and was always intended to
11 apply, to persons such as Bob Marley, who died within 50 years of its 1989 enactment.
12 B. Defendants Are Not Entitled to Summary Judgment on Plaintiffs’ Trademark

and False Association Claims
13
14 In their MSJ, Defendants concede Plaintiffs’ ownership of the BOB MARLEY mark for
15 apparel and related items, but contend that they have not used the BOB MARLEY mark as a
16 trademark. However, Defendants fail to recognize Fifty-Six’s trademark rights in Bob Marley’s
17 identity and persona, and the Ninth Circuit cases establishing those rights. Such a trademark right
18 is not a claim to specific images of Bob Marley or a blanket right to all Bob Marley images, but a
19 discrete right to use Bob Marley’s identity and persona, which Defendants have brazenly
20 infringed by manufacturing apparel and beach towels bearing indicia of his identity.
21 Moreover, Defendants have incontrovertibly used the BOB MARLEY mark on displays
22 associated with Defendants’ goods. Although Defendants’ claim that the use of BOB MARLEY
23 is a descriptive, fair use under the Lanham Act, they have utterly failed to establish that there is
24 no genuine issue of material fact, thereby precluding summary judgment on their descriptive use
25 defense. Defendants ignore recent Ninth Circuit precedent establishing that the fair use defense is
26 inappropriate for summary judgment due to its dependence on disputed facts, ignore the role of
27 likelihood of confusion in determining whether a use is, in fact, fair, and decline to make any
28 showing that they used the BOB MARLEY mark in good faith, presumably because their bad
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1 faith is so easily established.
2 1. Plaintiffs’ Own Trademark Rights in Bob Marley’s Identity

3 Fifty-Six clearly owns trademark rights in the identity,5 and all features composing the
4 identity, of Bob Marley. In celebrity cases, the term “mark” applies to the celebrity’s persona.
5 Downing v. Abercrombie & Fitch, 265 F.3d 994, 1007 (9th Cir. 2001). As the Ninth Circuit held:
6 A false endorsement claim based on the unauthorized use of a celebrity’s identity

is a type of false association claim, for it alleges the misuse of a trademark, i.e., a
7 symbol or device such as a visual likeness, voice imitation, or other uniquely
distinguishing characteristic, which is likely to confuse consumers as to the
8 plaintiff’s sponsorship or approval of the product.
9 Waits v. Frito-Lay, Inc., 978 F.2d 1093, 1110 (9th Cir. 1992).
10 Courts have noted that a “Lanham Act false endorsement claim is the federal equivalent of
11 the right of publicity.” ETW Corp. v. Jireh Pub., Inc., 332 F.3d 915, 924 (6th Cir. 2003), citing
12 Bruce P. Keller, The Right of Publicity: Past, Present, and Future, 1207 PLI Corp. Law and Prac.
13 Handbook, 159, 170 (Oct. 2000).
14 Plaintiffs clearly have a commercial interest in the exploitation of aspects of Bob Marley’s
15 identity, including his image and likeness. Plaintiffs have consistently used the identity of Bob
16 Marley as a trademark, and enforced its unauthorized use. Fifty-Six has licensed Bob Marley’s
17 identity to licensees for the manufacture and sale of apparel and other merchandise since at least
18 as early at 1986. (SUF ¶42.) Fifty-Six’s affiliate company owns an incontestable trademark
19 registration that includes Bob Marley’s image. (SUF ¶35.) Fifty-Six has exclusively licensed
20 Bob Marley’s identity to Zion for Zion’s manufacture and sale of the various apparel and
21 merchandise since 1999, and Bob Marley’s image and likeness has been prominently placed on
22 merchandise manufactured and sold by Zion and others. (SUF ¶23.) As a result, all recognizable
23 and distinctive aspects of Bob Marley’s identity, not least of which is his image and likeness,
24 serve a source-identifying function. (SUF ¶40.) See Waits, 978 F.2d at 1106 (“courts have
25 recognized false endorsement claims brought by plaintiffs, including celebrities, for the unautho-
26
5
27 Plaintiffs set forth all of the facts and authority establishing Fifty-Six’s ownership in Bob
Marley’s identity, including his image, in its 43(a) MSA, pp. 3-8, 12-21. To avoid repetition,
28 Plaintiffs do not reassert all of those facts and authority in this opposition.
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1 rized imitation of their distinctive attributes, where those attributes amount to an unregistered
2 commercial ‘trademark’ ”); see also Allen v. National Video, 610 F. Supp. 612, 625-26 (S.D.N.Y.
3 1985) (celebrity has commercial investment in name and face tantamount to interests of a trade-
4 mark holder in a distinctive mark). Plaintiffs have established trademark rights in the identity of
5 Bob Marley sufficient to support their Lanham Act claim.
6 2. Defendants Have Used Reproductions of the Marley IP in Connection

