Category Archives: Right of Publicity

Trial of the Century: Trademark Style

“So this is the Day of The Dead” from “We All Lose One Another” by Jason Collett
Trial of the Century! For most Americans, those words conjure two letters—O.J.  But for the past week or so, O.J. arguably has been upstaged by an unlikely figure—Dan Aykroyd.
That’s right, Dan Aykroyd–one of Saturday Night Live’s original “Not Ready For Prime Time Players” who won the fame as the staccato pitchman in SNL’s “Bass-O-Matic” infomercial parody, and who cemented his place in comedy’s pantheon with the original “Ghostbusters” and “Blues Brothers” films. That Dan Aykroyd has evolved into a trademark crusader for his real-life brand of vodka called “Crystal Head,” sold in a distinctive skull-shaped bottle:


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As with most things, success breeds imitators. For Crystal Head, imitation came in the form of rival KAH brand of tequila, also packaged in skull shaped bottles. Unlike Aykroyd’s brand, those skulls were opaque, brightly colored affairs:


KAH founder Kim Brandi claimed that Mexico’s iconic Day of The Dead imagery had inspired her skull design. Aykroyd and his business partner Globefill, Inc., didn’t buy it. They sued for trademark infringement back in 2010. But in a 2013 trial, Brandi beat back Aykroyd’s infringement claim. She testified that she hadn’t even seen Aykroyd’s skull bottles. And the jury bought it.

Dan Aykroyd didn’t give up. He and his lawyers appealed and won a new trial. That new trial, which unfolded last week in a California courtroom, featured showmanship, skullduggery, and scandal worthy of one of Aykroyd’s big-budget Hollywood movies. Aykroyd cast himself in the role of star witness for the prosecution. Wielding a tape measure, Aykroyd systematically compared the features, angles, and dimensions of his skull bottle to Brandi’s. He also testified that confusion in the marketplace was threatening his brand. Claiming to have found a broken glass inside a KAH bottle, Aykroyd told the jury: “I thought, even more reason for me to be concerned about source. What if someone got hurt? And for someone to think we have a product on the market that’s inferior to our vodka, that’s unacceptable.” Aykroyd also testified that KAH tequila “obviously” was a confusingly similar copycat: “I really couldn’t count about how many people who have come and asked us about our new tequila in the skull bottle. We had to say, ‘It’s not ours.’”

Brandi, for her part, argued that Aykroyd shouldn’t be able to block all skull shaped liquor bottles, especially ones like Brandi’s, whose bright colors evoked iconic Mexican imagery. And Brandi stuck to her story, insisting that she hadn’t seen Aykroyd’s skull bottles when decided on the Day of The Dead theme for her tequila bottles. She brushed-aside the similarities Aykroyd had pointed out as “coincidence.”

That’s when the real drama happened. In a finale worth of Perry Mason, Aykroyd’s legal team unveiled a bombshell—the guy Brandi hired to design her bottles. This surprise witness testified that Brandi handed him one of Aykroyd’s skull bottles and told him to make a plaster cast of it so that she could model her design on Aykroyd’s distinctive skull container.
Armed with this testimony, Aykroyd’s lawyer told the jury that Brandi had lied. Four hours later, the jury returned its verdict—guilty as charged.

So now, seven years after the story began, Dan Aykroyd and his legal team are close to achieving their perfect ending. All that remains is for the Judge to decide the remedy. That phase of the case is still to come. For now, Aykroyd has the satisfaction of knowing that, at least for now, justice delayed is not justice denied.

The name of the case is Globefill Inc. v. Elements Spirits Inc., 2:10-cv-02034, U.S. District Court for the Central District of California.

