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.

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.”

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.

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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Comments on “Don Henley Sues Clothing Retailer Over Its Use Of Common English Words”

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mcherm (profile) says:

I'm not persuaded

In general, I am quite concerned about overreach in trademark laws. However, I think this case actually has merit.

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.

IAmNotYourLawyer (profile) says:

Re: I'm not persuaded

I agree.

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:

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.

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

Mason Wheeler (profile) says:

Re: Re: I'm not persuaded

Agreed. Just looking at the ad, I didn’t even notice the “A” at first, and it certainly does look like they’re trying to very deliberately invoke the singer and one of his famous sings. If I were on a jury I’d call this a pretty clear-cut case of false advertising/false endorsement.

Richard (profile) says:

Re: Re: Re: I'm not persuaded

If I were on a jury I’d call this a pretty clear-cut case of false advertising/false endorsement.

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!


Re: Re: I'm not persuaded

Names make crap trademarks for the same reason they make crap keys in data processing. They aren’t nearly distinctive enough. Sooner or later you’re going to run into someone else with the same name or even a bunch of someone else’s.

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.

Anonymous Coward says:

Re: I'm not persuaded

Gotta say I agree with you on this one. First thing I thought when I saw the ad in the picture?

“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.

Jay Lahto (profile) says:

Re: Re: I'm not persuaded

I’ve been a customer of the Duluth Trading Company for years. They’ve been writing this style of copy in their catalogs since forever.

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.

Rich Kulawiec (profile) says:

Re: I'm not persuaded

I’m not persuaded either — and I’m the opposite of an IP maximalist. The retailer behind this is clearly trying to evoke Don Henley’s name and the title/lyrics of the Eagles’ first hit song…which I think is modestly clever, but then again I’m not the one having my song used to hawk clothes.

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.

Chris ODonnell (profile) says:

Re: Re: I'm not persuaded

You are assuming that they don’t want the attention. Would any of us be aware of this product without them “poking the beehive.” It could be a moderately clever gamble that he short term gain in sales and publicity and long term gain on name recognition will be worth more than whatever they settle for when settle the lawsuit.

Rich Kulawiec (profile) says:

Re: Re: Re: I'm not persuaded

Maybe. They wouldn’t be the first ones to try to provoke a negative reaction under the theory that any publicity is good publicity.

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.

Lurker Keith says:

Re: I'm not persuaded

I’m not so sure. Taco Bell does something similar in some of their commercials, by getting a bunch of people (supposedly actually) named Ronald McDonald to endorse their food.

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.

Anonymous Coward says:

Re: Re: I'm not persuaded

I don’t believe that’s the same. Taco Bell finding a bunch of Ronald McDonald’s isn’t going to give any idiot-in-a-hurry the idea that McDonald’s restaurants are now endorsing a direct competitor. The idea that Don Henley might have a new clothing line coming out, though? Seems completely likely. Consumer confusion indeed.

Lurker Keith says:

Re: Re: Re: I'm not persuaded

I didn’t say they were identical situations. What I meant to say is this situation reminded me of the Taco Bell commercial (since I don’t bother w/ commercials & don’t like Taco Bell, that’s a bit of a feat).

Here’s the (short version) commercial:

An extended version has another tag line at the end (not the commercial, but some analysis of it, which includes the end bit:

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.

bluon (profile) says:

Re: I'm not persuaded

Yeah, not an expert here, but the ad clearly is trying to get the customer to associate “Don Henley” and the Eagles song “Take It Easy” with their product. While they might be common English words, they aren’t simply using these words in some other legitimate and unrelated combination. That doesn’t sound like a fair use case to me.

Chronno S. Trigger (profile) says:

Re: I'm not persuaded

Yeah, I have to agree. I had to read most of the article before I realized it was a play on words. Now that I know that, it’s obvious they were going for that. It’s a reference to a cultural icon, a joke. Not a good one for people who don’t use the word “don” any more or know that “henley” is a type of shirt (like me or apparently Firefox spellchecker).

