CONTRACT / TRADE MARK: A US appellate s court has upheld an earlier ruling in a trademark dispute between the Bob Marley estate and a coffee company that previously had the rights to sell coffe beverages using the legendary reggae musician’s name. Jammin Java Corp will now have to pay the Marley family estate $2.4 million in damages.
Jammin Jave originally had a licence to use the Marley name, agreed with Fifty-Six Hope Road Music (56 HR) and Hope Road Merchandising – who were authorised by the Marley family to grant the right to the coffee company to make and sell a coffee product that utilised the late musician’s name and trademark, with Marley’s son Rhohan involved .
However, the two sides in the venture fell out, initially over unpaid royalties and allegations that the coffee firm was unlawfully sub-licensing the Marley brand to third parties. Jammin Java continued to sell its Marley coffee product once its licences had expired.
The Marley companies brought a legal action in 2016, and were granted a summary judgement and were subsequently being awarded $2.4 million in damages. Jammin Java then appealed that ruling, arguing that the court of first instance had not properly considered the fact its contract with the Marley companies as these had been amended by oral agreement, adding that such oral agreements had standing under Californian law even when the written documentation provided for a bar on oral amendments.
According to Law360, although the 9th Circuit Court of Appeals did agree with some of Jammin Java’s legal arguments on that specific point, the court said that there were additional breaches of the contract not affected by any oral agreements, so the lower court ruling from U.S. District Judge Stephen Wilson in Los Angeles regarding breach of contract was sound.
The Appellate Court said: “Jammin Java is correct that under California contract law oral modification, waiver, and equitable estoppel defenses may be asserted despite contractual provisions prohibiting oral waiver or oral modifications” ….. “However, we may affirm the district court’s grant of partial summary judgment on any basis properly supported by the record …. Here, the record demonstrates that Jammin Java breached the agreement. Both the adverse action taken by the Securities and Exchange Commission against Jammin Java and Jammin Java’s failure to provide ‘Quarterly Statements’ and ‘Annual Statements’ to 56 HR as required by the agreement constitute material breaches.”
Welcoming the latest ruling, a leg rep for the Marley family told Law360 that her clients were “pleased with the results of today’s decision and grateful to the court of appeals for its time and effort”.