Federal Judge Finds Lanham Act Preempts Right of Publicity Claims

For over a year, an intellectual property dispute over the brand Edie Parker has raged in connection with glamorous handbags and clutches. The case began in 2020 when plaintiff Timothy Moran filed suit against Edie Parker, LLC, which was founded by Brett Heyman and has been in business since at least 2012.

Edie Parker’s Estate Claims Right of Publicity Against EDIE PARKER Brand

Plaintiff Moran represents Edie Parker’s estate and alleges that Heyman and the Edie Parker brand have profited off the deceased Edie Parker and her celebrity, which reached its peak in the 1950s and 1960s.  Edie Parker was the first wife of Jack Kerouac, an American novelist and poet.  Both Parker and Kerouac became synonymous with the 1950s and 1960s and were considered influential pioneers of the Beat Generation, which was a literary movement started by a small group of authors that would go on to heavily influence American culture and politics.

The Edie Parker brand allegedly rose to fame by selling luxury handbags and other accessories that were patterned after styles specifically favored by Edie Parker.  In the complaint, Moran argues that Parker’s right of publicity and celebrity are the main source of the goodwill and value attached to the brand, despite Parker never authorizing the use of her name in connection with the brand.

Judge Finds Lanham Act Preempts Right of Publicity

The defendants filed motions to dismiss, arguing that they had properly maintained eight federal trademarks for the brand name and that Moran’s claims were preempted by the Lanham Act.  The U.S. District Court for the Eastern District of Michigan sided with defendants.   

Focusing on the defendant’s trademarks, federal judge Nancy Edmunds noted that the Lanham Act would be rendered meaningless in granting the plaintiff’s claim that defendants should have to abandon their rights in eight trademarks.  Judge Edmunds further stated that the objectives and purposes of Congress would be frustrated in a finding for the state law claims of right of publicity over the federal claims associated with the trademarks under the Lanham Act.  Lastly, Judge Edmunds also noted that the Sixth Court of Appeals has yet to decide how long the right of publicity survives an individual’s death post-mortem.

Key Takeaways on Lanham Act Preemption of Right of Publicity

A federal court presiding over a dispute between the Edie Parker brand and the Edie Parker estate decided that:

• Federal trademark claims preempt state law claims over right of publicity;

• Properly maintained trademark rights could not be easily abandoned in the face of common-law tort claims; and

• State law could not be held above the full purposes and objectives of Congress.

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