Case 2:14-cv-07827-DSF-AGR Document 21 Filed 12/04/14 Page 1 of 17 Page ID #:50

1 LEWIS BRISBOIS BISGAARD & SMITH LLP
DANIEL C. DECARLO, SB# 160307
E-Mail: Dan.DeCarlo@lewisbrisbois.com
2
THOMAS S. KIDDÉ, SB# 61717
E-Mail: Thomas.Kidde@lewisbrisbois.com
3
DANIEL R. LEWIS, SB# 260106
E-Mail: Daniel.Lewis@lewisbrisbois.com
4
221 North Figueroa Street, Suite 1200
5 Los Angeles, California 90012
Telephone: 213.250.1800
6 Facsimile: 213.250.7900
7 Attorneys for Defendant DULUTH
HOLDINGS INC., d/b/a DULUTH
8 TRADING COMPANY
9

UNITED STATES DISTRICT COURT

10

CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION

11 DON HENLEY,
Plaintiff,

12
13

vs.

14 DULUTH HOLDINGS, INC., d/b/a
DULUTH TRADING COMPANY, a
15 Wisconsin corporation,
Defendant.

16
17

CASE NO. LACV14-7827 DSF
(AGRx)
Hon. Dale S. Fischer – Courtroom 840 Roybal
DEFENDANT DULUTH
HOLDINGS, INC.’S NOTICE OF
MOTION AND MOTION TO
DISMISS THE FOURTH AND
FIFTH CAUSES OF ACTION
PURSUANT TO FRCP RULE
12(b)(6)
[Filed concurrently with Request for
Judicial Notice]

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Date: February 2, 2015
Time: 1:30 PM
Crtrm.: 840

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Trial Date:

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None Set

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BISGAARD
& SMITH LLP
ATTORNEYS AT LAW

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TO ALL PARTIES AND THEIR COUNSEL OF RECORD:
PLEASE TAKE NOTICE that on February 2, 2015, at 1:30 p.m. in
courtroom 840 of the above-entitled court located at 255 East Temple Street, Los
Angeles, California, Defendant Duluth Holdings, Inc. (“Duluth” or “Defendant”)
hereby moves this Court for an order dismissing Plaintiff Don Henley’s (“Henley”
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DEFENDANT DULUTH HOLDINGS, INC.’S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
AND FIFTH CAUSES OF ACTION

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1 or “Plaintiff”) Fourth and Fifth Causes of Action for alleged violations of his
2 statutory and common law rights of publicity. The basis of the motion to dismiss is
3 that the Fourth and Fifth Causes of Action fail to state viable claims for relief under
4 Federal Rules of Civil Procedure Rule 12(b)(6). This motion follows the Local Rule
5 7-3 meeting of counsel which took place on November 25, 2014.
6

The allegations in the Complaint and specifically the allegations related to the

7 Fourth and Fifth Causes of Action relate to the accused advertisement which is
8 attached as Exhibit “B” to the Complaint and which is replicated at page 5, lines 179 28 of the Complaint. As will be set forth in this motion, the facts alleged fail to
10 establish a viable cause of action because the alleged use of the Plaintiff’s name is a
11 permitted transformative use and thus is protected by the First Amendment of the
12 United States Constitution.
13

This Motion is supported by this Notice, the Memorandum of Points and

14 Authorities submitted herewith, the records and files in this case, the Request for
15 Judicial Notice filed contemporaneously herewith, and any other evidence or
16 argument offered at the time of the hearing.
17
18 DATED: December 4, 2014

LEWIS BRISBOIS BISGAARD & SMITH

LLP

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20
By:

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/s/ Daniel C. DeCarlo
Daniel C. DeCarlo
Attorneys for Defendant DULUTH
HOLDINGS INC., d/b/a DULUTH
TRADING COMPANY

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DEFENDANT DULUTH HOLDINGS, INC.’S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
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TABLE OF CONTENTS

1

Page

2

3 MEMORANDUM OF POINTS AND AUTHORITIES............................................. 1 
4 I. 

INTRODUCTION ............................................................................................. 1 

5 II. 

LEGAL ANALYSIS ......................................................................................... 2 

6

A. 

