Don Henley, a former member of the rock band the Eagles, has sued a company for using a pun to sell the style of shirts that share his name. The Minnesota-based Duluth Trading Company marketed its Henley shirts (a T-shirt with a short row of vertical buttons down the front) with the phrase, “Don a Henley and Take It Easy.” Mr. Henley complained that the campaign references both his name and the title of the group’s breakthrough single, “Take It Easy.” Mr. Henley did not want consumers to believe he endorsed the shirts and sued in federal court to enforce the rights to his name, trademarks, and other intellectual property.
Some businesses try to make money by using the celebrity’s name in association with the product, in the hopes that the consumer will assume the celebrity endorses the product. Mr. Henley argued that the Duluth Trading Company did not seek a license to use his name in its advertising. Many celebrities seek to protect their names (including Taylor Swift, of recent, read more on her decision to trademark certain catchphrases here) because a name can be a significant financial asset. Trademark, right of publicity, and other laws can also provide protection for the celebrity’s estate, should it need to enforce such rights after the celebrity’s death (such as with Bob Marley. More on that here).
Can anyone trademark their name? Generally speaking, no. Most people cannot secure a trademark registration-and thus grant someone a license-for their personal names. However, a personal name may be registered with the U.S. Patent and Trademark Office if it has a “secondary meaning,” which means that the name has come to be closely associated with a particular product or service (including entertainment services). If the name has come to identify a single source of origin for goods or services, the name may be registered and protected. The inquiry generally focuses on whether the relevant public will believe the name is being used as a person’s name. Alternatively or concurrently, celebrities can use right of publicity laws when, without permission, a company or person suggests that the celebrity endorses their products.
Mr. Henley’s representative told Rolling Stone that Mr. Henley and the Eagles have worked for 40 years to build their name and goodwill in the community, and they have “never allowed their names, likenesses or music-individually or as a group-to be used to sell products.” Approximately four months after filing the suit, Mr. Henley and Duluth Trading Company settled the case for an undisclosed sum. Duluth Trading Company promised to never again use or imply Mr. Henley’s name when selling the style of shirt. The company also made a contribution to Mr. Henley’s non-profit The Walden Woods Project, which is dedicated to preserving the region Henry David Thoreau made famous.
Mr. Henley has vigorously enforced his intellectual property rights in other actions as well. Earlier this year, he criticized as “arrogant” singer Frank Ocean’s decision to sample Eagles hit “Hotel California” and add his own lyrics. Henley refused to grant Ocean a license and later accused Ocean of “stealing stuff from already established works.”
To discuss trademarking your name, likeness, or a form of intellectual property, contact the experienced Orange County trademark lawyers at The Myers Law Group today.