Bob Marley's "WAILERS" Win Cybersquatting Lawsuit

Bob Marley's Wailers, who eventually became known simply as the "Wailers" after Bob Marley's death, successfully argued for dismissal of this cybersquatting and trademark infringement lawsuit brought by band members of another Wailers musical group who started using the band name 10 years before Bob Marley named his group in 1969.  The only evidence which could potentially have saved Plaintiff's claims against Bob's protégées would have been that the band used the mark the "Wailers" and registered wailers.com in bad faith.  No evidence of bad faith was introduced by plaintiffs.

Ormsby v. Barrett, 2008 U.S. Dist. LEXIS 20 (UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF WASHINGTON) teaches that a failure to assert trademark infringement claims in the face of know trademark infringement can result in a loss of trademark rights under the doctrine of laches.

Plaintiffs are a musical group known as the "Wailers" who have been performing as such since 1959. They sought to register the name "Wailers" with the United States Patent and Trademark Office ("USPTO") in 1999. Defendants are also a musical group known as the "Wailers" (Yes, Bob Marley's Wailers).  The Defendant Wailers initially opposed that registration, but that opposition was dismissed by the USPTO. The Plaintiffs obtained registration of the Wailers mark in 2003.

Defendants began as a Jamaican reggae group formed by Bob Marley, Peter Tosh, and others in 1964. In 1974, the group became "Bob Marley and the Wailers" and, after Mr. Marley died in 1981, the band performed as "the Bob Marley Wailers," and subsequently the "Wailers."  Defendants moved for summary dismissal of each claim, arguing that Plaintiffs' claims were barred by laches, given the length of time they waited to bring this suit, after knowing of the Defendant Wailers use of that name.  Defendants point to Defendant Barrett's Registration of the domain name "wailers.com" in 1998, as evidence the Plaintiffs knew of, and did not act upon, the alleged infringement for many years prior to their suit.

Plaintiffs disagree, and argued that Defendants cannot successfully assert a laches defense where there is evidence their infringement was wilful; that laches should not be applied where the encroachment was progressive over time.  While bad faith and willfulness can defeat laches, the Plaintiffs produced no evidence of such wilfulness in the district court.

Plaintiffs also argued that their delay in bringing the suit was not unreasonable because the Defendants "progressively encroached" on their mark, and that this to is a basis for avoiding the presumption that laches applies. This argument was based on the Plaintiffs' "information and belief" that the Defendants use of the mark was "de minimus" until the late 1990s. There is no evidence supporting this belief, and Plaintiffs naked claim that the Defendants' use of the mark increased progressively after the Plaintiffs' registration is insufficient.

Defendants also sought summary judgment on Plaintiffs Cybersquatting claim. This claim is based on Defendant Barrett's registration of the domain name "wailers.com" in 1998 (prior to Plaintiffs' application for trademark registration). Plaintiffs again claimed that the registration was in bad faith and that it deprived them of the opportunity to conduct business on the internet.

The court concluded that existence of bad faith is unique to the facts of each case.  Defendants successfully argued the "safe harbor" provision under the ACPA for domain registrants: Bad faith shall not be found in any case in which the court determines that the person is believe and had reasonable grounds to believe that the use of the domain name was fair use or otherwise lawful. Interestingly, Defendants argued, and the court agreed, that the longstanding use of the name Wailers established "abundant good faith" in registering the domain name wailers.com.

The court concluded that no amount of discovery was going to change the fact that Defendants have been calling themselves the Wailers for decades, the Plaintiffs knew it, and the domain name registration predated the Plaintiffs' application for trademark registration.

Comments

[Bob Marley Says: "No Domain Name, No Cry"]

The court got the first use date wrong for the wailers. It was earlier than 1969, likely 1963. In 1963, Bob Marley, Bunny Livingston, Peter McIntosh, Junior Braithwaite, Beverley Kelso, and Cherry Smith formed a ska and rocksteady group, calling themselves "The Teenagers". They later changed their name to "The Wailing Rudeboys", then to "The Wailing Wailers", and finally to "The Wailers". By 1966, Braithwaite, Kelso, and Smith had left The Wailers, leaving the core trio of Marley, Livingston, and McIntosh.

In 1966, Marley married Rita Anderson, and moved near his mother's residence in Wilmington, Delaware for a short time, during which he worked as a DuPont lab assistant and on the assembly line at a Chrysler plant, under the alias Donald Marley. Upon returning to Jamaica, Marley became a member of the Rastafari movement, and started to wear his trademark dreadlocks (see the religion section for more on Marley's religious views).
After a conflict with Dodd, Marley and his band teamed up with Lee "Scratch" Perry and his studio band, The Upsetters. Although the alliance lasted less than a year, they recorded what many consider The Wailers' finest work. Marley and Perry split after a dispute regarding the assignment of recording rights, but they would remain friends and work together again.
Between 1968 and 1972, Bob and Rita Marley, Peter McIntosh and Bunny Livingston re-cut some old tracks with JAD Records in Kingston and London in an attempt to commercialize The Wailers' sound. Livingston later asserted that these songs "should never be released on an album … they were just demos for record companies to listen to."

The Wailers' first album, Catch A Fire, was released worldwide in 1973, and sold well. It was followed a year later by Burnin', which included the songs "Get Up, Stand Up" and "I Shot The Sheriff". Eric Clapton made a hit cover of "I Shot the Sheriff" in 1974, raising Marley's international profile.

The Wailers broke up in 1974 with each of the three main members going on to pursue solo careers. The reason for the breakup is shrouded in conjecture; some believe that there were disagreements amongst Livingston, McIntosh, and Marley concerning performances, while others claim that Livingston and McIntosh simply preferred solo work. McIntosh began recording under the name Peter Tosh, and Livingston continued as Bunny Wailer.

Did the band regroup after my death?

[Domain Infringement Threat Letters]

When someone registers a domain name or URL which infringes on your trademark, you must send what is known as a threat letter noting your trademark rights are superior. It doesn't have to be threatening. It is really a trademark notice letter, advising a third party that you have superior rights and that their domain name infringes on your trademark rights. In most instances, the infringer will re-brand. The best reason to monitor domain registrations and trademark registrations is to catch any problems early,before the other person becomes too heavily invested in the domain name to give it up.

[Trademark Rights & Infringement]

Interesting. Many companies devote the resources to achieve trademark registration, but fail to protect their marks after registration is achieved. The same is true of domain name registration. Companies need to learn that they must monitor third party uses of their mark and send a trademark infringement threat letter where appropriate. They need to monitor domain registrations and URL uses which might infringement their marks as well. Companies that aren't sending infringement threat letters aren't protecting their marks. With our global economy virtually every mark is being threatened by third party use, most of which is unintentional. Even unintentional infringement can cause you to lose your trademark rights.

Why don't more companies protect their trademarks against third party infringement?