By Marie-Andree Weiss writing on the IPKat
Don Henley, a member of the Eagles music band and also a solo musician, is suing clothing retailer Duluth Holdings in the CentralDistrict Court of California, alleging that an advertisement created by Defendant is an infringement of his trade marks and right of publicity and is also false advertising.
The advertisement at stake shows a drawing of two tee-shirts known as “henley,” side-to-side, with the phrase “Don A Henley AND Take it Easy” printed on the left of the ad.
A henley tee-shirt is a tee-shirt which does not have a collar but has a front placket closing with several buttons, generally three. I read on the Web that the term “henley” originates from the town of Henley-on-Thames, as rowers practicing there in the 19th century sported such shirts, but I cannot assert that this really is the origin of the term.
“Take It Easy” is a colloquial expression, often used in the U.S. as a way to say good bye and is also the title of the Eagles’ first hit single. It is featured on the Eagles album Their Greatest Hits 1971-1975, which is, according to the Complaint, the bestselling album of all time in the U.S. with more than 29 million copies sold. It was written by Jackson Browne and Eagles member Glenn Frey and was recorded by the Eagles with Plaintiff playing guitar and singing backup vocals.
Plaintiff argues that the ad is “exploiting [his] celebrity… and the popularity the Eagles’ hit record (sic)” and claims that such use infringes his trade marks and right of publicity and that the ad is false advertising.
Trademark Infringement Claim
The Complaint alleges that the ad is an unauthorized use of Plaintiff’s trade marks and that it is likely to cause consumers confusion or to deceive the public. Indeed, Plaintiff owns two registered U.S. trade marks, one for “Don Henley” in class 9, for musical sound recordings, and the other in class 41, for entertainment services.
To succeed in his trademark confusion claim, Plaintiff will have to prove that the ad is likely to cause consumers confusion.
In the 9th Circuit, courts examine the eight “Sleekcraft” factors to assess likelihood of confusion: strength of the mark,proximity of the goods, similarity of the marks, evidence of actual confusion, marketing channels used,type of goods and degree of care exercised by consumers, defendant’s intent in selecting the mark, andlikelihood of expansion of the product lines.
Plaintiff will not, however, have to prove all of the eight factors. He will probably concentrate his efforts on the similarity of the marks and the intent of Defendant when selecting the mark factors. The ad coupled Plaintiff’s name with the name of one of the many hit songs of his band. The “Take it Easy” song may appeal to customers shopping at a company which provides a “No Bull Guarantee” on its e-commerce site, or may just restate the company’s customer service philosophy.
Defendant is likely to assess a fair use defense. Under 15 USC § 1115(b)(4), “the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin.”
Defendant could argue that it did not use Plaintiff’s trade mark as such, but rather in a descriptive sense. Defendant could argue that “To don” is a commonly-used verb, that “Henley” is a generic name for a particular style of tee-shirt, and that, as such, Plaintiff should not be allowed to prevent Defendant to use them in combination. The First Amendment could also be used as a defense.
False Advertising Claim
Plaintiff also claims that Defendant’s “advertised use of [Plaintiff]’s trademarked name in conjunction with the title of the Eagles’ debut, highly successful single Take It Easy” constitutes a false advertising under Section 43(a) of the Lanham Act, which provides a cause of action if a third party uses on a product any word, term, name, or any combination thereof in commercial advertising which are likely to cause confusion, or to deceive as to the affiliation of the origin of plaintiff’s product and are likely to cause injury to the plaintiff.
Plaintiff could succeed in this claim even if his trademark infringement claim is not successful, because the 9th Circuit reminded courts earlier this year, in Wells Fargo Company USA. v. ABD Insurance & Financial Services, Inc., that a false advertisement claim is distinct from a trademark infringement claim and that both require separate tests.
Under § 43(a), a plaintiff must prove:
(1) a false statement of fact by the defendant in a commercial advertisement about its own or another’s product;
(2) the statement actually deceived or has the tendency to deceive a substantial segment of its audience;
(3) the deception is material, in that it is likely to influence the purchasing decision;
(4) the defendant caused its false statement to enter interstate commerce; and
(5) the plaintiff has been or is likely to be injured as a result of the false statement, either by direct
diversion of sales from itself to defendant or by lessening of the goodwill associated with its products.
The 9th Circuit noted further in Wells Fargo that Plaintiff must show all of these five elements to succeed in a § 43(a) claim.
In our case, Plaintiff will need to present evidence of actual deception of consumers, who, after having looked at the ad, believed that Plaintiff somehow endorsed these Henley tee-shirts. He will also need to show that consumers’ deception was “material,”although this particular term is not used by § 43(a) itself.
For the 9th Circuit, when a court is evaluating whether an advertising claim is false, it must analyze the claim “in its full context” and, when determining facial falsity, “must view the face of the statement in its entirety, rather than examining the eyes, nose, and mouth separately and in isolation from each other,” Southland Sod Farms v. Stover See Co., at 1139). The 9th Circuit noted that courts have held a claim to be literally false “by necessary implication.”
While merely urging potential customers to “Don a Henley” would not be enough to be false advertising, the Central District Court will also consider whether adding “AND Take it Easy” makes the ad, in its entirety, false, “by necessary implication.”
Right of Publicity Claim
Plaintiff also claims that the ad used his name commercially without authorization and, as such, infringes his right of publicity under California law.
California has a statutory right of publicity, as §3344 of California’s civil Code forbids knowingly using 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 consent.
Plaintiff will have to convince the Court that the ad indeed used his name. But the ad merely urged customers to “Don a Henley” and Defendant is likely to argue that the ad did not use Plaintiff’s name, but, instead, used common English words.
The 9th Circuit’s most famous right of publicity case is White v. Samsung ElectronicsAmerica, Inc., where the Court had to examine an ad featuring a robot, wearing a wig and dressed in a gown, posing next to the game show Wheel of Fortune set, just as Plaintiff did as her role on the show. The caption of the ad read: “Longest-running game show. 2012 A.D.” The 9th Circuit found that “[v]iewed separately, the individual aspects of the advertisement in the present case say little. Viewed together, they leave little doubt about the celebrity the ad is meant to depict.”
Similarly, it is possible that Plaintiff will be able to convince the Court that, viewed together, “Don a Henley” and “Take it easy” “leave little doubt about the celebrity the ad is meant to depict. However, Defendant is likely to raise a First Amendment defense.
This is not the first time that Plaintiff has filed a trade mark infringement, false advertising and right of publicity suit against a retailer over the use of a Henley shirt, as Plaintiff filed a similar suit in Texas in 1999, Henley v. Dillard Department Stores.
In that case, the ad featured a Henley shirt and “a photograph of a man wearing a henley shirt with the words, “This is Don” in large print, beside the picture, and an arrow pointing toward the man’s head from the words. Underneath the words is the statement, “This is Don’s henley” in the same size print, with a second arrow pointing to the shirt” adding further that “Sometimes Don tucks it in; other times he wears it loose—it looks great either way. Don loves his henley; you will too.”
Don Henley was successful in his claim in this Northern District of Texas case, but the facts may be distinguished from our case as the Texas ad used “Don” as a first name. In our case, “don” is used as a verb meaning “to put on” or “to wear,” which is what one ordinarily does with a shirt, whether it is an henley or not not.
Mr. Henley specified in his complaint that he plans to donate to charity any financial recovery from this action.