Mon | May 29, 2017

Intellectual Property: The Gift That Can Keep On Giving

Published:Monday | March 30, 2015 | 3:00 AM

When we discuss issues concerning assets and estate planning, intellectual property is hardly likely to emerge

at the top of most peoples' lists. However, based on the advice I received from my colleague, Grace Lindo in Nunes, Scholefield, DeLeon & Co's Commercial Department, the value of intellectual property demands our attention.

Grace reviewed the recent decision in the 'Blurred Lines' case in which Marvin Gaye's estate took legal action against entertainers Robin Thicke and Pharrel Williams, to recover damages for copyright infringement. They

successfully argued that Thicke and Williams had copied the "feel" (not the words) of Gaye's 1977 hit Got to Give It Up. A jury awarded them US$7.4 million.

Closer to home, Bob Marley's estate took action in respect of

the use of the image of the iconic reggae artiste on T-Shirts produced by US based company A.V.E.L.A. The claimants, Fifty Six Hope Road Music Limited and Zion Roots LLC, are licensed by the Marley estate to undertake third-party licensing and to merchandise the icon's brand. They based the claim on trade mark infringement, false endorsement and unauthorised commercial use of the right of publicity - all valid causes of action under US law, which recognises some "celebrity-related rights".

The claimants succeeded both at first instance and on the appeal to the US Ninth Circuit Court in Nevada, with the effect that the court found that Marley's likeness and persona constitute intellectual property. Expert evidence was presented that proved via survey that the average consumer would have construed that the Marley estate had given permission to use the image.

The Marley estate was awarded more than US$2 million in damages and legal fees.

In a similar action in Jamaica in 1994 in respect of the reproduction of Marley's image on T-shirts - Robert Marley Foundation v Dino Michelle Limited - for the first time a Jamaican court found that the tort of appropriation of personality existed at law independent from the well-known tort of passing-off. The defendant was found to have infringed the plaintiff's exclusive rights to use its image and personality for commercial purposes, but the award was only J$86,040.50.

In a country with a rich tradition in the creative industry, Jamaica's industry players must now start to look at intellectual property assets as not only income during life but as an investment which can provide for beneficiaries after death.

While some forms of copyright have a definite shelf life, image rights (as illustrated in the US and local Marley estate cases) do not appear to have a shelf life as long as the celebrity persona continues ... or as the celebrity remains popular. Rights like these can really be the gift that can keep on giving.

• Sherry Ann McGregor is a partner and mediator in the firm of Nunes, Scholefield, DeLeon & Co. Send questions and comments to lawsofeve@gmail.com or lifestyle@gleanerjm.com.