Appeals Court upholds earlier ruling in the Bob Marley Trade mark licence Coffee case.

US Court of Appeals for the Ninth Circuit rules in favour of the Bob Marley estate in the Jammin Java Trade mark licence Coffee Case.

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Sang Nkhwazi

Sang is a Patent & Trade Marks Representative & Director of Franks & Co Mancunium Ltd, a firm of European Patent & Trade Marks Attorneys based in Cheadle, Stockport. The firm advises on the protection and enforcement of Intellectual Property Rights and assists with the procedures involved in obtaining protection for inventions, trade marks, designs and artistic works. You can contact him on 0161 820 2891 or email sang.nkhwazi@franksco.com
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The US Court of Appeals for the Ninth Circuit has upheld a May 2017 ruling in a trademark dispute between the Bob Marley estate and Jammin Java Corporation – a coffee company which at one time involved Bob Marley’s son Rohan, and previously held the rights to sell Marley-branded java. As a result of the ruling, the company must now pay the Marley estate US$2.4 million in damages.

Jammin Java Corp previously held a licence from Fifty-Six Hope Road Music Ltd and Hope Road Merchandising LLC– two companies controlled by the Bob Marley estate. The license allowed it to make and sell a coffee product that utilised the late musician’s trademark and name. However, the parties fell-out, initially over unpaid royalties and subsequently because of allegations that Jammin Java was sub-licensing the Marley brand to third parties without the consent of the trade mark rights holders. The disagreement escalated when Jammin continued to sell Marley-branded coffee even after a trademark licence agreement between the companies was terminated.

Fifty-Six Hope Road Music Ltd and Hope Road Merchandising LLC sued in 2016, winning via summary judgement. In that judgement, the district judge U.S. District Judge Stephen V. Wilson awarded the companies $2.4 million in damages.  Jammin Java appealed the ruling, arguing that the court had not properly considered the fact its contract with the Marley companies had been amended by oral agreement, and that oral agreements have standing under Californian law even when a contract stipulated that it couldn’t be modified in such a way. The company also argued that the award of the District judge was an unwarranted “windfall” because no evidence was presented of willful trademark violations.

In a unanimous ruling, the three-judge panel has now rejected Jammin Java’s arguments. The judges found that the District judge did not err in finding that the written terms of the license agreement precluded Jammin Java’s defenses that the companies had orally modified and waived the royalty payment schedule under the agreement.

The full judgement can be read here [External Page]

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