I recently wrote a post for The IPKat blog on an interesting right of publicity and trademark infringement case in the Central District of California. The blog post has been quoted by Techdirt.
In this case, Don Henley, member of the music band Eagles, sued retailer Duluth Trading Company over an ad where Defendants urged its customers to “Don a Henley” and to “Take it Easy.” A Henley tee-shirt is a particular type of tee-shirt, and “Take it Easy“ is a name of a famous Eagles song.
Don Henley registered his name as a trademark in two classes and he is claiming that Defendant’s ad is an infringement of his trademarks and false advertising. He is also claiming that the ad is an infringement of his right of publicity as protected by California statutory law and common law.
I do not believe that the trademark and false advertising claims are likely to succeed, but the right of publicity claim may be successful, if, however, Plaintiff convinces the Court that Defendant indeed used his identity.
Under §3344 of California Civil Code, it is forbidden to knowingly use “another person’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent, or, in the case of a minor, the prior consent of his parent or legal guardian.”
The name of Plaintiff is Don Henley and the ad urges to “Don a Henley.” To don is a verb meaning “to wear” and a Henley is a common name for a shirt. So Plaintiff’s first name is also an English verb and his last name is also an English noun. If the ad would merely urge customers to Don a Henley, Plaintiff would have no chance to win the case, as he has no right to prevent others from using a verb and a noun which are part of the English language, even if pairing them together may give the appearance that one is referring to Don Henley the musician.
But the ad also urged its readers to “Take it Easy.” So semantically we have: Don+Henley+ Take it Easy ( the name of the Eagles song).Therefore, the ad may be found to refer at Plaintiff’s identity, and to profit commercially from that unauthorized use.
Similarly, the 6th Circuit held in 1983, in Carson v. Here’s Johnny Portable Toilets, Inc., that using the phrase “Here’s Johnny” as a name for portable toilets was an infringement of Johnny Carson’s right of publicity. Johnny Carson had been introduced by Ed McMahon each night on The Tonight Show with the phrase “Here’s Johnny” and even if Defendant had not used Johnny Carson’s name, “Here’s Johnny” had been selected by Defendant “because of its identification with Carson.”
Judge Cordelia Kennedy’s dissent in the Carson case is interesting for our case even if a dissent is not, of course, persuasive. For Judge Kenney, “[t]here [was] nothing in the record to suggest that “Here’s Johnny “has any nexus to Johnny Carson other than being the introduction to his personal appearances. The phrase is not the part of an identity that he created” (my emphasis).
This last phrase could be the stepping stone for Defendant’s line of defense, by arguing that “Take it Easy” is not the part of Defendant’s identity, and therefore, Defendant did not use commercially and without authorization Plaintiff’s identity.
Photograph is Henley’s Cable Works Research Laboratory by Flickr user Brian Fuller under a CC BY-ND 2.0 license.
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