with the Sale and Distribution of Goods
7
8 Defendants have widely and intentionally used the Marley IP in the sale and distribution
9 of apparel and other merchandise on a nationwide basis. Specifically, the AVELA Defendants
10 have licensed photographs of Bob Marley to Defendants JEM and Freeze, as well as to ten other
11 licensees for the manufacture and sale of the Bob Marley Products. Defendants have also
12 knowingly allowed retailers to use the BOB MARLEY mark in promotion of their products and
13 in displays and advertisements accompanying their products. By licensing photographs of Bob
14 Marley and music titles and lyrics to manufacturers and maintaining control over use of those
15 photographs, as well as knowingly allowing retailers to use the BOB MARLEY mark, the
16 AVELA Defendants have clearly and unequivocally used the Marley IP in connection with the
17 sale of goods. Similarly, by using the Bob Marley photographs on apparel and selling these
18 products to retailers and knowingly allowing retailers to use the BOB MARLEY mark, JEM and
19 Freeze are also using the Marley IP in connection with the sale of goods.
20 a. Defendants Have Used Copies and Reproductions of Plaintiffs’
Trademark in Bob Marley’s Identity
21
22 Defendants’ use of photographs depicting Bob Marley on their products is an unautho-
23 rized use of Plaintiffs’ trademark in Bob Marley’s identity. Defendants fail to address this point.
24 Despite Defendants’ characterization of the Sixth Circuit’s decision in ETW, the Ninth Circuit has
25 consistently held that commercial exploitation of a celebrity’s identity is an infringing trademark
26 use. Without a doubt, a celebrity’s or celebrity’s successor-in-interest’s trademark rights in the
27 celebrity’s identity extends to many aspects of identity and persona, including, if not most
28 obviously, the celebrity’s image and likeness. See White v. Samsung Electronics America, Inc.,
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1 971 F.2d 1395, 1396 (9th Cir. 1992) (court upheld television personality Vanna White’s unfair
2 competition claim under § 1125(a) based on the defendant’s use of a robot constructed in a way to
3 “resemble White’s hair and dress” in advertisement); see Downing, 265 F.3d at 1008 (entry of
4 summary judgment reversed because plaintiffs, legendary surfers, raised valid § 1125(a) claim for
5 use of their pictures in defendant’s clothing catalog). Defendants cannot seriously assert that they
6 are not using Bob Marley’s image and likeness as a trademark when they are using it in the exact
7 same manner as Plaintiffs, namely, conspicuously on the front of apparel and beach towels,
8 thereby casting the same impression upon consumers as that cast by Plaintiffs.
9 Plaintiffs’ survey results strengthen Plaintiffs’ position that Defendants are using Bob
10 Marley’s identity -- namely, his image and likeness -- in a source-identifying, trademark manner.
11 See E&J Gallo Winery v. Gallo Cattle Company, 967 F.2d 1280, 1292 (9th Cir. 1992). Plaintiffs’
12 survey expert conducted a survey with the primary and relevant purpose of determining “whether
13 potential purchasers of graphic or screened T-shirts are likely to mistakenly believe that the heirs,
14 estate or agents of [Bob] Marley . . . are the source or the sponsor of, or are affiliated with,
15 [Defendants’] T-shirts bearing Bob Marley’s image” (“the Survey”). (SUF ¶79.) The Survey
16 found that 42% of Survey respondents in the test group believed that Bob Marley (or “the person
17 on the shirt”) or his heirs, estate, or agents was the source or sponsor of the T-shirt bearing Bob
18 Marley’s likeness. (SUF ¶85.) The comparable percentage for the control group was 22%,
19 resulting in a net confusion rate of 20% (the control group’s 22% confusion is subtracted from the
20 test group’s 42% confusion rate to eliminate guessing or other “noise”). (SUF ¶86.) A 20%
21 confusion rate constitutes strong evidence indicating a likelihood of confusion. See Jada Toys,
22 Inc., v. Mattel, Inc., 518 F.3d 628, 636 (9th Cir. 2008) (28% association rate for word mark and
23 7% association rate for design mark indicated evidence of likelihood of dilution (association) and
24 precluded summary judgment); see also Exxon Corp. v. Texas Motor Exchange, Inc., 628 F.2d
25 500, 507 (5th Cir. 1980). Defendants’ attacks on the Survey miss the point; the Survey was
