A California federal judge recently denied a motion to dismiss the lawsuit filed by Eagles’ lead singer Don Henley over the use of the tagline “Don a henley and take it easy” shown below:
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Henley, who owns two federal trademark registrations for his name (Reg. Nos. 2337742 and 2359466), sued Duluth Trading Co. in October 2014 for a variety of claims including violation of his publicity rights and trademark infringement. According to Henley’s complaint, Duluth Trading used Henley’s name and the Eagles’ popular song title to imply that Henley had endorsed the goods and thereby increase sales.
Duluth filed a motion to dismiss the right-of-publicity claim, arguing that the advertisement was a humorous play on words achieved by omitting Henley’s real middle initial, “H,” and substituting it for “A.” Henley’s attorneys countered that Ninth Circuit precedent does not extend First Amendment protection to the commercial use of a celebrity’s name to sell unrelated goods, and that the Ninth Circuit’s “transformative use” test set forth in Comedy III Productions Inc. v. Saderup Inc., 25 Cal. 4th 387 (2001) does not apply to commercial speech. Under that test, the use of a celebrity’s name or likeness is permissible only if it contains “significant transformative elements.”
Without deciding whether the transformative use test set forth in Comedy III applied, the court held that “[e]ven assuming for the sake of argument that the transformative use test . . . applies, Defendant has not established that its use of Plaintiff’s name – and the name of one of his band’s most famous songs – in its advertisement was sufficiently transformative on its face that a motion to dismiss should be granted.”