Written by attorney Charles E. Colman

The thin line between "tributes" and trademark infringement

As Women's Wear Daily reported last month, design firm Tony Duquette, Inc. has sued J. Crew over the "J. Crew Duquette Factory Leopard Print" sweater:

The plaintiff's ubiquitous press release about the suit claims that "J. Crew knowingly and willfully used the Duquette trademark without permission or license in connection with a leopard print product because of Tony Duquette's unique association with leopard print in the company's designs and products."

Although this writer does not have the case Complaint in front of him, he presumes that the plaintiff's legal claims address not only the leopard-print pattern, but also J. Crew's use of the Duquette name. For reasons discussed in the past, a trademark claim based on the actual leopard print pattern could be an uphill battle: at the end of the day, will any significant portion of consumers really associate this particular leopard-print pattern with this particular design company, notwithstanding the now-deceased designer's claim that leopard print was his "signature theme"?

However, J. Crew might have a tougher time getting rid of the plaintiff's claim for naming the sweater after Duquette. It is at least conceivable that J. Crew's use of the name reflected an innocent (if not entirely philanthrophic) desire to pay tribute to a notable designer, particularly in light of his relatively recent passing. But as several federal cases illustrate, "tributes" can teeter precariously on the brink of trademark infringement, since consumers might mistakenly believe that the individuals (or, in the case of the deceased, their estates or successor companies) to whom "tribute" has been paid sponsored, approved, or endorsed the tribut-or's product. (Be aware that "right of publicity" claimsoften accompany trademark-related causes of action in "tribute" cases. For the sake of simplicity, we'll focus on trademark issues here.)

The outcome of tribute cases brought under the Lanham Act will hinge, at least doctrinally, on the many prongs of the so-called Polaroid likelihood of confusion test. But in practice, the single most influential factor in these cases may be the court's intuitive sense of whether a putative tribute was, in reality, a "marketing scheme based on the tremendous drawing power of [a celebrity's] name and its ability to attract consumer interest and attention." In Elvis Presley Enterprises v. Capece, the Fifth Circuit Court of Appeals found that a Houston restaurant called "The Velvet Elvis" was just that -- an unjustifiable effort to capitalize on the Elvis name. Interestingly, the Fifth Circuit, in an opinion by Judge King (seriously), ruled in favor of Elvis Presley Enterprises even though the owner of The Velvet Elvis restaurant 1) had a reasonable parody argument (less compelling in the trademark context than in copyright, the court seemed to think); and 2) had successfully registered his service mark with the Patent and Trademark Office, after EPE had discovered but not opposed his application.

In one tortuous tribute case, Cairns v. Franklin Mint, Princess Diana's trustees and executors sued a collectibles company for its sale of jewelry, plates, and dolls bearing Diana's name and likeness. The Ninth Circuit Court of Appeals had little trouble concluding that there could be no "likelihood of confusion" about Diana's endorsement of the products at issue where:

"Between 1981 and 1997, many products, including some that were largely indistinguishable from Franklin Mint products, bore the name and likeness of Princess Diana, who neither endorsed nor objected to any of these products. Consumers, therefore, had no reason to believe Franklin Mint's Diana-related products were endorsed by the Princess. This did not change when, following Princess Diana's death in 1997, the Fund endorsed approximately twenty products — but not Franklin Mint's — amidst a flood of un-endorsed Diana-related memorabilia."

(This passage helps to illustrate why trademark attorneys are always touting the importance of "policing the unauthorized use of one's mark.")

The Cairns court went on to explain that, in any event, the defendant's use of the Diana name was a "nominative fair use" under trademark law -- which, to be clear, is entirely different from fair use under copyright law -- because, under these circumstances, "the description of the defendant's product depends on [having the permission to use a] description of the plaintiff's product" (though only as detailed a description as is "reasonably necessary.") In short, one can't effectively sell Princess Diana collectibles (which the court deemed legit) without using the name "Princess Diana."

Sometimes, the outcome of a tribute case (just like other types of cases) will depend on what lawyers call the "procedural posture" of the lawsuit -- that is, how far along the case is, and the attendant legal standard applied by the court in order to reach a ruling. Thus, in the 2010 case of Astaire v. McKenzie, a federal judge quickly disposed of Fred Astaire's widow's request for "the extraordinary relief of a temporary restraining order," which would have prevented the defendants from putting on their already-planned "Fred and Adele Astaire Awards." (LOF wonders if the fact that the plaintiff's step-daughter was among the defendants had any bearing, even perhaps subconsciously, on the court's decision.) The district court shook off plaintiff's request for a TRO with its summary observation that Astaire's widow had failed to show "that consumers will be deceived into believing that the late Fred Astaire endorsed defendants' awards, which are described as 'in tribute' to Fred and [his sister] Adele Astaire." This outcome isn't surprising; it can be difficult to produce persuasive "likelihood of confusion" evidence in the blitzkrieg timeframe of a TRO, where a plaintiff is both working against the clock and facing an intimidating legal standard like that required to obtain "extraordinary relief."

In short, no matter how well-intentioned a proposed tribute may be, it may be risky to proceed without the blessing of all relevant parties. And one should be unusually cautious about naming a product or service after a deceased celebrity, especially if that celebrity has living relatives, an aggressive estate, or (maybe most of all) star-maker machinery that has continued to hum along profitably despite the celebrity's death. Of course, this writer has no idea how profitable Tony Duquette's post-mortem design operation is. But he does know that the J. Crew leopard-print dispute is not the first time the Duquette company has gone after a fashion label for its use of the designer's name. So if you're looking to pay tribute to a deceased designer, it's probably wise to choose someone else.

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