26 conducted to establish, and certainly does establish, the rate of confusion related to Defendants’
27 use of Bob Marley’s identity on their products.
28 Defendants’ reliance on the ETW decision is unavailing. First, the Ninth Circuit has
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1 firmly established that celebrities have trademark rights in their identities and personas. To the
2 extent ETW, a Sixth Circuit opinion, contradicts this position, it must be disregarded. Second,
3 ETW does not stand for the proposition that celebrities do not have trademark rights in their
4 identities6, but instead that, in the context of that particular case, “[i]mages and likenesses of
5 [plaintiff Tiger] Woods are not protectable as a trademark because they do not perform the
6 function of designation.” ETW, 332 F.3d at 922. In ETW, the goods at issue were reproductions
7 of expensive serigraphs and lithographs, not bargain bin t-shirts priced to sell. These paintings
8 featured numerous “transformative elements,” including the depiction of other golfing legends
9 looking upon Tiger Woods from the heavens and a depiction of the clubhouse at the Masters
10 Tournament, so that the value and appeal of the painting derived from the creativity and skill of
11 the artist, not Woods’ identity or celebrity. See Id. at 937 (holding that literal depictions of
12 celebrities versus the greater protection afforded transformative, artistic renderings -- are relevant
13 in determining whether the Lanham Act applies to a product). Notably, Woods had not exploited
14 his identity through paintings such that consumers might associate such a product with him.
15 This is markedly different from this case where consumers are likely to believe that the
16 Bob Marley Products are endorsed by or associated with Plaintiffs by virtue of their longtime and
17 popular exploitation of Bob Marley’s image and likeness on apparel. (SUF ¶¶40, 44, 83.) The
18 value of Defendants’ products is singularly premised on the celebrity of Bob Marley and
19 Plaintiffs’ trademark therein, (not as in ETW) based on any added artistic or transformative
20 elements. To the extent text is added to Defendants’ products, it is almost always Marley song or
21 album titles or song lyrics, further associating the products bearing Bob Marley’s image with his
22 identity. The ETW case is factually inapposite as to preclude any meaningful application to the
23 instant case.
24 Based on the above Ninth Circuit precedent, Defendants are wrong in contending that by
25 not asserting trademark rights in a specific image, Plaintiffs have no redress under § 1125(a) of
26
6
27 “False endorsement occurs when a celebrity’s identity is connected with a product or service
in such a way that consumers are likely to be misled about the celebrity’s sponsorship or approval
28 of the product or service.” ETW, 332 F.3d at 925.
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1 the Lanham Act for Defendants’ unauthorized exploitation of Bob Marley’s image and likeness.
2 Plaintiffs have established their trademark rights in Bob Marley’s identity. Plaintiffs’ § 1125(a)
3 claim is not premised upon Plaintiffs’ claim of trademark rights in all images of Bob Marley; it is
4 premised upon Defendants’ commercial use of a symbol -- Bob Marley’s identity -- in a manner
5 that falsely associates their goods with Bob Marley and Plaintiffs and/or suggests that Bob
6 Marley and Plaintiffs endorse their goods7.
7 Defendants’ argument based on Nike’s Michael Jordan mark confuses the nature of
8 Plaintiffs’ claim. (MSJ, p. 17.) While Nike may not be entitled to assert a false association claim
9 for the unauthorized use of Michael Jordan’s image on a product, Michael Jordan himself, as the
10 rightful owner of a trademark in his identity and persona, most certainly does. Just as the Ninth
11 Circuit has established that unlicensed commercial use of indicia of a celebrity’s identity infringes
12 the celebrity’s trademark rights in his identity, Defendants’ unauthorized use of images of Bob
13 Marley infringes Plaintiffs’ trademark rights in Bob Marley’s identity.
14 b. Defendants Have Used Copies and Reproductions of Plaintiffs’
BOB MARLEY Trademark
15
16 Defendants’ commercial use of the name BOB MARLEY, and the image and likeness of
17 Bob Marley, both constitute infringing uses of the BOB MARLEY mark. Defendants’ use of the
18 BOB MARLEY mark on and in association with apparel -- goods in which Plaintiffs have
