10 January 2019Trademarks

Ninth Circuit rules coffee company must pay Bob Marley’s family $2.4m

The US Court of Appeals for the Ninth Circuit has dismissed an appeal from coffee brand Jammin Java and ordered it to pay $2.4 million to companies owned by the family of late reggae artist Bob Marley.

The court ruled on Wednesday, January 9, that the US District Court for the Central District of California did not err in calculating that amount in June 2017.

Jammin Java, which previously traded under the name Marley Coffee, was ordered to pay two Marley family-controlled companies—56 Hope Road and Hope Road—$2.4 million in damages for trademark infringement. The Hope Road companies own the IP to the Marley name.

In 2012, the Hope Road companies entered a trademark licensing agreement with Jammin Java for use of the Marley trademarks on the Marley Coffee brand, however the licence was terminated in 2016.

In addition to paying royalties, the agreement required Jammin Java to provide quarterly and annual statements to Hope Road, but these requirements were not complied with. The Hope Road companies sent Jammin Java written notices of these breaches, but these were ignored. Consequently, the Hope Road companies terminated their agreement with the coffee brand.

According to the Hope Road companies’ original complaint, in September 2016, Jammin Java continued to use the trademarks after its licence with Hope Road ended.

In its ruling on Wednesday, the Ninth Circuit said that the breaches of agreement committed by Jammin Java were unaffected by the coffee company’s claims that the breaches could be waived because the agreement could have been modified orally.

It said the written notices gave Jammin Java, the party allegedly in breach of the agreement, notice and opportunity to cure the breach without termination.

Jammin Java argued that the court had erred in awarding profits relating to the period of infringement (July 2016 to January 2017) to the Hope Road companies “without first finding wilful infringement” of their trademarks.

But, finding in favour of wilful trademark infringement “is not necessary where a plaintiff seeks the defendants’ profits as a measure of its own damages”, the court said.

It added that Jammin Java’s “unauthorised use” of the Marley trademarks prohibited the Hope Road companies’ use of the same marks during the period of infringement.

Therefore, Jammin Java’s profits during that period were a reasonable measure of Hope Road’s damages.

The court concluded that if Jammin Java had wished to offset the amount of profits awarded, it should have submitted evidence of costs or deductions associated with the Marley trademarks, which it failed to do.

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More on this story

25 November 2015   The English Court of Appeal has ruled that record label Cayman Music does not own the copyright to 13 songs composed by musician Bob Marley, including the hit “No Woman, No Cry”.
25 February 2015   The heirs to reggae singer Bob Marley’s estate have won an appeal in a long-fought intellectual property battle, meaning they can now stop a t-shirt maker from using the late star’s likeness without their permission.