Henley v. Dillard Dept. Stores

• Decision Date: 04 February 1999
• Docket Number: No. Civ.A. 3:97-CV-2276-P.,Civ.A. 3:97-CV-2276-P.
• Citation: 46 F.Supp.2d 587
• Parties: Donald Hugh HENLEY, Plaintiff, v. DILLARD DEPARTMENT STORES, Defendant.
• Court: U.S. District Court — Northern District of Texas

46 F.Supp.2d 587

Donald Hugh HENLEY, Plaintiff, v. DILLARD DEPARTMENT STORES, Defendant.

No. Civ.A. 3:97-CV-2276-P.

United States District Court, N.D. Texas, Dallas Division.

February 4, 1999.

Robert Everett Wolin, Stephen A. Kennedy, Frederick Linton Medlin of Wolin, Ridley and Miller, LLP, Dallas, TX, for plaintiff.

Robert M. Chiaviello, Dallas, TX, Anna Conyers Kuhn, Austin, TX, for defendant.

MEMORANDUM OPINION AND ORDER

SOLIS, District Judge.

Now before the Court is Plaintiff Donald Hugh Henley's Motion for Partial Summary Judgment, filed October 30, 1998. After full consideration of the motion, responses and applicable law, for the reasons discussed herein, the Court hereby GRANTS Plaintiff's Motion for Partial Summary Judgment.¹

FACTS

This case involves claims of misappropriation of name and likeness, unjust enrichment, trademark dilution under the Lanham Act, and unfair competition under the Lanham Act and the common law. Plaintiff's Motion for Partial Summary Judgment specifically addresses his misappropriation claim, otherwise referred to as a claim for invasion of the right of publicity.

Plaintiff Donald Hugh Henley ("Henley" or "Plaintiff"), is a popular and critically acclaimed rock and roll musician. Pl.'s Compl. at 2. He began his music career in the 1970s as the founder and member of the band The Eagles. In the 1980s and 1990s, Henley maintained a successful solo career by continuing to produce platinum albums and perform on tour in concerts around the world. Pl.'s Compl. at 2-3.

On September 3 and 4, 1997, Defendant Dillard Department Stores ("Dillard" or "Defendant") ran a newspaper advertisement for a shirt known as a "henley." Pl.'s App. at 4. The ad features a photograph of a man wearing a henley shirt with the words, "This is Don" in large print, beside the picture, and an arrow pointing toward the man's head from the words. Underneath the words is the statement, "This is Don's henley" in the same size print, with a second arrow pointing to the shirt. The advertisement also included the name of the retailer, "Dillard's", general information about the sale price of the shirts, the name of the shirt's manufacturer, the available sizes and the following: "Sometimes Don tucks it in; other times he wears it loose—it looks great either way. Don loves his henley; you will too." The ad ran in newspapers throughout Texas and in Mexico.

DISCUSSION

A. Summary Judgment Standard

Summary Judgment shall be rendered when the pleadings, depositions, answers to interrogatories and admissions on file, together with affidavits, if any, show that there is no genuine issue of material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(c); Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S.Ct. 2548, 91 L.Ed.2d 265 (1986). All evidence and the reasonable inferences to be drawn therefrom must be viewed in the light most favorable to the party opposing the motion. United States v. Diebold, Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 8 L.Ed.2d 176 (1962). The moving party bears the burden of informing the district court of the basis for its belief that there is an absence of a genuine issue for trial, and of identifying those portions of the record that demonstrate such an absence. Celotex, 477 U.S. at 323, 106 S.Ct. 2548.

Once the moving party has made an initial showing, the party opposing the motion must come forward with competent summary judgment evidence of the existence of a genuine fact issue. Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586, 106 S.Ct. 1348, 89 L.Ed.2d 538 (1986). The party defending against the motion for summary judgment cannot defeat the motion unless he provides specific facts that show the case presents a genuine issue of material fact, such that a reasonable jury might return a verdict in his favor. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). Mere assertions of a factual dispute unsupported by probative evidence will not prevent summary judgment. Id. at 248-50, 106 S.Ct. 2505; Abbott v. Equity Group, Inc., 2 F.3d 613, 619 (5th Cir.1993). In other words, conclusory statements, speculation and unsubstantiated assertions will not suffice to defeat a motion for summary judgment. Douglass v. United Servs. Auto. Ass'n, 79 F.3d 1415, 1429 (5th Cir.1996) (en banc). If the nonmoving party fails to make a showing sufficient to establish the existence of an element essential to is case, and on which he bears the burden of proof at trial, summary judgment must be granted. Celotex, 477 U.S. at 322-23, 106 S.Ct. 2548.