Quote of the day: “Alas, poor Yorick! I knew him, Horatio, a fellow of infinite jest, of most excellent fancy. He hath bore me on his back a thousand times, and now how abhorr’d in my imagination it is! My gorge rises at it.” Hamlet by W. Shakespeare

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Legal Eagle or Fairly Mocked Bird? Don Henley Wings Into Court

“He’s a tortured artist. Used to be in the Eagles. Now he whines. Like a wounded beagle. Poet of despair! Pumped up with hot air!’ Don Henley Must Die, by Mojo Nixon

Ask a serious music fan about Eagles and their singer Don Henley, and you’re likely to hear sentiments not so different from Mojo Nixon’s satiric verses in “Don Henley Must Die.” Sure, Mr. Henley has been outspoken in support of artists’ rights, testifying before Congress on a symphony of issues relating to recording industry practices. And his positions on environmental issues, reflected in his stewardship of the Waldon Woods Project, have been pristine.
So why do music fans like me–whose tastes swing between the Eagle’s forerunners and many of the band’s progeny–cringe at the thought of Don Henley–the man and his music? Why, when we hear him crooning on “The Boys of Summer,” do we immediately pray for an early frost; for the top to go up and wipers turned on in old Don’s California idyll? Could it be that the maitre d’ at the Hotel California, the head honcho in that band of Desperadoes, has seen one too many Tequila Sunrises and simply lost his sense of humor?
Judging from Mr. Henley’s latest legal foray, it does not take a 12-part podcast from NPR to conclude that when it comes to his “Right of Publicity” Don Henley has checked his funnybone at the courthouse door.
Here’s the story. For years, menswear companies from J. Crew to Joe A. Bank have sold long-sleeved, cotton shirts with crew collars and three or four button fronts. These casual shirts are called Henleys–taking their name from the rarefied world of rowing and regattas on the Thames near Oxford. And for decades, if not centuries, “to don” has meant the act of pulling on a uniform–such as a jersey and, yes, a Henley tee. So Englishmen may have been donning Henleys since Henry VIII serenaded Ann Boleyn with “Welcome to the Hotel Tower of London, such a lonely place.”
Henry, being king of court, could dispense bad tunes and swift justice however he wished when spurned by a wife or rival.
Don Henley, however, must resort to the U.S. courts to protect his name. And that’s what he did when he took offense at an advertisement by U.S. clothier Duluth Trading, a company known for edgy, sometimes cheeky ads for traditional clothing geared to tradesman and outdoor enthusiasts featuring Giant Angry Beavers, Groping Grizzlies, and Unruly Bushes. One ad, for Duluth’s “Long-Tail Tee,” even proposes a “Cure for Plumbers’ Butt.” Cheeky indeed.
But when, in advertising its long-sleeve button pullover shirt, Duluth urged customers to “don a Henley, take it easy,” the Eagles singer/drummer didn’t appreciate the humor. Instead of laughing with Duluth he sued Duluth–in California, where else? Henley alleges in his complaint that Duluth’s ad for Henley shirts deliberately invokes Mr. Henley’s name and his association with the Eagles, and are aimed at “exploiting the celebrity of Mr. Henley and the Eagles’ hit record.” Mr. Henley’s complaint also alleges that consumers, not Henley, are the real victims: “Large numbers of consumers . . . will unquestionably believe that Mr. Henley is associated with and/or has endorsed {Duluth]and its products . . .”
Duluth, for its part, seems to be taking things in stride, as its whimsical ads might suggest. “The advertisement is obviously a joke (something we presume not even Mr. Henley disputes),” Duluth wrote in asking the court to toss Henley’s suit. “It is self-evident that the use that was made of Mr. Henley’s name was a joke intended to highlight the coincidence that [he] shares his last name with a ubiquitous casual shirt and that his first name means ‘to wear.'”
So we have Duluth’s claims of Freedom of Speech and Expression lined up against Mr. Henley’s right to protect his name and image from being used to confuse or deceive consumers and his further right to control who may or may not exploit his name for commercial gain. There’s just enough traction on both sides that the court may have less than a peaceful, easy feeling in deciding who’s right. The outcome likely will turn on whether the court finds Duluth’s ad “transformative”–that is, did the parodist or satirist infuse the work with enough creativity and original expression to merit the First Amendment’s protection. In other words, will the judge or jury get the joke, and think the joke is clever enough to side with Duluth? Or will they find that the joke is just a tepid excuse for identity theft. Cases like this usually settle, so we won’t likely know how and where the California court would draw the line. But we can safely say, whatever the outcome, that Duluth Trading is a far cry from all those “Desperadoes” Henley and his compadres glorified through their music. Perhaps the irony is lost on Henley; the man who entreated notorious thieves and killers Frank and Jesse James to “keep on riding, riding, riding,” has a short fuse when it comes to Duluth using a clever pun to sell Henley tees. But after living in the fast lane so long, Henley apparently know only one way to react when provoked–take it to the limit–one more time.

