Trademark law is designed to protect the marks of a business, which in some cases can become virtually the most valuable aspect of the company. For instance, the Coca-Cola bottle shape and the Nike swoosh, because of their iconic significant, instantly convey as much or more identification that than actual product. We know it is a Nike shoe because it carries the swoosh.
Don Henley, singer and songwriter with the Eagles, is suing Duluth Trading Co. for using the phrase “Don a Henley and Take It Easy” in its catalogue selling henley shirts. He alleges that the company failed to obtain a license for use of his name or the Eagles’ song “Take it Easy.”
Is this pun in a catalog, playing on his and the song’s name trademark infringement? Or can Duluth Trading defend it as non-infringing parody?
How much do you want to spend on legal fees to find out?
This is a very complex inquiry, and there is no straightforward answer, because the court must analyze the parody and determine if there a likelihood of confusion for potential consumers. In the Ninth Circuit, which includes Arizona, this inquiry has eight factors that need to be examined.
As with many multi-factor tests within the law, the factors are not all given the same weight and depending on your facts, some may not be present. In a case like that of Henley’s, the confusion being looked at is likely that a consumer could perceive the pun as an endorsement by Henley of the henley.
Henley is known to zealously guard the integrity of his and the Eagles’ copyrights and trademarks. Anyone who attempts to parody any intellectual property of such an individual or entity should expect to need an intellectual property attorney to defend the lawsuit that will likely result.
Rolling Stone, “Don Henley Sues Maker of ‘Henley’ T-Shirt Over Pun” Kory Grow, October 10, 2014
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