Applicable Standards For Motions To Dismiss Under Fed. R.
Civ. P. 12(b)(6). ...................................................................................... 2 

B. 

Motions To Dismiss Are Especially Appropriate in Cases
Addressing First Amendment Concerns. ................................................ 2 

C. 

The Fourth and Fifth Causes of Action for Alleged Violations of
Mr. Henley’s Rights of Publicity Are Not Viable Because the
Accused Advertisement is Protected by the First Amendment. ............. 6 

7
8
9
10
11 III. 

CONCLUSION ............................................................................................... 12 

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1

TABLE OF AUTHORITIES

2

CASES

3 Ashcroft v. Iqbal,
556 U.S. 662 (2009) ......................................................................................... 2
4
Bd. of Trustees of the State University of New York v. Fox,
492 U.S. 469 (1989) ......................................................................................... 8
5
6 Beliveau v. Caras,
873 F.Supp. 1393 (C.D. Cal. 1995) .................................................................. 2
7
Bell Atlantic Corp. v. Twombly,
550 U.S. 544 (2007) ......................................................................................... 2
8
9 Central Hudson Gas and Electric Corp. v. Pub. Serv. Comm’n of New York,
447 U.S. 557 (1980) ......................................................................................... 8
10
Cervantes v. City of San Diego,
5 F.3d 1273 (9th Cir. 1993) .............................................................................. 2
11
12 City of Cincinnati v. Discovery Network, Inc.,
507 U.S. 410 (1993) ......................................................................................... 8
13
Comedy III Productions, Inc. v. Gary Saderup, Inc.
25 Cal. 4th 387(2001) ....................................................................................... 7
14
15 Conley v. Gibson,
355 U.S. 41 (1957) ........................................................................................... 2
16
Eastwood v. Superior Court
149 Cal.App.3d 409 (1983) .............................................................................. 6
17
18 Edgar Winter v. D.C. Comics,
30 Cal.4th 881 (2003) ..................................................................................... 10
19
Hilton v. Hallmark Cards,
599 F. 3d. 894 (9th Cir. 2010) ........................................................................ 12
20
21 Kirby v. Sega of America, Inc.,
144 Cal. App. 4th 47 (Cal. App. 2d Dist. 2006) .......................................... 3, 8
22
Ricky Ross v. WilliamthLeonard Roberts,
222 Cal.App.4 677 (2013) .............................................................................. 3
23

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24 Virginia State Bd. of Pharmacy v. Virginia Citizens Consumer Council, Inc.,
425 U.S. 748 (1976) ......................................................................................... 8
25
STATUTORY AUTHORITIES
26
Cal. Civ. Code § 3344.................................................................................................. 6
27
Cal. Civ. Code § 3344(a) ............................................................................................. 6
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1 Cal. Civ. Code § 3344(e) ............................................................................................. 6
2

RULES AND REGULATIONS
3 Fed. R. Civ. P. Rule 12(b)(6) ....................................................................................... 2
4 Fed. R. Evid.§ 201 ....................................................................................................... 2
5 Local Rule7-3 .............................................................................................................. 2
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DEFENDANT DULUTH HOLDINGS, INC.’S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
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1

MEMORANDUM OF POINTS AND AUTHORITIES

2 I.

INTRODUCTION

3

Plaintiff contends that Duluth has violated his rights of publicity by creating

4 an advertisement with a clever pun aimed at poking fun of the fact that Don
5 Henley’s name is made up of a verb and a type of shirt. This is not a violation of
6 Mr. Henley’s rights of publicity, but rather is an expression of free speech which
7 uses portions of Mr. Henley’s name in a transformative nature invoking the
8 protection of the First Amendment of the United States Constitution.
9

First, it should be noted that while the Plaintiff’s name is “Don Henley”, his

10 middle initial is not “A” but is rather “H” for “Hugh”. (See Request for Judicial
11 Notice No. 1) As such, “DON A HENLEY” as used in the accused advertisement is
12 therefore not a literal depiction of Plaintiff’s name. Obviously, if the advertisement
13 used Mr. Henley’s literal name (DON H HENLEY or DON HUGH HENLEY) the
14 advertisement would not only have lost its humor, but it would have made no sense.
15