UPDATE: On January 22, the Judge denied Duluth’s request to throw the case out based on its so-called obviously-a-joke-defense. In a terse ruling, the Judge wrote: “Even assuming for the sake of argument that the transformative use test of Comedy III Prods., Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387 (2001) 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.” Tranlation from legalese to plain-speak: Just because “Take it easy-don a henly” may be funny, doesn’t automatically mean Duluth is off the hook. To paraphraase “Take It Easy,” the Court did what Duluth didn’t want it to do: it said “maybe.”

QUOTE OF THE DAY: “It is the ability to take a joke, not make one, that proves you have a sense of humor.”
Max Eastman


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Hardly Strictly Amazing: Warren Hellman and HSB


“Gonna play that shady grove, play that shady grove.” Steve Earle, “Warren Hellman’s Banjo.”

As regular, or even irregular, readers of this blog know, music plays a big part in my life. From my roots in Trenton NJ, listening to The Beatles on a cheap transistor radio, to wearing out the grooves in CSNY’s Carry On at the Jersey Shore, to catching emerging artists like Joe Pug at DC’s wonderful Hamilton, music has brought me some of life’s happiest moments. And no musical moments have been happier than the San Francisco mornings and afternoons I’ve spent with my son, his friend Greg D. and Greg’s Dad Spiros at Hardly Strictly Bluegrass (HSB as regulars call it).

HSB is the brainchild of financier Warren Hellman, one time President of Lehman Brothers, co-founder of private equity firm Hellman and Friedman, and HSB’s singular benefactor. Hatched as a small bluegrass festival 13 years ago, HSB has morphed into one of the country’s premier musical happenings, on a par with Bonaroo and the Newport Folk Festival. And it’s entirely free, regularly attracting hundreds of thousands of folks who come to listen or just graze in the grass. This year’s headliners for the event kicking off Friday, October 4, will include Bonnie Raitt, Steve Martin and his Steep Canyon Rangers, and perennial closing act Emmylou Harris, this year performing with Rodney Crowell.

Crammed onto six stages over three days in the majestic urban preserve Golden Gate Park, HSB boasts a veritable who’s who of Americana, indie rock, and bluegrass acts, expertly curated by Dawn Holliday. I first attended HSB on a whim in 2005, as a father-son bonding adventure with Greg and Spiros, who I first met at the airport before boarding our jet to SF. The experience was transformative and transcendent. From the first time we entered Golden Gate park and breathed in the scent of eucalyptus and pine through the morning mist, we knew that magic was in the air.

That year, the artist I work with, Ana Egge, was on the bill, and snagged all-access backstage passes for our father/son band of four. The boys used their inside access to good use, filming interviews of everyone from Emmylou and Patty Griffen to bluegrass royalty Ricky Skaggs and Austin legend Joe Ely. The artists, too shocked and stunned by the boys nerve and pluck to object, gave candid and good-hearted quips and quotes to the enterprising young auteurs with their naive charm and handheld home video camera. Interspersing those interviews with deft concert footage, the boys created an award-winning documentary and sent a copy to Mr. Hellman. (You can watch it at ) Warren loved it, writing back that it perfectly captured the ethos and spirit of HSB. We’ve been invited back every year since as part of his “Friends and Family.”

