Don Henley Sues Clothing Retailer Over Its Use Of Common English Words
from the a-sad,-strange-little-man dept
Don Henley, poster boy for IP reform and former member of some band from the 70's, is back in the legal news again thanks to his tireless, misguided efforts to "protect" he and his former band's creations from the "harmful" actions of others.
For being such a die-hard defender of intellectual property rights, Henley sure doesn't seem to have much of a grasp on the underlying laws and concepts. This is a guy who thinks the world would be a better place if the DMCA were rewritten to hold third party platforms and services responsible for the infringing acts of their users.
This is also a guy who hates having his music covered by others -- so much so that he and a bunch of his peers (pretty much literally: the group included Steven Tyler, Joe Walsh and Sting) signed off on a letter opposing the creation of a compulsory license for remixes. Henley doesn't want anyone covering his tunes, but he can't do much about it, thanks to compulsory licensing. Now he's fighting to prevent anyone from remixing his work without his permission. (Which, of course, won't be granted. He doesn't even allow the licensing of his creaky 40+-year-old classic rock standards in his catalog.)
Knowing that, it comes as no surprise that Henley would sue a retailer for having the audacity to use a play on words in its advertising that indirectly calls to mind a radio hit from his old band, whose name I certainly won't be mentioning. This is the ad that triggered Don Henley's lawsuit:
Marie-Andree Weiss runs down all of the details of Henley's claims against the t-shirt maker and they are several. First, there's the trademark infringement claim, because Don Henley has trademarked his own name, but only specifically for studio recordings and live music. So, in this case, Henley can't argue that it violates his specific trademark. Instead, he'll likely try the ever-popular "consumer confusion" angle.
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.In which case, Weiss suggests the defendant take the fair use route or argue that the alleged mark wasn't used at all, what with "to don" meaning to wear something and 'henley" being a generic name for a style of shirt.
Henley is also claiming false advertising and -- because this suit was filed in California -- violations of his right to publicity. In both cases, the simplest defense may be to point out that common English words were used, neither of which violate registered marks of Henley's publicity rights. There's also ample room for a First Amendment debate in each of these defenses.
Unfortunately, as Weiss points out, Henley has previously taken a clothing retailer to court over something similarly ridiculous... and won.
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.If Henley wins this suit, it won't make him any richer. He claims any winnings will be donated to charity. I suppose some might view this as honorable and decent, but it seems like the world would be a better place if certain rights holders didn't view it as a God-given mission to protect their marks and their recorded antiquities from anyone and everyone.
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."
Weiss' post goes further into the legal weeds if you're interested in sussing out the merits of each claim. If not, just know this: Don Henley is suing a company for using English words he thinks he owns, no matter what the context. Even if it was a barely-shaded shout out to his old hit, so what? The potential harm here was nil, but thanks to the court system, will now only be limited to Don Henley's overactive imagination.
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Filed Under: don henley, henley shirts, publicity rights, trademark
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The First Word
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I'm not persuaded
Using common English words such as "easy", "it", and "take" are not violations of copyright, trademark, or right to publicity laws. Nor is referring to a shirt as a "Henley". A label encouraging a customer to "don" some piece of clothing is not a violation of the rights of some person named "Don".
But putting on a label saying "DON A HENLEY and Take it easy" -- that may well be a violation of some or all of these. The law does not operate like some computer program which can only blindly apply it's unambiguously defined terms to each fact independently. Instead, the law is permitted to consider the actor's intent and the effect of their behaviors, and is permitted to use common sense in inferring these from the overall behavior. And it would be completely disingenuous to fail to notice that the label, taken as a whole, strongly suggests a certain person and a certain song.
I haven't said that they Mr Henley ought to win this lawsuit -- that would require a judge, jury, and the full evidence from both sides. But one or more of the claims may well have merit so I don't think this case deserved the sort of opprobrium heaped on it in this article.
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Re: I'm not persuaded
The retailer is clearly trying to evoke Don Henley in the viewer.
I don't think the trademark claim will fly because of the different industries (music vs clothing), but the others have some legal merit.
