Belleville-based Duluth Trading Co. says in court filings that fair use and free speech defenses should free it from a trademark infringement lawsuit brought against it last fall by Don Henley, a founding member of the classic rock band Eagles.
Henley filed the lawsuit in October against the clothing merchandiser over an advertisement it sent to its customers that included text reading, “DON A HENLEY AND Take it easy,” a play on Henley’s name and the Eagles’ first big hit from 1972, “Take It Easy.”
The ad promoted Duluth’s semi-buttoned, collarless long-sleeve pullover shirts, often called henleys by clothing makers.
The case is being heard in U.S. District Court for the Central District of California.
In December, Duluth sought to have some of Henley’s legal claims against it dismissed, arguing that it is protected by law to have a little fun with Henley’s name, “poking fun of the fact that Don Henley’s name is made up of a verb and a type of shirt.”
Portions of Henley’s name, and not his actual name of Don H. Henley, were used “in a transformative nature” that invokes free speech protection under the U.S. Constitution, Duluth’s lawyers wrote.
“Putting aside the fact that plaintiff’s literal name is not being used, it is self evident that the use that was made of Mr. Henley’s name was a joke intended to highlight the coincidence that Mr. Henley shares his last name with a ubiquitous casual shirt and that his first name means ‘to wear,’ ” Duluth’s attorneys wrote. “Unfortunately for Duluth, Mr. Henley does not appreciate the humor.”
U.S. District Judge Dale Fischer denied the motion, saying on Jan. 21 that Duluth hadn’t established yet that its use of Henley’s name, and one of his band’s most famous songs, was “sufficiently transformative on its face” to allow dismissal at that stage.
A formal answer to Henley’s lawsuit, filed in early February, invoked free speech, fair use and other defenses.
The case appears headed for a trial that is yet to be scheduled, barring a negotiated settlement.