19 indisputably accrued rights under the BOB MARLEY mark -- creates a presumption of
20 confusion. See Lozano Enterprise v. La Opinion Publishing Co., 44 U.S.P.Q.2d 1764, 1767
21 (C.D. Cal. 1997), quoting Opticians Ass’n v. Independent Opticians, 920 F.2d 187, 193 (3d Cir.
22 1990) (holding that a defendant’s use of marks identical to the plaintiff’s marks for competitive
23 services renders the confusion test under § 1114 “open and shut”).
24 Defendants’ use of the marks BOB MARLEY and MARLEY in commerce and on the
25 internet infringes Plaintiffs’ federally registered BOB MARLEY trademark, capitalizes on
26 Plaintiffs’ goodwill in that mark and its rights in Bob Marley’s identity, and further conjures
27
7
28 Plaintiffs have also sufficiently pled their § 1125(a) claim in the FAC, as noted above.
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1 Defendants’ association with and/or endorsement by Bob Marley and Plaintiffs. The Lanham Act
2 defines “use in commerce” as “the bona fide use of a mark in the ordinary course of trade, on
3 goods, when it is placed in any manner on the goods or their containers or the displays associated
4 therewith.” 15 U.S.C. § 1127 (emphasis added). While Defendants do not use MARLEY or
5 BOB MARLEY directly on the apparel itself, Defendants use the marks in displays associated
6 with the apparel. Specifically, Defendants’ use of the marks BOB MARLEY and MARLEY on
7 online retailers’ listings for the Bob Marley apparel, planogram label strips (also known as shelf
8 labels), on the garments themselves, and metadata, among other uses, constitute displays
9 associated with Defendants’ apparel. All of these uses are uses in connection with Defendants’
10 goods triggering the protections of §§ 1114 and 1125(a). Brookfield Communications, Inc. v.
11 West Coast Entertainment Corp., 174 F.3d 1036, 1062 (9th Cir. 1999). At a minimum, there is a
12 factual dispute on this issue, precluding summary judgment in Defendants’ favor.
13 Analysis of the other factors in AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th
14 Cir. 1979) further ground Plaintiffs’ argument that the marks are likely to be confused.
15 Defendants’ Bob Marley Products and Plaintiffs’ products are offered through identical channels
16 of trade, namely, retail outlets and the internet. (SUF ¶72.) Indeed, Plaintiffs are aware of at
17 least one retailer, Wet Seal, who stopped selling Plaintiffs’ products in favor of Defendants solely
18 because they were cheaper. (SUF ¶75.) Plaintiffs have also established the strength of the BOB
19 MARLEY mark based on the 20-plus year history as an indicator of source, and Plaintiffs’
20 concomitant and consistent policing of their rights therein. (SUF ¶¶42, 45.) Plaintiffs’ and
21 Defendants’ Bob Marley products (t-shirts, etc.) are also inexpensive items, such that the public is
22 not likely to exhibit much care or sophistication when purchasing them. (SUF ¶76.) To this
23 point, a buyer from Target and one of the AVELA Defendants’ licensees, JGR Copa, testified that
24 Defendants’ products were impulse buys. (SUF ¶¶77-78.) In using the BOB MARLEY mark in
25 such a manner and on goods offered by Plaintiffs under the BOB MARLEY mark, the Bob
26 Marley Products are likely to be confused with Plaintiffs’ licensed Bob Marley products and/or
27 consumers are likely to associate Defendants’ products with Plaintiffs or the Bob Marley heirs, or
28 believe that they sponsored, licensed or approved Defendants’ Bob Marley Products.
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1 Additionally, Defendants’ use of Bob Marley’s image and likeness on the products
2 themselves constitutes use of the BOB MARLEY word mark by virtue of the doctrine of legal
3 equivalents. Under the legal equivalents or “picture-word equivalency” doctrine, a trademark
4 owner’s rights in a word can be infringed by use of a picture if the word and the picture evoke the
5 same mental impression, or vice versa. “[I]t is established that where a mark comprises a
6 representation of an . . . individual and another mark consists of the name of that . . . individual,
7 such designations are to be regarded as legal equivalents in determining likelihood of confusion
8 under the Trademark Act.” McCarthy § 23:27, citing Squirrel Brand Co. v. Green Gables Inv.
9 Co., 223 U.S.P.Q. 154, 155 (TTAB 1984). This is based on the plain fact that a picture and a