Second, the advertisement is obviously a joke (something we presume not

16 even Mr. Henley disputes) which is why “A” is used in lieu of Mr. Henley’s actual
17 middle initial. The use of “A”, coupled with the reference to the Eagles’ hit “Take It
18 Easy”, solidifies the paradoxical and humorous nature of the advertisement. In this
19 regard, encouraging recipients of the accused advertisement to “DON A HENLEY”
20 and further to “Take it easy” is akin to saying, “relax and wear an ultra comfortable
21 and casual henley shirt and it will only cost you $19.50!”
22

Putting aside the fact that plaintiff’s literal name is not being used, it is self

23 evident that the use that was made of Mr. Henley’s name was a joke intended to
24 highlight the coincidence that Mr. Henley shares his last name with a ubiquitous
25 casual shirt and that his first name means “to wear”. Unfortunately for Duluth, Mr.
26 Henley does not appreciate the humor and instead contends that the accused
27 advertisement violates both his common law and statutory rights of publicity.

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28 Fortunately for Duluth, the law protects its right to engage in this very type of
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1 speech notwithstanding the fact that a well known recording artist is the subject of
2 that humor.
3 II.

LEGAL ANALYSIS

4

A.

5
6

Applicable Standards For Motions To Dismiss Under Fed. R. Civ.
P. 12(b)(6).

A motion to dismiss tests the legal sufficiency of the claim stated in the

7 complaint. Fed. R. Civ. P. 12(b)(6); Conley v. Gibson, 355 U.S. 41, 45-56 (1957).
8 To survive a motion to dismiss under Fed. R. Civ. P. 12(b)(6) “a complaint must
9 contain sufficient factual matter, accepted as true, to ‘state a claim to relief that is
10 plausible on its face….’” Ashcroft v. Iqbal, 556 U.S. 662 (2009). Although a
11 complaint need not include detailed factual allegations, the Plaintiff must plead
12 more than “labels and conclusions” or “a formulaic recitation of the elements of a
13 cause of action.” Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007). The
14 Court need not accept as true conclusory allegations or legal characterizations. Nor
15 need it accept unreasonable inferences or unwarranted deductions of fact. Beliveau
16 v. Caras, 873 F.Supp. 1393, 1395-1396 (C.D. Cal. 1995). In addition to the facts
17 pled, a court may rely on facts which can be judicially noticed pursuant to Federal
18 Rules of Evidence § 201. Id. As such, dismissal under Fed. R. Civ. P. 12(b)(6) for
19 the failure to state a claim is proper where it is clear that no relief can be granted
20 under any set of facts that could be proven consistent with the allegations. Cervantes
21 v. City of San Diego, 5 F.3d 1273, 1274 (9th Cir. 1993).
22
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24

B.

Motions To Dismiss Are Especially Appropriate in Cases
Addressing First Amendment Concerns.

California courts have expressed a preference for having First Amendment

25 defenses resolved quickly. “Several points lead us to conclude that deciding the
26 effect of defendants’ First Amendment argument here is appropriate. First, such an
27 issue can often be resolved as a matter of law and is usually appropriate for

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28 summary judgment, or occasionally even demurrer.” Ricky Ross v. William Leonard
4849-1252-1760.1
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DEFENDANT DULUTH HOLDINGS, INC.’S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
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1 Roberts, (2013) 222 Cal.App.4th 677, 684. “In cases involving free speech, a speedy
2 resolution is desirable because protracted litigation may chill the exercise of First
3 Amendment rights.” Kirby v. Sega, (2006) 144 Cal.App.4th 47, 54.
4

Based on these standards, Defendant requests that the Court dismiss the

5 Fourth and Fifth Causes of Action because the accused advertisement and in
6 particular, the alleged wrongful use of a Plaintiff’s name in the accused
7 advertisement is, as a matter of law, protected by the First Amendment as the use is
8 transformative. The applicable facts as articulated in the Complaint and Defendant’s
9 Request for Judicial Notice are as follows:
1.

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11

and Don Henley is one of the band’s most well-known members.

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In addition to being a member of the Eagles, Mr. Henley has

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achieved fame as a solo performer and is a public advocate for

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artists’ rights. His name is instantly recognizable by a large

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portion of the United States’ population.” (Complaint ¶1)
2.

