On April 20, famed singer Willie Nelson joined a growing number of celebrities when he hopped on the marijuana endorsement bandwagon. Nelson announced he is launching his marijuana brand Willie’s Reserve, his personal brand of pot featuring “high-quality strains of marijuana.” Celebrity “endorsements” aren’t limited to the living, and in the cannabis marketplace, even Willie is no match for the late Bob Marley. Marley’s Jamaican-based family business, Fifty-Six Hope Road Music Limited, recently signed a 30-year licensing deal with private equity firm Privateer. The deal allows Privateer (the firm has raised an impressive $82 million dollars for the initiative so far) to use Bob Marley’s name and likeness to market the family’s “heirloom Jamaican cannabis strains” (known as Marley Natural) and other Marley-branded merchandise.

Protecting IP Rights for a Formerly (and Presently) Illegal Product Is Complicated

What makes the burgeoning branded pot industry so interesting is the fact that marijuana has traditionally been illegal, and now it’s becoming legal in more states. According to Pew Research, four states (Colorado, Washington, Oregon and Alaska) and the District of Columbia have legalized marijuana use, and 23 states (plus D.C.) allow the use of medical marijuana.

Public support for the legalization of weed is also growing, which should lead to more states opting for weed-friendly legislation. A new Pew survey reveals that 53 percent of American’s favor the legal use of marijuana, which is up from 32 percent as recently as 2006. Millennials are leading the charge, with 68 percent supporting legalization.

Using a famous name and face to sell products and services can be a brand marketer’s dream, but using that name and face to market an illegal product creates a unique set of challenges. Since U.S. federal law says it is illegal to use marijuana and marijuana paraphernalia, Nelson, Privateer and the Marley estate could face a host of intellectual property rights struggles in the years to come.

Getting a Patent for a Marijuana Strain Isn’t Likely

To date, the federal government hasn’t approved any patents for marijuana strains, so it’s unlikely any of the aforementioned parties will be able to cite patent infringement to protect their individual strains from savvy, copycat marijuana growers. Copyright provisions may also come into play should Privateer hope to promote Marley Natural with Bob Marley’s music.

However, the biggest intellectual property challenges for celebrity marijuana brands will likely occur in the realm of trademark protection and rights of publicity. You can’t register a federal trademark unless the mark is in lawful use in commerce. Consequently, marijuana brands can’t get a federal trademark registration for marijuana, because it’s illegal.

Marijuana Brands Need to Register Trademarks in Individual States

Without a federal trademark registration, rights are based on the use of the trademark in geographic areas where marijuana is legal. The marijuana brands will need to register trademarks with individual states where pot is legal, and abide by the unique requirements of those states. In states where pot is illegal, the marijuana brands may have trouble preventing people from using their marks to create knockoffs using Nelson’s or Marley’s name.

In the U.S., the owner of a mark is also required to exert quality control over the goods and services that are sold under that trademark. For example, if the Marley family uses a trademark on any legal goods and services sold, such as T-shirts, it’s easy to monitor whether the quality is good or bad. But how do you manage quality control over a substance like marijuana, which is illegal in most of the country?

Nelson has clearly addressed this issue in the two states where he plans to cultivate Willie’s Reserve. His plan is to work closely with "master growers" as well as local retailers in the states of Colorado and Washington, where recreational use of marijuana is legal. "I am looking forward to working with the best growers in Colorado and Washington to make sure our product is the best on the market," Nelson says.

Rights of Publicity Offer Some Protection for Willie and Bob

While trademark rights are based on use of the name, rights of publicity are about preventing other people from using any likeness or image of a person without permission, so the marijuana brands may still have some recourse to protect their brands. Bob Marley’s family has been able to exercise rights of publicity to prohibit people from using Bob’s image on products in the past.

However, the federal government and many states do not recognize rights of publicity, not to mention the endless number of international laws and jurisdictions marijuana brands will likely encounter as the branded marijuana market continues to grow. For global brands such as Bob Marley, his estate likely has been and will continue to fight to protect the brand’s trademark rights and rights to publicity around the world. I hope Willie Nelson’s intellectual property attorneys are prepared to fight.

For more information on this topic, please visit our Trademark and Brand Management service page.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. 

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