Maybe Duluth Trading Company should’ve known better. Maybe it was just living life in the advertising fast lane. But on October 6, 2014, the Wisconsin clothing company circulated an ad to its customers imploring them to “Don a Henley and Take it Easy.” The “Henley” the ad refers to is the famous, three-button long sleeve shirt that has become a symbol of relaxation and “cool” since it was first placed on store racks. But in invoking the surname of Eagles’ co-founder and lead singer Don Henley, who evidently owns a registered trademark in his own name, it appears that Duluth has now put itself in a situation where it “may lose or they may win, though [it’ll] never be here again.”
No later than two days after the circulation of the advertisement, the world famous-singer and his lawyers had filed a lawsuit, Don Henley v. Duluth Holdings Inc., d/b/a Duluth Trading Company, a Wisconsin Corporation, No. 14-7827, in federal court in the Central District of California, seeking unspecified damages for what they allege to be Duluth’s trademark infringement of the singer’s namesake, along with four other alleged violations of the Lanham Act and California state law. According to the complaint, Henley allegedly registered the word mark “Don Henley” on two separate registrations in April and June of 2000 (though, the Insider has reason to believe that Mr. Henley has been using his name in commerce for much longer than that).
As a result, Henley and his lawyers claim, the advertisement was distributed to Duluth’s customers “as a means of exploiting the celebrity of Mr. Henley and the popularity [of] the Eagles’ hit record, “Take It Easy.” If you’re looking to win your local Eagles trivia contest though, you should note that the famous Eagles song conjured by the ad was not written by Henley ((indeed, Glenn Frey, not Henley, sang lead vocals on the song). Yet, there has been no word at press time as to whether co-writers Frey and/or Jackson Browne had any similar issues with the ad’s use of the name of the 1972 single. In any event, Henley alleges that Duluth failed to obtain a license or any other type of authorization which would have permitted it to use the mark “Don Henley” in its advertisement. As a result, he says his mark was infringed and assuming the court were to award him damages, he states in his complaint he will donate same to charity. So, should Duluth have a peaceful, easy feeling about their defenses here?
Under the law of the Ninth Circuit, to prove trademark infringement Henley will have to prove a likelihood of consumer confusion under factors outlined in AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979):
- Strength of the plaintiff’s mark
- Relatedness of the goods
- Similarity of the marks
- Evidence of actual confusion
- Marketing channels used
- Likely degree of purchaser care
- Defendant’s intent in selecting the mark
- Likelihood of expansion of the product lines
Would a reasonable consumer likely be confused between “Don Henley,” the word mark signifying a musician, and an advertisement from a clothing company asking its customers to “Don a Henley,” which is literally asking the customer to wear a shirt? For what it’s worth, under the test, “Don Henley” is surely a strong mark, as Henley explains in the complaint. But, as for the similarity of the marks, the word mark “Don Henley” is not the actual phrase/mark that is used in the ad, surely an important distinction, and there are likely to be serious questions as to whether goods bearing the mark “Don Henley” would be sold in the same marketing channels as clothing from Duluth’s line. It also remains a fair assumption that the consumer for the Duluth shirts will not buy a Henley shirt because they believe it’s endorsed by Don Henley, and will likely think it’s just a funny play-on-words and a clever piece of advertising. The Insider believes the Plaintiff will be hard-pressed to find actual evidence of confusion here. And Henley, who’s had his mark for 15 years, and his name for 67, has never evidenced any intent to expand into the market occupied by Duluth. Confusion seems very unlikely.
Further, under Ninth Circuit law, a defendant may use a plaintiff’s mark as a parody when the defendant preserves a “clear distinction … between the source of the target and the source of the parody,” such that no likelihood of confusion exists. Diller v. Barry Driller, Inc., 2012 U.S. Dist. LEXIS 133515 (C.D. Cal. Sept. 10, 2012). Parody is not a defense to trademark infringement, but instead is relevant to show that there is little likelihood of confusion between an original mark and a parody of that mark. Lucasfilm, Ltd. v. Media Mkt. Group, Ltd., 182 F. Supp. 2d 897, 901 (N.D. Cal. 2002). Because this parody arguably is meant to comment on or criticize an original work, it is unlikely to be confused with the original work, i.e. “Don Henley.” Id. However, it’s no slam-dunk that the court will see this as a parody worth protecting. In Ninth Circuit courts, the claim of parody is no defense “where the purpose of the similarity is to capitalize on a famous mark’s popularity for the defendant’s own commercial use.” Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., 109 F.3d 1394, 1405-1406 (9th Cir. 1997). As the Insider noted earlier, the ad does not ask its customers to buy and wear a Henley shirt — it asks them to “Don a Henley,” clearly an attempt to capitalize on the goodwill of Henley’s name and his mark that has gained great fame over the years. So, the District Court could really go either way on this point.
An answer or motion with respect to the complaint is due shortly, and only time will tell whether Duluth will be able to successfully defend itself against one of the world’s most powerful musicians. Until then, for Duluth it appears that the age of innocence is now over – it must now be thinking to itself: “this [lawsuit] could be heaven or this could be hell”.