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located in Wisconsin that markets and sells apparel throughout

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the United States. Duluth is a sophisticated marketer that

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advertises its products on National and local television stations,

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by e-mail and through targeted Internet advertising.” (Complaint

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¶2)
3.

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“Duluth Trading Company never sought to obtain a license to

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use Mr. Henley’s name . . . and Mr. Henley did not grant the

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company a license.” (Complaint ¶4)
4.

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BRISBOIS

“Duluth Trading Company is a highly successful clothing retailer

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LEWIS

“The Eagles are one of the United States’ most successful bands,

“Mr. Henley is a professional musician and a founding member,

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drummer and singer of the Eagles, which is one of the most

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successful American musical groups. Every album that the

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Eagles has released since 1972 has been certified platinum, three
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albums have sold in excess of 10 million copies each, and the

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Eagles’ Their Greatest Hits 1971 – 1975 album is the best-

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selling album of all time in the United States with sales in excess

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of 29 million units. The band’s first hit single – “Take it Easy” –

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was the lead track on the Eagles’ self-titled debut album and on

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the band’s best-selling greatest hits album.” (Complaint ¶12)
5.

7

“As a member of the Eagles, Mr. Henley wrote or performed on

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a long list of hits, including “Take It Easy,” “Witchy Woman,”

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“Desperado,” and “Hotel California.” In the 1980’s, he launched

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a successful solo career independent of the Eagles, during which

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time he wrote and performed a number of hits . . . during this

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time, Mr. Henley performed concerts around the world . . .”

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(Complaint ¶13)
6.

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“Given the timeless nature of the many hits by the Eagles and

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Mr. Henley, their appeal continues to endure. In fact, they

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remain a part of today’s pop culture and their performances

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routinely draw large audiences of loyal fans. As a result of Mr.

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Henley’s undisputed success as both a member of the Eagles and

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as a solo artist, he enjoys instant name recognition.” (Complaint

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¶14)
7.

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Defendant’s alleged unlawful usage of plaintiff’s name is set

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forth in an advertisement which is duplicated below and which

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was e-mailed to defendant’s nationwide customer base.

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(Complaint ¶16; Exhibit B to the Complaint)

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The accused advertisement encourages the recipient of the

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advertisement to “DON A HENLEY and Take it easy”.

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(Complaint Exhibit “B”)

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9.

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The Plaintiff’s middle initial is “H” for Hugh, not “A”. (Request
for Judicial Notice item No. 1)

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10.

A “henley” is a casual top with a scoop neck and a short row of

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buttons in the center of the neckline. The shirts depicted in the

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accused advertisement are henley shirts. (See Request for

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Judicial Notice Nos. 2 and 3 and Complaint Ex. “B”)

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1

C.

The Fourth and Fifth Causes of Action for Alleged Violations of

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Mr. Henley’s Rights of Publicity Are Not Viable Because the

3

Accused Advertisement is Protected by the First Amendment.
A common law cause of action for appropriation of name or likeness may be

4

5 pleaded by alleging, “(1) the defendant's use of the plaintiff's identity; (2) the
6 appropriation of plaintiff's name or likeness to defendant's advantage, commercially
7 or otherwise; (3) the lack of consent; and (4) resulting injury." Eastwood v. Superior
8 Court (1983) 149 Cal.App.3d. 409, 417. The statutory right of publicity is
9 somewhat narrower as it requires a knowing use and it states in relevant part:
“Any person who knowingly uses another’s name, voice, signature,
photograph or likeness, in any manner or in products, merchandise, or goods,
or for purposes of advertising or selling, or soliciting purchases of, products,
merchandise, goods or services, without such person’s prior consent . . . shall
be liable for any damages sustained by the person or1 persons injured as a
result thereof.” California Civil Code section 3344.

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California Civil Code section 3344(a).