B. Right to Publicity

The right of publicity is often described as the "inherent right of every human being to control the commercial use of his or her identity." J. Thomas McCarthy, Melville B. Nimmer and the Right of Publicity: A Tribute, 34 U.C.L.A.L.Rev. 1703, 1704 (1987); Elvis Presley Enterps., Inc. v. Capece, 950 F.Supp. 783, 801 (S.D.Tex.1996). The right to publicity is considered an intellectual property right. McCarthy, supra, at 1712. It is a more expansive right than any common law or statutory trademark infringement right because it does not require a showing of likelihood of confusion. Elvis, 950 F.Supp. at 801; Rogers v. Grimaldi, 875 F.2d 994, 1003-04 (2d Cir.1989); see McCarthy, supra, at 1708-09.

The tort of misappropriation of one's name or likeness is generally referred to as the "Right of Publicity" and is based on section 652C of the Restatement of Torts which reads, "One who appropriates to his own use or benefit the name or likeness of another is subject to liability to the other for invasion of his privacy." Restatement (Second) of Torts § 652C (1977); Matthews v. Wozencraft, 15 F.3d 432, 437 (5th Cir.1994). The Fifth Circuit has specifically identified three elements a plaintiff must prove to recover for the tort of misappropriation of name and likeness in Texas: (1) the defendant appropriated the plaintiff's name or likeness for the value associated with it, and not in an incidental manner or for a newsworthy purpose; (2) the plaintiff can be identified from the publication; and (3) there was some advantage or benefit to the defendant. Matthews, 15 F.3d at 437.

The right of publicity is designed to protect the commercial interests of celebrities in their identities. Carson v. Here's Johnny Portable Toilets, Inc., 698 F.2d 831, 835 (6th Cir.1983). It is intended to protect the value of a celebrity's notoriety or skill. Matthews, 15 F.3d at 437. Because a celebrity's identity can be valuable in the promotion of products, "the celebrity has an interest that may be protected from the unauthorized commercial exploitation of that identity." Carson, 698 F.2d at 834. Such celebrities have an exclusive legal right to control and profit from the commercial use of their name, personality and identity. Id. "If the celebrity's identity is commercially exploited, there has been an invasion of his right whether or not his `name or likeness' is used." Id. (court suggests that comedian Johnny Carson's identity may be exploited when neither his name, John W. Carson, nor his picture is used.). The tort does not protect the use of the celebrity's name per se, but rather the value associated with that name. Matthews, 15 F.3d at 437.

Typically, the defendant in a Right to Publicity case has "`appropriated to his own use or benefit the reputation, prestige, social or commercial standing, public interest or other values of his name or likeness.'" Matthews, 15 F.3d at 437 (citing Restatement § 652C cmt. c). A person's right of publicity may be violated when a defendant employs an aspect of that person's persona in a manner that symbolizes or identifies the person, "such as the use of a name, nickname, voice, picture, performing style, distinctive characteristics or other indicia closely associated with a person." Elvis, 950 F.Supp. at 801. Such appropriation generally becomes actionable when it is used to "advertise the defendant's business or product." Matthews, 15 F.3d at 437 (citing Restatement § 652C, cmt. b); Elvis, 950 F.Supp. at 801. A violation can occur simply in the use of a phrase that clearly identifies the celebrity. Elvis, 950 F.Supp. at 801; see Carson, 698 F.2d at 836. It is not fatal to a plaintiff's claim that the defendant did not use the plaintiff's `name.' Carson, 698 F.2d at 837.

1. Did Defendant Appropriate the Plaintiff's Name or Likeness for the Value Associated with it, and not in an Incidental Manner or for a Newsworthy Purpose?

The threshold issue to determine in analyzing this element is whether Defendant actually appropriated Defendant's name or likeness. Plaintiff maintains that Dillard used Don Henley's name by using the expression "Don's henley." Pl.'s Mot. for Summ. J. at 10-13. In the alternative, Plaintiff argues that, at a minimum, Plaintiff's likeness and identity were appropriated by Dillard for its advertisement. Id. at 13-22. Defendant insists that whether it appropriated Plaintiff's name or likeness is an issue for a jury, not the Court, to determine. Def.'s Resp. to Pl.'s Mot. for Summ. J. at 2-5.

While use of the expression "Don's henley" is arguably the use of Plaintiff's name, a genuine issue of fact exists as to whether that expression is, indeed, Plaintiff's name. However, Courts have recognized that a defendant may be held liable for using a phrase or image that clearly identifies the celebrity, in addition to finding liability for using a plaintiff's precise name. White v. Samsung Elecs. Am., Inc., 971 F.2d 1395 (9th Cir.1992), cert. denied, 508 U.S. 951, 113 S.Ct. 2443, 124 L.Ed.2d 660 (1993) (ad depicting a robot, dressed in a wig, gown, and jewelry and posing next to game show Wheel of Fortune set, violated Plaintiff Vanna White's right of publicity); Carson, 698 F.2d 831 (use of the phrase "Here's Johnny" in the name of defendant's corporation, and the phrase "World's Foremost Commodian" in its slogan,...