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.

Filed Under: don henley, henley shirts, publicity rights, trademark