The dead can keep earning. Bruce Lee died in 1973, but his family still owns the rights to his imagery and persona. So its a little shocking to see some large retailers like Target and Urban Outfitters decide to distribute T-Shirts for sale with some of his most iconic images emblazoned on the front, without his Estate’s permission. But that’s what happened and Lee’s family, through its company Bruce Lee Enterprises, LLC, sued them both for trademark infringement and unfair competition. The defendants moved to dismiss and today Federal Court Judge Laura Taylor Swain published a decision denying the motion.
The rights of the dead to keep earning are clear, Judge Swain said. Actually, I’m paraphrasing. What she actually said was:
Courts that have considered the issue have found that use of a deceased celebrity’s persona can support a false endorsement claim under [federal trademark law].
“False endorsement” means that by using the image without permission the companies send a false impression that the products are officially licensed and endorsed by the estate of the artist. While there are certain claims that go away with a person’s death, Intellectual Property rights in a dead person’s image can be protected and the plaintiff’s showed the court that their company expends countless resources in the establishment and implementation of programs to develop, register, and protect the L[ee] Intellectual Property.
One wonders what they were thinking: Maybe no one would notice? Bruce Lee’s images are iconic – I mean the man died in 1973 and people are still fighting over the right to use his picture to earn revenue. Lee’s estate sent a cease and desist letter before filing the lawsuit. How could Target and Urban Outfitters think they could get away with this? They and their lawyers certainly didn’t help themselves when they made a questionable move: Originally the lawsuit was brought in Indiana where the estate has its principal location. They then filed a motion saying that the case belonged in NY not Indiana. The court in Indiana agreed and shipped it off to NY. In making this motion to dismiss, several of the defendants also argued that they were not properly served and that it should be dismissed on personal jurisdiction issues. As Judge Swain pointed out, however, by making a motion to transfer the case from Indiana to NY, the defendants accepted the jurisdiction of the court and therefore cannot then move to dismiss for personal jurisdiction amounts. This is also not a novel area of law and has been very clear for quite some time now. So its a little remarkable that the lawyers on this case would make these miscues. I mean how could the company’s in house counsel especially cleared the use of the images? Then if they wanted to object to the way they were served, why file the motion to change location first? Why not file the improper service motion first? If you aren’t going to do it that way why charge the client to make the motion once you consented to the case’s transfer to NY? I don’t know any of the attorneys representing Target and UO but it seems like the ball may have been dropped here strategically speaking. That’s why I love litigation its the closest I’ll get to playing a professional sport.