10 word can have the same meaning or cast the same commercial impression to consumers and, thus,
11 be confusingly similar. Mobil Oil Corp. v. Pegasus Corp., 818 F.2d 254, 257 (2d Cir. 1987)
12 (Defendant’s PEGASUS word mark infringed plaintiff’s image mark depicting a Pegasus); In re
13 Sloppy Joe’s Int’l, Inc., 43 U.S.P.Q.2d 1350, 1355-56 (TTAB 1997) (trademark registration
14 consisting of an image of Ernest Hemingway properly rejected because it was confusingly similar
15 to preexisting registration for various HEMINGWAY word marks).
16 Defendants argue that the doctrine does not apply to them because they are not using Bob
17 Marley’s image as a mark. As they do in their fair use argument, Defendants offer conclusory
18 statements such as “Defendants do not use the images of Marley as a source indicator.” (Def.
19 MSJ, p. 18.) Defendants cannot simply claim that they do not use Bob Marley’s image as a
20 source indicator and evade the consequences of this firmly established doctrine. Instead, it must
21 first be established whether Defendants use Marley’s image as a mark. Defendants’ bare
22 assertions that they do not, cannot be relied upon to dismiss Plaintiffs’ trademark claim on
23 summary judgment. On the contrary, Plaintiffs have established their trademark rights in the
24 identity of Bob Marley. Accordingly, Defendants’ use of Marley’s image on apparel in a manner
25 similar, if not identical, to the manner in which Plaintiffs use Bob Marley’s identity casts doubt
26 on their assertion that they are not using Marley’s image as a mark, and creates a factual dispute.
27 Furthermore, Defendants do not have to use Bob Marley’s image as a mark for the legal
28 equivalents doctrine to be applied. The legal equivalents doctrine is based on pictorial depictions
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1 and equivalent wordings impressing the same mental image on purchasers. Defendants’ use of
2 Marley’s image increases the likelihood of confusion between Defendants’ use of the BOB
3 MARLEY mark on materials accompanying their products and Plaintiffs’ BOB MARLEY mark
4 because Marley’s image on the garments sustains, and does not remedy, any consumer confusion.
5 Given the fame of Bob Marley, not to mention the fact that Defendants manufacture their
6 products for the sole reason of capitalizing on Bob Marley’s celebrity, Defendants cannot
7 honestly argue that customers of their merchandise do not immediately equate Bob Marley’s
8 well-recognized image with his well-recognized and trademarked name, particularly when
9 Defendant’s Bob Marley products are promoted expressly under the BOB MARLEY mark.
10 Consequently, Defendants cannot seriously assert that they are not using the BOB MARLEY
11 mark when they prominently affix Bob Marley’s image and likeness to the front of their apparel.
12 In so doing, Defendants infringe the BOB MARLEY mark and falsely associate their goods with
13 Plaintiffs and Bob Marley.
14 c. Defendants Are Unable to Establish Their Fair Use Defense
15 Defendants claim that their use of the BOB MARLEY mark is fair and descriptive is
16 unavailing, and certainly cannot be established as a matter of law. Defendants contend that in
17 using the BOB MARLEY mark on displays associated with their apparel, they are merely
18 describing the individual depicted on their apparel. Such an argument is termed a classic fair use
19 defense and is enshrined in the Lanham Act: “use . . . of a term . . .which is descriptive of and
20 used fairly and in good faith only to describe the goods or services of such party.” 15 U.S.C.
21 § 1115(b)(4). First, as it relates to Plaintiffs’ § 1125(a) claim, Defendants’ claim that they used
22 the BOB MARLEY mark descriptively is unavailing, as non-trademark uses of a celebrity’s name
23 may still be the basis for unfair competition liability under the Lanham Act. See Parks v. LaFace
24 Records, 329 F.3d 437, 447 (6th Cir. 2003).
25 Second, it is Defendants’ burden to establish that there is no genuine issue of material fact
26 as to any element of their fair use defense. See International Stamp Art, Inc. v. U.S. Postal
27 Service, 456 F.3d 1270, 1274 (11th Cir. 2006). With little argument and no undisputed facts,
28 Defendants nakedly assert that their use of the BOB MARLEY mark on apparel is a fair use
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1 because their use describes apparel which features images of Bob Marley. However, Defendants’
