The Robert Marley Foundation v Dino Michelle Ltd

• Jurisdiction: Jamaica
• Court: Supreme Court (Jamaica)
• Judge: Clarke. J.
• Judgment Date: 12 May 1994
• Docket Number: C.L. R115 of 1992
• Date: 12 May 1994

Supreme Court

Clarke, J.

C.L. R115 of 1992

The Robert Marley Foundation

and

Dino Michelle Limited

Michael Hylton, Peter Goldson and Miss Debbie Fraser instructed by Myers, Fletcher & Gordon for the plaintiff.

Enos Grant instructed by Maurice Long of Clough, Long & Co. for the defendant

Injunction - Plaintiff sought an injunction restraining the defendant from manufacturing, printing, distributing or in any way dealing in any T-shirts or other items bearing the name, likeness, signature, image, photograph, and biography of Bob Marley without the proper written consent of the plaintiff — Injunction granted.

Tort — Passing off Cause of action Plaintiff's business includes (a) selling T shirts bearing Markey's name and image or likeness etc. on T shirts or otherwise Defendant employed goods of inferior quality to the plaintiff's in making the false representation according to which the public has been misled into believing that a commercial arrangement exists between the plaintiff and the defendant Passing off is committed where a trader so conducts business as to lead the public to believe that his goods or business are the goods or business of, or are associated with, another trader as a result whereof the business or goodwill of the latter is really damaged Statement of claim discloses a cause of action for passing off No exceptional features on public policy grounds justify withholding a remedy.

Tort — Appropriation of personality Whether Jamaican law recognizes the existence of property or any other right in, or attached to, personality which comprises a natural person's name and likeness or other indicia of identity Jamaican law recognizes a civil wrong, known in Canada as “appropriation of personality” Commercial use of Bob Marley's name and likeness or image by the defendant without the plaintiff's consent constitutes an invasion of impairment of the plaintiff's exclusive right resulting in damage to the plaintiff Defendant's conduct constitutes the tort of appropriation of personality, separate and distinct from the tort of passing off Damages Quantum of damages $86,040.50 awarded to the plaintiff.

Clarke. J.

1 In this suit the plaintiff claims damages under three heads: (1) passing off, (2) “appropriation of personality” (which counsel for the plaintiff urge me to recognize as an independent tort) and, in the alternative, (3) moneys had and received. The plaintiff seeks, too, an injunction restraining the defendant whether by its servants or agents from manufacturing, printing, distributing or in any way dealing in any T-shirts or other items bearing the name, likeness, signature, image, photograph, and biography of Bob Marley without the prior written consent of the plaintiff.

2 When the case came up before me for trial the defendant through its counsel admitted that all the factual allegations made in the statement of claim are correct. Some of the admitted facts are amplified by unchallenged documentary evidence adduced on behalf of the plaintiff. And as counsel on both side indicated, the question of the proper inferences to be drawn from the primary facts apart, the live issue, as foreshadowed by the statement of defence is one of law: do the fact. establish cause(s) of action?

3 Omitting tho claim for relief, the statement of claim reads as follows:

• “1. The Hon. Robert Nesta Marley, O.M. (herein after referred to as “Bob Marley) was a Songwriter and Musician of international stature who died on Play 11, 1981, intestate. During his lifetime Bob Marley wrote and/or recorded numerous songs, millions of copies of which have been sold worldwide, both before and after his death. His name and his face are immediately recognizable throughout the Island of Jamaica, and in many other parts of the world.

• 2. At all material times, the sole Administrator of Bob Marley's Estate has been Mutual Security Merchant Bank and Trust Company Limited (hereinafter called “The Administrator”).

• 3. Pursuant to an agreement made in April 1988, and approved by this Honourable Court, the Administrator transferred to Island Logic Inc. various rights and property including the right to use and/or to authorize others to use Bob Marley's personality, name, likeness, signature, image, photographs and biography anywhere in the world, including the Island of Jamaica. Island Logic Inc. thereafter transferred the said rights to Stitching Bob Marley, a Dutch Corporation.

• 4. The plaintiff is a company incorporated under the laws of Jamaica and limited by Guarantee. Stitching Bob Marley has transferred the aforesaid rights to Bob Marley Music Inc., a corporation formed under the laws of the State of California in the United States of America, which, in turn, transferred same to the Plaintiff in relation to the Island of Jamaica. The plaintiff therefore has the sole right to use or license others to use the personality, name, likeness, signature, image, photographs and biography of Bob Marley within the Island of Jamaica.