The article is also wrong to bring up:
The use of common English words is separate from violating a registered mark; the former is essentially an argument against all of the claims, and the Lanham and state publicity claim stand independently from the trademark claim
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Re: Re: I'm not persuaded
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Re: Re: Re: I'm not persuaded
they are making a joke of don henley, which he has already done quite well by himself...
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Re: Re: Re: I'm not persuaded
More like a case of a biting the hand that feeds you. A less curmudgeonly musician might have welcomed the free publicity and approached the retailer with a view to creating more - for mutual benefit. Technically he may have a case - but he would be shooting himself in the foot to pursue it!
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Re: I'm not persuaded
The problem the entire premise here is the misguided notion that this has been is relevant. Without this article about the musicians trademark suit, I would have never made the connection regarding some 40 year old song I might occasionally hear on the local oldies station.
There is a big AGE problem with all of this.
Someone with an ancient claim that should have expired by now is shaking someone who is trying to do something current.
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Re: I'm not persuaded
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Re: I'm not persuaded
"Huh, I didn't know Don's middle name started with an 'A'"
Clearly when I saw the ad I thought of Don Henley and the song "Take it Easy". If this goes to a jury, I would lay money that they'll feel the same.
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Re: Re: I'm not persuaded
Any company that can put extra long T-shirts in a bucket and sell them as Plumber's Butt fixer or draw an overweight tradesman naked running around for their Buck Naked underwear is just SO Obviously trading in on the fame and fortune of celebrities and artists and not on the sense of humor of its customers.
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Re: I'm not persuaded
But let me make another point: don't these people read? Five minutes worth of cursory online research would strongly suggest that anyone contemplating such an advertising campaign is like poking a beehive with a stick and is probably going to provoke a reaction they're not going to like. Whether that reaction is justified/reasonable/legally sustainable or not is a separate debate, but why even go there? Surely there are better and easier ways to sell shirts.
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Re: Re: I'm not persuaded
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Re: Re: Re: I'm not persuaded
Had another thought: the use of the verb "don" seems highly conspicuous to me. It's an archaic term that I tend to hear about once a year (in a Christmas carol): I don't think I've heard it in conversation since forever, and I can't recall reading it in anything published since (perhaps) the 1940's. The retailer could have used any number of verbs more common in contemporary vocabularies: "wear", "put on", etc., but I think they chose this particular one solely to play off Don Henley's name.
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Re: Re: Re: Re: I'm not persuaded
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Re: Re: Re: Re: I'm not persuaded
I think you meant "under the thoroughly debunked theory".
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Re: I'm not persuaded
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Re: I'm not persuaded
If this is a violation of Trademark, then Taco Bell's ads would be too.
Common words & phrases being used how they were intended shouldn't be able to be roadblocked by Trademark.
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Re: Re: I'm not persuaded
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Re: Re: Re: I'm not persuaded
Here's the (short version) commercial: http://www.youtube.com/watch?v=2ESaThNFxgQ
An extended version has another tag line at the end (not the commercial, but some analysis of it, which includes the end bit: http://www.youtube.com/watch?v=WML2q9c8R0o).
The tag lines of the commercial/s are variations on "I am Ronald McDonald & I love Taco Bell's new breakfast" & "A delicious new breakfast anyone can love, even Ronald McDonald" (note both are singular). They are indeed trying to imply that McDonald's Ronald McDonald is endorsing them, because they use Ronald McDonald as singular, not plural, even though there are a ton of Ronalds in the commercial/s. Imagine if you heard this commercial, but wasn't watching the TV (like if it was on, but you were in another room), it would SOUND like Ronald the clown was endorsing/ likes Taco Bell, thus, it could, theoretically, fail the moron-in-a-hurry "test."
My point is, even though "Ronald McDonald" is Trademarked, it's also a common name, that cannot be attacked on Trademark grounds in that instance. Similarly, this case uses 2 common phrases that are used w/in their common meanings. Both commercials were made hoping people would conflate the words used to be referencing the trademarks. If one is a violation, the other should be or the Law isn't being applied equally. The intent of both commercials is the same, to get association w/ someone else's Trademark.
