Former Eagles drummer and co-lead singer Don Henley has just agreed to settle a lawsuit that he filed against Duluth Trading Co., the clothing retailer best known for its goofy cartoon ads on television. The crux of Henley’s lawsuit was that Duluth Trading, without Henley’s permission, sent out email advertisements (shown in the photo accompanying this post) for henley-style shirts (a “henley” is a type of shirt that resembles a collarless polo shirt) with the following text: “DON A HENLEY AND TAKE IT EASY.” While the song “Take It Easy” was not written by Henley (it was co-written by Jackson Browne and Eagle Glenn Frey who also sang lead on it), it was a huge hit for the Eagles. Henley claimed that the ads for the henley shirts purposely were designed to commercially exploit Henley’s name and persona, thus violating both his right of publicity and his trademarks. Henley owns two Federal trademark registrations for his name.
The right of publicity (which is the subject of a prior blawg post) is a state law right that protects various aspects of a person’s name, likeness and persona. The scope of the protection varies from state to state and the right is not recognized in every state. There is no uniform Federal right of publicity (like copyright law).
The case against Duluth was filed by Henley last October. It alleged that Duluth’s ad “deliberately invoke[d] Mr. Henley’s name and his association with the Eagles (via an Eagles hit song title) to sell its apparel.” Duluth Trading responded at the time by arguing that the “obvious joke” was not a violation of Henley’s publicity rights or trademark rights and was protected by the First Amendment as free speech. For its part, Duluth pointed out that the “henley” is named for the English town of Henley-on-Thames, not for the musician. Duluth Trading claimed that its use was a “transformative use” of portions of Mr. Henley’s name and, thus, constituted fair use. The concept of a “transformative use” is an element of a copyright concept called “fair use” and is not one that has been applied to right of publicity or trademark cases in the same way. (For a broader discussion of the Copyright Act’s Fair Use Doctrine, see my blawg posts of February 20, 2013 and November 21, 2013.) Since this case settled before the court issued a ruling on this issue, whether or not the court in this case would have applied the concept of a “transformative use” beyond the scope of a copyright claim is not clear.
As part of the settlement, Duluth Trading has publicly apologized to Henley on its Facebook page and on its website. In the apology, Duluth Trading claimed that the henley shirt ad, like its other advertisements, was intended to be a funny pun. Duluth apologized for using Henley’s name without his permission and also agreed to make a donation to one of Henley’s favored charities.
The lesson to be learned from this case is that celebrities increasingly are asserting their publicity rights to prevent third parties from commercializing products using their names, likenesses or personas. Businesses who desire to create parody advertisements need to consider how far they can go and also should factor into their decision the litigious reputation of the party whom they are going to parody. Don Henley, who has a long history of assorted legal battles against various members of the music industry, was apparently not going to keep his shirt on for this one.