2 use of the BOB MARLEY mark does not simply describe to consumers what is featured on the
3 shirt, but intentionally piggybacks on the great expense and energy Plaintiffs have invested
4 developing the BOB MARLEY mark. It is unavailing that Defendants’ apparel features necktags
5 bearing the AVELA logo, not the BOB MARLEY mark; this is merely a superficial detail, much
6 like a disclaimer, unlikely to remedy any consumer confusion as to the source of Defendants’
7 goods or whether they are associated with and/or endorsed by Plaintiffs. See Au-Tomotive Gold,
8 Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1077-78 (9th Cir. 2006) (courts are justifiably
9 skeptical of the effectiveness of disclaimers). Put another way, it remains an issue of fact whether
10 they use BOB MARLEY in a source-identifying fashion. See Sierra On-line, Inc. v. Phoenix
11 Software, Inc., 739 F.2d 1415, 1423 (9th Cir. 1984) (“It is not obvious that [defendant’s] use was
12 a non-trademark use, that is, that the term was only used to describe the product rather than to
13 associate it with a manufacturer . . . The fair use defense, therefore, is not so obvious as to deny
14 [plaintiff] a fair chance of success.”)
15 Defendants’ also ignore Ninth Circuit law holding that fair use is overwhelmingly factual
16 in nature and inappropriate for summary judgment. In KP Permanent Make-Up, Inc. v. Lasting
17 Impression I, Inc., 408 F.3d 596, 604 (9th Cir. 2005), the court listed a number of factors to
18 consider for determining whether the use of a mark is, in fact, fair. Id. at 609. Among the many
19 factors mentioned are “the degree of likely confusion” and “the strength of the trademark.” Id.
20 Having already determined that there were genuine issues of fact concerning likelihood of
21 confusion, the court held that summary judgment for defendant on the defense of fair use was
22 improper. Id. Similarly, when the facts are viewed in the light most favorable to Plaintiffs (as the
23 Court must do), summary judgment for Defendants on their fair use claim here is likewise
24 untenable given Plaintiffs’ showing of the strength of its BOB MARLEY mark and the high
25 degree of likely confusion caused by Defendants’ activities.
26 Defendants have made no showing at all of their alleged good faith in using the BOB
27 MARLEY mark, an essential element of their fair use defense. This is particularly important
28 given the many facts pointing to Defendants’ bad faith in using the mark. “Any evidence that is
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1 probative of intent to trade on the protected mark would be relevant to the good faith inquiry.”
2 EMI Catalogue Partnership v. Hill, Holliday, Connors, Cosmopulos Inc., 228 F.3d 56, 66 (2d
3 Cir. 2000). The EMI court held that in the good faith analysis, just as in the likelihood of
4 confusion analysis, it is error not to take into account “the overall context in which the marks
5 appear and the totality of factors that could cause consumer confusion.” Id.
6 If not already outright disproven, Defendants’ good faith is certainly a question of fact
7 given the manner and goods on which Defendants use the BOB MARLEY mark and the context
8 surrounding their use. Just as the court in EMI found it error not to consider the defendant’s use
9 of evocative music in the background of their advertisement in which they used plaintiff’s song
10 title (Id. at 67), it would be error for this Court not to consider Defendants’ use of Bob Marley
11 song titles, song lyrics, and album titles on their apparel. Importantly, there is evidence that
12 Defendants, by seeking a deal with Rohan Marley, intended to trade on the goodwill of the mark
13 as they contemplated paying for the right to do just that. See Id. All of these facts point towards
14 bad faith, much less Defendants’ knowledge and willful infringement of Plaintiffs’ trademark
15 rights in Bob Marley’s identity and ownership of Bob Marley’s rights of publicity in Nevada.
16 Defendants have failed to establish that there are no genuine issues of material fact compromising
17 the good faith of their use of the BOB MARLEY mark. As such, they are not entitled to
18 summary judgment based on their fair use defense.
19 IV. CONCLUSION
20 Defendants’ MSJ must be denied. It is replete with factual disputes on material issues and
21 advocates incorrect interpretations of Nevada’s right of publicity statute.
22 MANATT, PHELPS & PHILLIPS LLP

