In 2012, the Marley heirs sent the reggae singer’s half-brother, Richard Booker, to court for creating a line of fish products under the name “Mama Marley, ”which he sought to trademark.
Booker also used Marley’s name and image to boost sales to a music festival, which saw him back in court. He launched a countersuit, however, on the basis that Marley had given him permission.
Similarly, in 2014, Fifty-Six Hope Road Music and Hope Road Merchandising, the companies behind the Marley heirs’ IP, sought to trademark “One Love” – the title of one of Marley’s biggest hits. It found that fast-food chain Raising Canes had already done so. In fact, it had been using the trademark since 2001.
Both infringement battles have since been settled, but the family is embroiled in another trademark war. This time it involves coffee.
The Hope Road companies worked together with Jammin’ Java, trading under Marley Coffee (product seen in the image below), until it failed to pay royalties. The parties went separate ways, until the Marley’s discovered Jammin’ had continued to use the Marley trademark. Of course, it led to a lawsuit.
At the time, the Denver Business Journal reported how the Jammin’ boss claimed without the ability to sell the Marley brand coffee, it would go into “complete financial collapse”.
Nonetheless, compensation was demanded from Jammin’. The Marley’s wanted $2.4m (£1.86m) – the amount representing how much the coffee joint made on the back of the Marley brand. And the latest news is that it has been awarded its wanted hefty sum.
Of the news, George Sevier, principal associate at Gowling WLG, told Real Business: “Some people might be surprised that the Bob Marley estate has dealings in coffee, but brand extensions like this are actually quite common.
“Celebrities and well-known brands often grant licenses to produce a variety of products bearing their trade mark. However, trademark owners do this for money, and expect to be paid. The Bob Marley estate was bound to take action here, otherwise it would open the door for others to use the Marley brand without paying.
“Defendants often try to use clever accounting to suggest they have made no profit and get out of paying for an infringement, but judges are alive to this. Why would they be in business if they genuinely weren’t making a profit?”
There’s much to learn from the case. Inevitably, if you make a deal, stick with it – and if your relationship with another company doesn’t work, don’t go stepping on its toes behind-the-scenes. As a smaller company, if you really have been infringing, it could lead to the end of business as you know it. The company seemed to be dependant on the Marley name, which likely meant the demanded sum did it no wonders.
Don’t land in similar hot water!
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