Is it a violation of trademark and publicity rights? I don’t know, but I don’t think the case is without merit.

art guerrilla (profile) says:

what a big, greedy, control-freak douchenozzle...

have half a mind to -PURELY out of spite- melt down my eagles cd’s and send the puddle to the pompous, arrogant dickwad…
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…
i’m HATING on the motherfuckin’ eagles, bitchez…

Rich Kulawiec (profile) says:

Re: Re: Re: Ancient history

The profound ignorance of your teacher is unfortunate, but not surprising. Don’t fall into the trap of conflating Henley’s/The Eagles’ stance on copyright/trademark/ with the quality of their musical output. 30 years ago, Henley released “Building the Perfect Beast”, arguably one of the best albums of the 1980’s, and followed it up five years later with “The End of the Innocence”, also arguably one of the best albums of the 1980’s.

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.

David says:

This is different

I would side with him in this case (maybe not in the “This is Don’s Henley” one, though). This is not trying to trademark “Monster” in all permutations. This is a specific phrase and explicitly intended to reference Don Henley and his music. Not just a couple of common words randomly. Now, if they did a “Don A Henley, and Relax” ad, I think Mr. Henley would have a much tougher case.

Paul Alan Levy (profile) says:

This fair use advocate disagrees as well

Strikes me that this is a retailer who is deliberately treading at or beyond the edge of parody in the hope that the publicity about being attacked by Henley will sell lots of its wares. But that will only do it good if it is not ultimately stripped of its profits in the form of damages.

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.

Anonymous Coward says:

Re: This fair use advocate disagrees as well

I don’t see it going that far. I see the company reaping the publicity from the coverage then complying with the cease and desist demand and negotiating a settlement. It’s a form of guerrilla marketing that is increasingly popular these days, just like the Samsung selfie coups are.

Anonymous Coward says:

I think they would have a much stronger defense if they had used capitalization much more carefully. With the lsyout they have, the words DON A HENLEY could easily be interpreted as a proper name instead of a command. Of course, Don Henley’s middle initial is “H” instead of an “A” which quickly leads to a valid argument that with that interpretation, it obviously couldn’t be referring to him.

DB (profile) says:

This isn’t confusingly similar to me, and I consider myself a “reasonable man”.

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.

John Fenderson (profile) says:

I learn something new every day

I didn’t know a “henley” was a type of shirt until now!

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.

Anonymous Coward says:

Re: I learn something new every day

I didn’t know a “henley” was a type of shirt until now!

Says someone who was paying attention during the 1990s. NOT!

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?

Anonymous Coward says:

“Don A Henley” and “Take it easy”? Don Henley might have an actual claim against this company because of the attempt to try and associate Don Henley and The Eagles with their advertising campaign.

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.

Shame on the Duluth Trading Co.

tqk (profile) says:

Angels on the heads of pins.

What appears to have been missed here by everybody is there are more than two sides here, and one of them’s being completely ignored by this litigious BS. This’s my (and quite a few million others’) culture they’re screwing with. I grew up with this stuff all around me. It’s partially what helped create the me that is me. For them to put their stuff out there for the lucrative rewards which we paid them for their efforts and creativity, then to now start locking it down and clawing it back, is atrocious and insulting! If I had spent money on their albums, I’d be demanding a refund right now.

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.

Not particularly an Anonymous Coward says:

>demand for a jury trial

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.

MonkeyFracasJr (profile) says:

This is not about money.

To Mr. Henley et al. this is about money, however you you and I it is not. To me this is about our culture and our “world”. As a work becomes more well known it becomes more and more pervasive, more a PART OF who we are, not just a picture, or sound or string of words. The adds referenced in this article, in fact MANY MANY ads and slogans have meaning NOT because an artist created then but because we are so familiar with them they are part of who we are.

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.

Anonymous Coward says:

That ad showed more creativity than Henley has in a long time.

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.

The Rights Report (user link) says:

Don Henley Sues Clothing Retailer Over Its Use Of Common English Words

While the retailer may have considered it to simply be clever wordplay, the use of Henley’s first name, combined with the name of the product and a title of one his band’s most popular songs, adds up to a strong case of consumer confusion. Whether or not it rises to the level of trademark or publicity right infringement, there is nothing indirect about that ad’s attempt to call Don Henley to mind while promoting the shirt.

tqk (profile) says:

Re: Don Henley Sues Clothing Retailer Over Its Use Of Common English Words

> … adds up to a strong case of consumer confusion.

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?

The Rights Report (user link) says:

Re: Re: Don Henley Sues Clothing Retailer Over Its Use Of Common English Words

Henley is not inserting himself into the discussion between a retailer and a potential customer. The retailer is doing that by invoking Henley’s name and body of work in association with its product.

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.

Hector says:

#1 I’m done listening to that band.
#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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