23
24 Dated: December 18, 2009 By: /s/ Jill M. Pietrini

Jill M. Pietrini
25 Attorneys for Plaintiff and Counter-Defendant
FIFTY-SIX HOPE ROAD MUSIC, LTD.
26
27 300029030.3
28
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Fifty-Six V Avela (Bob Marley ROP) (Plaint. Resp. Def. MSJ)

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Fifty-Six V Avela (Bob Marley ROP) (Plaint. Resp. Def. MSJ)

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

1 MANATT, PHELPS & PHILLIPS, LLP

7 JOLLEY, URGA, WIRTH, WOODBURY & STANDISH

15 UNITED STATES DISTRICT COURT

17 Fifty-Six Hope Road Music, Ltd., a Bahamian Case No. 2:08-cv-00105-PMP-GWF

26 AND RELATED COUNTERCLAIM.

6 disputes that preclude summary judgment are:

7 • Conflicting declarations and documentary evidence relating to the location of the

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

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

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

11 II. STATEMENT OF FACTS

14 A. Plaintiffs Own Valid Rights in the Marley IP

15 1. Fifty-Six’s Registration of Bob Marley’s Right of Publicity

25 commercial use of a person’s (alive or deceased) “name, voice, signature, photograph or

9 2. Plaintiffs Own and Alleged Trademark Rights in Bob Marley’s Image

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

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

27 B. AVELA’s Acquisition, Licensing, and Exploitation of the Bob Marley Images

2 1. AVELA’s Acquisition of the Images From Rabanne

24 2. AVELA’s First Use of the Rabanne Images

27 3. Plaintiffs’ First Knowledge of Defendants’ Infringing Activities

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

19 Defendants argue Plaintiffs knew of AVELA’s use of Marley photographs in February

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

25 C. AVELA’s Use of Bob Marley’s Name, Music Titles, and Lyrics

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

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

26 III. DEFENDANTS’ MOTION FOR SUMMARY JUDGMENT SHOULD BE DENIED

3 A. Summary Judgment Should Not Be Granted on the Right of Publicity Claim

13 interpretation of the statute is correct, it is immaterial given Plaintiffs’ alleged knowledge of

17 witnesses, have offered testimony directly contradicting Defendants’ assertion as to when

21 purpose, and confuses the concept of retroactivity.

22 1. Plaintiffs’ Right of Publicity Claim Against Defendants is Not

2 successor in interest unless . . .”.

25 occur within 6 months of a successor claimant’s knowledge of a particular infringer’s commercial

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

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

22 Fourth, Defendants’ interpretation also contravenes another important aspect of the

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

24 Defendants’ defense in the instant case.

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

23 using the Bob Marley images before Plaintiffs’ registration.

24 3. Nevada’s Right of Publicity Statute Applies to Defendants’

2 fails for several reasons.

25 Elvis Presley, Liberace, and Bob Marley.4

6 542, 553 (2008):

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

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

15 of “Arguments In Support” of S.B. 613, California’s Posthumous Right Of Publicity Statute,

22 Stooges,” who all died before 1976.)

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

12 B. Defendants Are Not Entitled to Summary Judgment on Plaintiffs’ Trademark

1 faith is so easily established.

2 1. Plaintiffs’ Own Trademark Rights in Bob Marley’s Identity

6 A false endorsement claim based on the unauthorized use of a celebrity’s identity

5 Bob Marley sufficient to support their Lanham Act claim.

6 2. Defendants Have Used Reproductions of the Marley IP in Connection

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

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

25 consistently held that commercial exploitation of a celebrity’s identity is an infringing trademark

26 use. Without a doubt, a celebrity’s or celebrity’s successor-in-interest’s trademark rights in the

27 use of Bob Marley’s identity on their products.