It could end up argued as a Free Speech issue, since "put on our shirt & relax" essentially means the same thing as "don a henley & take it easy." It can't be argued that Don isn't trying to limit their free, commonly phrased speech.
The Taco Bell commercial, at least, has 2 restaurants at odds; here the Trademark in question does not cover the clothes at issue.
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Re: Re: I'm not persuaded
And this, my friends, is how Taco Bell won the franchise wars. Now All Restaurants are Taco Bell.
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Re: I'm not persuaded
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Re: I'm not persuaded
Is it a violation of trademark and publicity rights? I don't know, but I don't think the case is without merit.
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Nice shirt
Also, This is another example of why copyright law is absurd. The idea that that one can "own" a creative expression and control it after forty years is absurd. No other profession gets this protection, and unlike this case it usually just goes to support one or two production labels.
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Re: Nice shirt
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But his lawyers will, further enforcing their behavior.
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Don a Henley
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what a big, greedy, control-freak douchenozzle...
did not know he was also so dickish about 'his' 'art', and not wanting ANYONE, EVER to cover it, or mix it...
what a shit head...
keep all your precious POP SONGS (NOT a cure for cancer, you self-important dingleberry) in your studio, and NEVER let us hear them, then...
stupid shit: you either let your creation free to the world and let the world do what it likes, or shut the fuck up about 'stealing'...
i guess its showing my lack of musical sophistication (snobbishness?), but love a lot of their songs...
now?
i'm HATING on the motherfuckin' eagles, bitchez...
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Re: what a big, greedy, control-freak douchenozzle...
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Re: Re: what a big, greedy, control-freak douchenozzle...
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Ancient history
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Re: Ancient history
Both of those have held up rather well over the intervening decades, which is more than can be said about a LOT of their contemporaries and about a LOT of the music released since.
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This is different
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This fair use advocate disagrees as well
The fair use defense strikes me as a loser. I don't know how any viewer of this ad who is decrepit enough to know who Don Henley and his band are (and I count myself among that number) would not think that the shirtmaker might well have Henley's endorsement. Assuming that rights of publicity are legally valid -- and they certainly are in California, when the speech is commercial -- I see Henley winning big.
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Re: This fair use advocate disagrees as well
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I'm under no impression that I'm buying Don Henley. I can see that they are trying to evoke something by making a reference, but it's not confusing. I know it's advertising a shirt, that shirt is probably not endorsed by Don Henley and I probably wouldn't want to actually wear it to Don Henley concert.
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I learn something new every day
As to the lawsuit, this appears to me to fall into a gray area. I can see the argument from both sides -- so going to court doesn't seem so awful. This is precisely one of the types of situations that courts are supposed to figure out.
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Re: I learn something new every day
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Re: I learn something new every day
Says someone who was paying attention during the 1990s. NOT!
Anyways,
I like and buy stuff from Duluth Trading Co. A big part of their advertising is wordplay, puns, entendre, and the like, so when I looked at the screenshot, I knew right away that it had nothing to do with the musician. At the same time, it seems like they were sure trying to make that connection in your head.
Tick me under the "Case might have merit" box. Perhaps a publicity rights argument?
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Re: Re: I learn something new every day
Lol! This has less to do with paying attention during the '90s and more to do with my social circle: I don't think fashion has been a topic of discussion with my friends ever, '90s or not. :)
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The Duluth Trading Co. Wisconsin retailer, who is behind this ad, clearly misappropriated trademarked terms and tried to get away with it.
I just do not see the Duluth Trading Co. getting away with this one.
http://www.jsonline.com/blogs/news/279154351.html
Shame on the Duluth Trading Co.
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Angels on the heads of pins.
I was never a fan of their stuff (I'm allergic to everything that even smells of C&W, which a lot of their stuff was), but a lot of other bands I did pay for are into this BS too. They are way overstepping their rights in trying to tell me what they'll allow me to have in my head. They should just shut up and go swim in their pile of ill-gotten gains.
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*Sigh*
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*Sigh* 2
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I think it stands to reason that any judge worth his or her salt would think this was merely a clever play on words. The fact they're requesting a trial by jury makes me think the plaintiffs are going to pull some ethos BS at the trial. I wouldn't be suprised if they lose.