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In 2001, the California Supreme Court authored a landmark decision which
examined the tension between the rights of free expression protected by the First
Amendment of the United States Constitution with the property rights of celebrities
and others to protect and profit from their rights of publicity. Comedy III
Productions, Inc. v. Gary Saderup, Inc. (2001) 25 Cal.4th 387. These publicity
property rights, the Supreme Court noted, have the potential to frustrate one of the
purposes of the First Amendment. Id. at 397. “Because celebrities take on public

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Not all knowing commercial uses of another’s name, even if that use is not
protected by the First Amendment, are actionable under the statute. Specifically, the
statute also provides: “the use of a name…in a commercial medium shall not
constitute a use for which consent is required under subdivision (a) solely because
the material containing such use is commercially sponsored or contains paid
advertising. Rather it shall be a question of fact whether or not the use of the
person’s name, voice, signature, photograph, or likeness was so directly connected
with the commercial sponsorship or with the paid advertising as to constitute a use
for which consent is required under subdivision (a).” (California Civil Code section
3344(e))

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1 meaning, the appropriation of their likeness may have important uses in uninhibited
2 debates on public issues, particularly debates about culture and values. And because
3 celebrities take on personal meanings to many individuals in the society, the creative
4 appropriation of celebrity images can be an important avenue of individual
5 expression.” Id.
The accused advertisement pokes fun, (arguably at Mr. Henley’s expense) by

6

7 amusingly encouraging Duluth’s customer base to buy a henley shirt and relax.2
8 While Duluth, of course, (and we believe Duluth’s customers as well) appreciates
9 the humor employed by the accused advertisement, it is not necessary to evaluate
10 qualitatively the artistic or humorous value in the accused advertisement. In other
11 words, it doesn’t matter if the accused advertisement is funny or not as the First
12 Amendment protects even inartful efforts at free speech including, we would
13 suggest, unfunny attempts at humor. “Moreover, the United States Supreme Court
14 has made it clear that a work of art is protected by the First Amendment even if it
15 conveys no discernable message...” Id. at 399. The California Supreme Court
16 settled on the “transformative use” test to assess when the First Amendment
17 trumped an individual’s right of publicity.3
“This inquiry into whether a work is ‘transformative’ appears to us to be

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2

The accused advertisement was e-mailed to Duluth’s nationwide customer base.
(Complaint ¶16 lines 12 through 15). A review of Duluth’s catalogs and website
will quickly reveal that this type of humorous advertisement is a hallmark of
Duluth’s style.
3
During the meet and confer, Plaintiff’ counsel suggested that the first amendment
may not be a valid defense in rights of publicity cases when the alleged violation is
contained in an advertisement. In fact, commercial speech is indeed entitled to first
amendment protection. “Even pure commercial speech is entitled to significant First
Amendment protection.” Kirby v. Sega of America, Inc., 144 Cal. App. 4th 47 (Cal.
App. 2d Dist. 2006) citing City of Cincinnati v. Discovery Network, Inc., 507 U.S.
410, 423 (1993); Bd. of Trustees of the State University of New York v. Fox, 492
U.S. 469, 473-74 (1989); Central Hudson Gas and Electric Corp. v. Pub. Serv.
Comm'n of New York, 447 U.S. 557 (1980); Virginia State Bd. of Pharmacy v.
Virginia Citizens Consumer Council, Inc., 425 U.S. 748 (1976).

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1 necessarily at the heart of any judicial attempt to square the right of publicity with
2 the First Amendment.” Id. at 404. The California Supreme Court then went on to
3 explain that there must be something more than a literal use of an individual’s right
4 of publicity to qualify as a transformative use protected by the First Amendment.
5 “When artistic expression takes the form of a literal depiction or imitation of a
6 celebrity for commercial gain, directly trespassing on the right of publicity without
7 adding significant expression beyond that trespass, the state law interest in
8 protecting the fruits of artistic labor outweighs the expressive interests of the
9 imitative artist.” Id., at 405. In summing up this concept, the California Supreme
10 Court stated:
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“On the other hand, when a work contains significant transformative
elements, it is not only especially worthy of First Amendment protection, but
it is also less likely to interfere with the economic interests protected by the
right of publicity. As has been observed, works of parody or other distortions
of the celebrity figure are not, from the celebrity fan’s viewpoint, good
substitutes for conventional depictions of the celebrity and therefore do not
generally threaten markets for celebrity memorabilia that the right of publicity
is designed to protect. Accordingly, First Amendment protection of such
works outweighs whatever interest the State may have in enforcing the right
of publicity.” (internal citations omitted) Id.
The California Supreme Court also cautioned against an overly rigid
formulaic approach noting that “the transformative elements or creative
contributions that require First Amendment protection are not confined to parody
and can take many forms, from factual reporting to fictionalized portrayal to subtle
social criticism.” (internal citations omitted) Id. at 406. The court then summed up
the transformative use analysis as follows:
“In sum, when an artist is faced with a right of publicity challenge to his or
her work, he or she may raise as affirmative defense that the work is protected
by the First Amendment inasmuch as it contains significant transformative
elements or that the value of the work does not derive primarily from the
celebrity’s fame.” Id. at 407.
In his treatise on the rights of privacy and publicity, Professor J. Thomas
McCarthy identified five factors that Comedy III articulated relative to the
transformative use test. Professor McCarthy identified these factors as the
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1 following:
1.