With work and life taking center stage, we won’t be there this year. I’m feeling pangs of regret, but assuaging them with memories of HSBs past: Robert Earl Keen singing “The Road Goes On Forever (And The Party Never Ends) to close Saturday nights on the Rooster Stage, with its long narrow glen ending in a cathedral of tall trees rimming a natural amphitheater. Catching the world debut of Dave Alvin and the Guilty Women, playing a thrilling, virtuoso set as they performed together live for the first time, with the late Amy Farris dazzling with her flaming red hair her muscular violin solos. Hearing Joan Baez mesmerize a crowd 40,000 strong, and feeling what it must have been like at Woodstock. Wandering backstage and watching from behind the main stage as Gillian Welch and David Rawlings weave intricate harmonies. Leaving the park as dusk as a chill descended, perfectly sated from wandering back and forth from stage to stage, wanting to drink in as much music as possible. Heading back to the quirky Del Sol Hotel in the city’s Cow Hollow neighborhood, running into Merle Haggard’s guitarist, Norm Hamlet, who couldn’t have been more gracious, having a wonderful moment in the early morning, sitting by the pool with a cup of coffee and waiting for the day to kick into gear, or running across the Golden Gate Bridge at sunrise, watching the fingers of the sun caress the buildings along SF’s skyline.

Warren Hellman passed away last year, and HSB stalwart Steve Earle honored him with the song quoted above. Not only was Warren a master investor, he played the banjo too. He formed a band, The Wronglers, of like-minded folks who were passionate about life and music. Each year, The Wronglers performed at HSB’s smallest stage, The Porch. Nearly every year I went to hear them, figuring it was the the least I could do for the man whose generosity made possible the whole shebang. And each year, they improved, with Warren taking delight in every note, every song. They got so good that one of Texas’s geatest troubadors, Jimmie Dale Gilmore, agreed to perform with Warren and his band. And before Warren died, he fulfilled a dream that no doubt delighted him as much, if not more, than all his monetary triumphs. He recorded an album of classic Americana tunes with Jimmie Dale on lead vocals, and they went on tour, performing at music clubs and concert halls aroung the country. They were terrific. Seeing Warren Hellman beaming on stage and thriving, when he knew he was grievously ill, said all there is to say about the power of music. And of course, Warren lives on in HSB, his legacy, his gift.

Next year I plan to be in San Francisco, to reclaim my heart.

QUOTE OF THE DAY: “I describe [HSB] frequently as the world’s most selfish gift. It’s a fantastically selfish gift, but it is a gift. There are hundreds of thousands of people there who are appreciating it. Just being able to do something that is completely not commercial, that is pure, hopefully, pleasure for the participants–to create a surrounding where the musicians and professionals like it as much as the crowd does. How could you have more fun than that? What the hell is money for if it isn’t for something like that?” Warren Hellman


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INTA The Great Wide Open

“Have you ever seen Dallas from a DC-9 at night?” Dallas by The Flatlanders

When you think of Dallas, many images snap to mind. The grainy, jarring frames of Abraham Zapruder’s home movie, Lee Harvey Oswald doubled over from the blast from Jack Ruby’s pistol, Tom Landry stalking the sidelines of the Cotton Bowl in his suit, tie, and hat, the portrait of Jock Ewing hanging over Miss Ellie’s mantle at Southfork, Tony Romo’s smirk, Larry Hagman’s devilish grin as JR Ewing over two generations of Dallas, the soap opera.

Trademarks, however, are not top of mind when you land at DFW or Love Field, not even as you make your way to the flagship Nieman Marcus in downtown Big D.

But here in Dallas this week in May, almost 10,000 trademark professionals–in-house corporate lawyers, outside counsel, Internet and domain name specialists, and flocks of experts and service providers–have descended on Dallas for the 135th International Trademark Association Annual Meeting.

Trademarks and Texas have come a long way since 1888 when the first annual meeting took place. Then, a “brand” in Texas literally meant a symbol seared into the hide of a cow. And justice was meted out by Judge Roy Bean, whose “Law West of the Pecos” entailed more hangings than injunctions for trademark infringement. (We shudder to think of how Judge Bean would have dealt with such devious hombres as counterfeiters and cyber squatters).

And those first INTA attendees back in 1888 would marvel at the range of topics swirling around INTA 2013–social media, fluid trademarks, gtdls, and the “food explosion” and other trendy subjects speak to the complexities and challenges of our brand-centric modern era.