However, if they do in fact win, it certainly raises a dangerous precedent where creativity cannot dare trifle in the matters of third-parties without paying for a license.
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Would you be upset if you happened to be a celebrity and somebody made an ad promoting a brand of pillows, blankets, or comforters with the tagline "Take a Cushing, Tim"?
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Dangerous argument there.
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I'd think they need better proofreaders.
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This is not about money.
We can (and SHOULD) be grateful to the artists among us for giving us these touchstones. But once the works have touched so many lives they can no longer be owned by anyone ... no matter what any law attempts to dictate. Rule and laws meant to contain ownership of ideas will never be effective or just.
To the artists I say thank you for your contributions to our world, I look forward to your next one.
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A scarier prospect.
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I hope the case gets tossed. Song titles aren't copyright-able and I don't know that anyone has put a trademark on "take it easy" and associated it with anything. I don't think there's any merit here.
If anything, people seeing the ad start humming an old song and potentially could buy something for the band. He should be thanking Duluth for the free press and new-found relevance.
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Remember, if it walk like a duck...
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Don Henley Sues Clothing Retailer Over Its Use Of Common English Words
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Re: Don Henley Sues Clothing Retailer Over Its Use Of Common English Words
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Re: Don Henley Sues Clothing Retailer Over Its Use Of Common English Words
I fail to see why this is such a horrifying thing. No, I'm not arguing US legal minutia. I'm saying US' tort law is insane! Why does Henley get to insert himself into this discussion between a retailer and potential customers *at all*?!? Performer's rights laws are stupid. Henley got his money by selling his music. Why's he now get the right, backed up by the gov't of the US/California, to say what happens to ideas that he sold and was paid good money for?
"The dog in a manger" comes to mind. He's got no bloody right to say what I or anyone else thinks about him or his ideas or his works. His rights ended when he cashed the cheque. He's been paid. It's Miller Time for him. Go make popcorn, and shut up.
Consumers can do research. Some may, and if they think this disses their idol, they won't buy the shirt in solidarity with him. Why's he get to double down and force a retailer to stop using their transformative ideas of our collective culture, which he freely *sold* to us?
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Re: Re: Don Henley Sues Clothing Retailer Over Its Use Of Common English Words
In the U.S., controlling the commercial use of one's name and likeness is not just a "performer's right", its everyone's right.
And this is a good thing.
Imagine a company or product that you despise, something that you morally or ethically despise. Now imagine them using your name or likeness in an advertisement selling that thing.
Or imagine that you own a business and a competitor begins using your picture as an example of one of their happy customers.
The value of your right to control the commercial use of your image becomes quite apparent in these cases. No company should be able to insert you (and your suggested endorsement) into their sales pitch to one of their customers without your permission.
Henley is simply exercising a right that we all have.
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The link 'some band from the 70's', points to http://eaglesofdeathmetal.com/ which is actually the website for a different band Eagles of Death Metal formed in 1998. The Eagles' website is www.eaglesband.com
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Henly T-Shirt
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#2 I hope Duluth Trading rolls out some dude named Don A Henley as part of their defense.
#3 Ive never understood how someone with the platform Mr. Henley has ends up being such a self absorbed jerk. Hey Don, you could actually do some good in this world if you ever get over yourself. Get over it!
#4 I hope someone takes up the cause of our national bird and all other eagles and and sues this jerk.
#5 I hope Duluth Trading Co and the judge flips Henley our other national bird. Maybe Duluth Trading national bird adult diapers in honor of Mr Henley.
#6 I finally understand Jeff The Dude Labowski... thanks to Mr. Henleys actions, I officially hate this fucking band too.
PS Don... it's 2014 and while you may not have come to the realization just yet... you have not been relevant for at least 20 years. Thanks for unnecessarily contributing to the overly litigious society in this country and thus encouraging others to do the same.
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http://consumerist.com/2015/04/16/clothing-company-apologizes-to-don-henley-for-invoking-h is-name-to-sell-shirts/
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