2

If the celebrity likeness is one of the raw materials from which an

3 original work is synthesized, it is more likely to be transformative than if the
4 depiction or imitation of the celebrity is the very sum and substance of the work in
5 question;
2.

6

Second, the work is protected if it is primarily the defendant’s own

7 expression – as long as that expression is something other than the likeness of the
8 celebrity. Professor McCarthy notes that this factor required an examination of
9 whether a likely purchaser’s primary motivation is to buy a reproduction of the
10 celebrity, or to buy the expressive work of that artist;
3.

11

Avoid making judgments concerning the quality of the artistic

12 contribution. The court should conduct an inquiry more quantitative than qualitative
13 and ask whether the literal and imitative or the creative elements predominate in the
14 work;
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4.

In close cases a “subsidiary inquiry” should be employed, namely,

16 whether the marketability and economic value of the challenged work derive
17 primarily from the fame of the celebrity depicted;
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5.

Finally, the California Supreme Court indicated that “when an artist’s

19 skill and talent is manifestly subordinated to the overall goal of creating a
20 conventional portrait of a celebrity so as to commercially exploit his or her fame”
21 the work is not transformative.
22

(J. Thomas McCarthy, The Rights of Publicity and Privacy, Section 8:72, 2nd

23 Edition 2012).
24

While obviously not all the factors outlined above apply to this case

25 (principally because the challenged work here uses a name as opposed to an image)
26 applying the overall test and the factors that do apply, we would suggest, illustrates
27 that the challenged work here -the accused advertisement- is transformative. Of

LEWIS

BRISBOIS

BISGAARD
& SMITH LLP
ATTORNEYS AT LAW

28 significance, the artistic elements outweigh the literal elements. The accused
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DEFENDANT DULUTH HOLDINGS, INC.’S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
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Case 2:14-cv-07827-DSF-AGR Document 21 Filed 12/04/14 Page 15 of 17 Page ID #:64

1 advertisement can not fairly be viewed as an endorsement as the accused
2 advertisement’s value comes not from the use of Mr. Henley’ name qua his name
3 (e.g. the use of “A” in lieu of his actual initial “H” is definitive on that point) but
4 rather from the humor that is built around his name.
5

Consistent with the above, in a subsequent case the California Supreme Court

6 expanded further on the transformative use test by explaining that, “…if the
7 marketability and economic value of the challenged work do not derive primarily
8 from the celebrity’s fame, ‘there would generally be no actionable right of publicity.
9 When the value of the work comes principally from some source other than the
10 fame of the celebrity – from the creativity, skill and reputation of the artist- it
11 may be presumed that sufficient transformative elements are present to
12 warrant First Amendment protection.’” Edgar Winter v. D.C. Comics (2003) 30
13 Cal.4th 881, 889 quoting from Comedy III at 407. (Emphasis added). Can it really
14 be reasonably argued that the value in the accused advertisement derives from Mr.
15 Henley’s fame (whatever that may be) as opposed to the creativity and skill of the
16 author of the accused advertisement?
17

The accused advertisement does not leverage Mr. Henley’s celebrity or

18 endorsement to sell merchandise. To the contrary, what is exploited is the humor in
19 the incongruity inherent in the fact that Mr. Henley shares his last name with a
20 ubiquitous casual shirt that is so ordinary it sells for $19.50. Indeed, a henley shirt
21 is as unremarkable as Mr. Henley is remarkable. (Complaint ¶12, 13, 14). After all,
22 Mr. Henley is a well-known American musician who has been a part of some of the
23 best selling music of all time in the United States. (Complaint ¶12, 13, 14.) Not
24 many Americans can say the same about themselves. But just about everyone
25 probably has a henley shirt somewhere in their home right now.
26

Further, that Mr. Henley’s first name means “to wear” and that Duluth created

27 an advertisement that incorporates that amusing fact in a way that plays off of Mr.