• 5. The plaintiff operates the Bob Marley Museum in Kingston, Jamaica and sells there and elsewhere T-shirts and other souvenir items bearing Bob Marley's name, photograph and or likeness.

• 6. The plaintiff has licensed and is negotiating to license various persons in Jamaica to use Bob Marley's likeness or name on T-shirts or otherwise and Bob Marley Music Inc., and its Assignees and Licensees have licensed and authorized numerous persons worldwide to do so.

• 7. The plaintiff's existence and purposes are a matter of public knowledge.

• 8. The defendant is a company incorporated under the laws of Jamaica and carries on the business inter alia of manufacturing and selling T-shirts labeled AFun Tops”.

• 9. The defendant has manufactured and/or sold a number of T-shirts bearing Bob Marley's image and bearing the words “Bob *1945-1981” throughout the island of Jamaica. The defendant neither sought nor obtained the approval or consent of the plaintiff and has failed and/or refused to cease manufacturing or selling the said T-shirts despite demands from the plaintiff to do so.

• 10. The T-shirts sold by the defendant are made of a material and undergo a printing process which are inferior in quality to that used by the plaintiff and its licensees.

• 11. The defendant has misled the public into believing that an association, whether it be commercial or otherwise, exists between the plaintiff and the T-shirts being sold by the defendant to the detriment of the plaintiff.

PARTICULARS

• (a) The plaintiff has the exclusive right to do, and does deal in and license others to deal in the use of the personality' image, photographs, name and biography of Bob Marley.

• (b) The defendant, prior to dealing in T-shirts with the late Bob Marley's image and name, had knowledge of or should have been put on enquiry to ascertain (a) above.

• (c) The defendant manufactures, deals in, and markets the said T-shirts.

• (d) The defendant thereby caused the public to believe that the T-shirts manufactured and/or sold by the defendant had the approval and sanction of the plaintiff, or that a commercial arrangement between the plaintiff and the defendant exists, a belief which is untrue.

• 12. The defendant, in manufacturing and/or selling the said T-shirts, has appropriated for its own use and benefit the plaintiff's proprietary right in the exclusive marketing for gain in Jamaica of the licence to use Bob Marley's personality, image, photographs, name and biography.

• 13. In the premises the plaintiff has suffered loss and damage.

PARTICULARS

4 Counsel for the defendant contends that the facts pleaded therein do not establish a cause of action. The suit, he says, must therefore be dismissed. The plaintiff's counsel on tho other hand asks for judgment averring that the statement of claim discloses the disputed causes of action.

5 Were the plaintiff to succeed because, for instance, I concluded that the statement of claim pleads facts establishing the passing off action, Mr. Grant properly conceded that the appropriate remedies would be damages and an injunction as prayed.

Passing Off

6 Take first the tort of passing off. Undoubtedly an established tort, it is committed where a trader so conducts his business as to lead the public to believe that his goods or business are the goods or business or, or are associated with, another trader as a result whereof the business or goodwill of the latter is really likely to be damaged. In this area of the law, the term trader is wide, especially where as here the defendant's activities are of a commercial nature. The term includes incorporated non-profit and charitable bodies which, like the plaintiff, sell or distribute goods in connection with the activities they were formed to promote. See Lagos Chamber of Commerce Inc. v Registrar of Companies (1956) 72 R.P.C. 253 and Dr. Barnardo's Homes: National Incorporated Association v. Barnardo Amalgamated Industries Ltd. (1950) 66 R.P.C. 103. And although the plaintiff is a company formed for promoting art, science, religion or charity, the law and the company's very constitution sanction its trading activities. So, Mr. Grant's submission that such a company has no business interest to be protected by the doctrine of passing off has only to be stated to be rejected.

7 Warnink and Another v. Townend & Sons and Another [1979] A.C. 731 or [1979] 2 All E.R. 937 is a leading case on the passing off action. That case went up to the House of Lords. The plaintiffs had for many years manufactured and distributed in Britain a popular liquor called “Advocaat”. Made in the Netherlands by a number of manufacturers including the plaintiff it had been sold in Britain for many years where it had acquired a substantial reputation and goodwill as a distinct and recognizable beverage. The defendants made and marketed in England a similar (but differently constituted) drink described...