Dallas has been hospitable and impressive. And steeped in history, from the life size sculpture of a long horn cattle drive that speaks to Texas’ Lonesome Dove days to the Texas Book Depository that reminds us of a dark day in November fifty years ago.

Having grown up in Lawrence NJ, I naturally gravitated to the Hotel Lawrence, a venerable establishment that makes up in friendly staff what it lacks in luxury. It’s just a block from Dealey Plaza, and sleeping in the vicinity of JFK’s final ride has conjured up some fitful dreams while rekindling interest in the “single bullet theory” and other conspiracies that seldom haunt my thoughts back home.

Yes, as those Texas troubadours The Flatlanders sing, Dallas is a beautiful sight, and a haunting one too.

QUOTE OF THE DAY: “Hang ’em first and try ’em later.” Judge Roy Bean.

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You Can’t Raise A Caine Back Up When He’s In Defeat: Levon Helm Loses Courtroom Battle

“Hey, wait a minute Chester,  I’m a peaceful man!”  The Weight

In 1968, Levon Helm, Robbie Robertson, Rick Danko, Richard Manuel, and Garth Hudson holed up in a colorful cottage near Woodstock, NY, called “Big Pink.”  These five musicians had backed Bob Dylan’s notorious leap from acoustic strummer to electrified frontman, earning the condemnation of purists at the Newport Folk Festival.  At first, Helm and his cohorts remained anonymous, referred to collectively as simply “The Band.”  But before long, and on the strength of their earthy, gutsy music, the group rose to iconic status, and their afterthought of a name became legendary.  Martin Scorsese’s landmark concert film, The Last Waltz,  not only captured The Band’s farewell performance, but inspired the seminal mockumentary This Is Spinal Tap.   Among the Last Waltz’s highlights is drummer Levon Helm’s impassioned performance of the  classic song “The Weight.”  In his prematurely haggard voice, Levon delivered one of Rock’s signature lyrics “Rolled into Nazareth, I was feeling ’bout half-past dead.”   Then, joined by the weathered harmonies of  Band mates Danko and Manuel, Levon dove into the enigmatic chorus “Take a load of Fannie, take a load for free, take a load off Fannie, and, and and, you put the load right on me.”

After The Band disbanded, Helm thrived as an actor and musician, trailblazing the amalgam of folk, rock, and country music known as American and becoming its beloved elder statesman.  Through it all, Levon and “The Weight” remain forever linked together.  It came as no surprise, then, that Levon became less than gruntled to discover seven years ago that his signature vocal turn in The Weight had been licensed as the theme for a cell phone TV ad.  Helm sued, claiming that the commercial use of his voice violated his right of publicity.  The so-called “ROP” protect’s a person’s name. likeness, and voice from unauthorized use by others, especially commercial uses.  Gravel voiced singer Tom Waits successfully wielded his ROP to block a commercial that employed a Waitsian sound-alike after Tom himself refused to allow use of  one of his vocal performances.  If Waits could stop and impersonator, Levon must have thought that his lawsuit, against the real McCoy, would be a sure thing.  And it might have been, except for one thing.  Years ago, Levon and The Band signed away their rights in “The Weight” and many other songs.  Their record company, not Levon,  owned the recordings.  And the record company, not Levon, had the right to decide where that music can be used–including the right to license “The Weight” for use in commercials.

Like the father he played in Coal Miner’s Daughter, Levon tried to dig himself out from under the weight of The Band’s prior agreement.  He didn’t deny having signed away some of his rights.  But he argued that he had kept his ROP.  Both the trial cour and the appellate court had little trouble rejecting Helm’s theory.  The trial court didn’t let the case go to trial, and the appeals court affirmed that summary ruling finding that Helm and The Band had held back nothing when they signed away their rights.  So to paraphrase “The Weight,” when Levon Helm asked the judge for relief, “No” is all he said.


“Ah, mon cher, for anyone who is alone, without God and without a master, the weight of days is dreadful.” Albert Camus

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