LEWIS

BRISBOIS

BISGAARD
& SMITH LLP
ATTORNEYS AT LAW

28 Henley’s name is exactly the type of creative element that supports the
4849-1252-1760.1
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DEFENDANT DULUTH HOLDINGS, INC.’S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
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1 transformative use test.4 Duluth sells clothing, including henley shirts. Duluth then
2 identified that this clever juxtaposition could be made in a humorous manner to
3 impart upon the viewer of the advertisement, not that Mr. Henley was somehow
4 endorsing a $19.50 shirt, but rather that Duluth is a funny company and is selling a
5 $19.50 shirt. There is no literal depiction of Mr. Henley either via image or even
6 name as Duluth specifically does not use his actual middle initial “H” because to do
7 so would completely undermine the humor and indeed the very point of the accused
8 advertisement. Duluth combined the synonymous and mixed nature of Mr.
9 Henley’s name into an amusing advertisement that constitutes a protected
10 transformative use.
In the final analysis, it must be kept at the forefront that the right of publicity

11

12 is not absolute and that it “is essentially an economic right. What the right of
13 publicity holder possesses is not a right of censorship, but a right to prevent others
14 from misappropriating the economic value generated by the celebrity’s fame
15 through the merchandising of the name, voice, signature, photograph or likeness of
16 the celebrity.” Winter, supra at 890. Duluth is not merchandising Mr. Henley’s
17 name -quite the contrary- it is making a joke and Duluth’s right to make a joke at
18 Mr. Henley’s expense (whether that joke is funny or not) must be protected under
19 the First Amendment. While it is ultimately a question of fact whether the accused
20 advertisement trespasses on Mr. Henley’s rights of publicity5, we suggest that all of
21 the facts necessary for the court to conclude the issue in Duluth’s favor are before
22 the court now. We submit that there is no means to interpret the accused
23 advertisement as interfering with the type of economic interest protected by right of
24
4

LEWIS

BRISBOIS

BISGAARD
& SMITH LLP
ATTORNEYS AT LAW

Would Neal Diamond have a basis to complain if a jewelry company invoked his
25 name in a humorous advertisement that encouraged diamond shoppers to remember
to kneel when proposing? Would Donna Summer have cause to complain if a
26 clothier invoked her name in an advertisement somehow pitching summer dresses
(don a summer dress this year)?
27 5
Hilton v. Hallmark Cards, 599 F. 3d. 894, 910 (9th Cir. 2010).
28
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DEFENDANT DULUTH HOLDINGS, INC.’S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
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Case 2:14-cv-07827-DSF-AGR Document 21 Filed 12/04/14 Page 17 of 17 Page ID #:66

1 publicity, whether under the common law or the statutory right. The accused
2 advertisement is not an endorsement by Don H. Henley, but rather it is an
3 advertisement that is infused with Duluth’s own humorous and artistic expression of
4 the incongruent notion that a well known American musician shares his last name
5 with a casual shirt.
6 III.

CONCLUSION

7

For the above referenced reasons, Duluth respectfully requests that the court

8 dismiss without leave to amend, Plaintiff’s fourth and fifth causes of action.
9
10 DATED: December 4, 2014

LEWIS BRISBOIS BISGAARD & SMITH

LLP

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By:

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/s/ Daniel C. DeCarlo
Daniel C. DeCarlo
Attorneys for Defendant DULUTH
HOLDINGS INC., d/b/a DULUTH
TRADING COMPANY

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LEWIS

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ATTORNEYS AT LAW

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DEFENDANT DULUTH HOLDINGS, INC.’S NOTICE OF MOTION AND MOTION TO DISMISS THE FOURTH
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