In Moran, personal representative of the estate of Frankie Edith Kerouac Parker v Edie Parker LLC (Case No 20-cv-12717 (ED Mich), 27 September 2021), the US District Court for the Eastern District of Michigan addressed the question of whether a plaintiff’s post-mortem common law right of publicity claim stated under Michigan state law seeking to enjoin defendants from using their federally registered trademarks is preempted by the Lanham Act. Granting the defendant’s 12(b)(6) motion to dismiss, the court held that the common law right of publicity cannot be used to deprive defendants of their federally-secured trademark rights, because the plaintiff’s right of publicity claim is impliedly pre-empted by the Lanham Act.
Frankie Edith Kerouac Parker (‘Edie Parker’) was the first wife of acclaimed writer Jack Kerouac and “a celebrity in her own right” during the Beat Generation of the 1950s and 1960s.
The plaintiff, Timothy Moran, as personal representative of the estate of Edie Parker, filed suit against defendants Edie Parker LLC, Edie Parker Accessories LLC and Brett Heyman (collectively, ‘Heyman’) for the alleged unauthorised use of the name Edie Parker.
According to Moran’s complaint, Heyman greatly admires Edie Parker, named her child after the star, and started a line of businesses to produce fashionable items “that would have seamlessly blended into the Beat Generation.”
Seeking to enjoin Heyman from doing business using the name Edie Parker as well as damages, restitution and “disgorgement of all profits” earned through the use of Edie Parker’s name or persona, Moran, through one count of infringement of the right of publicity, alleged that in the minds of consumers, Heyman’s chic products absorb and reflect Edie Parker’s style, allude to her celebrity, and on the back of Edie Parker’s fame, have turned a profit amounting to tens of millions of dollars without regard to the rights of Edie Parker’s heirs.
Heyman responded by seeking dismissal of the action, arguing that the complaint failed to state a claim upon which relief can be granted. Specifically, Heyman asserted that Moran’s common law right of publicity claim is pre-empted by the Lanham Act because Heyman secured its exclusive right to use the designation ‘Edie Parker’ by obtaining eight federal registrations for ‘Edie Parker’ formative trademarks. In addition, Heyman’s motion argued in the alternative that Moran’s claim should be time-barred.
After briefly discussing the legal standards for addressing motions to dismiss, the court stated that, to understand the context of Heyman’s argument, it is necessary to pause and consider the law under which Moran brings his claim, noting that the right of publicity “protects an individual’s pecuniary interest in the commercial exploitation of his or her identity”. The court added that, taking the facts alleged in the complaint as true, it would seem that Moran has “stated a claim under Michigan law (assuming, of course, that such a claim could survive post-mortem for 27 years).”
The court explained that, if Moran were given the opportunity to prove his allegations, perhaps Edie Parker’s estate could have collected a portion of Heyman’s business profits, or perhaps Moran could have prevented Heyman from doing any business at all, “but that is not the case here because Heyman registered the trademark EDIE PARKER… thus, federal law is necessarily implicated by [Moran’s] state-law claim”. The court went on to discuss the principles of preemption, stating that courts may find implied preemption if a state law is an obstacle to the accomplishment and execution of the full purposes and objectives of Congress and that, under the facts of the case, Moran’s right of publicity claim is impliedly preempted by the Lanham Act.
After taking judicial notice of Heyman’s trademark registrations, the court found that:
- Heyman had the exclusive right to use its registered marks in commerce in connection with the covered goods;
- Requiring Heyman to abandon its trademarks in the face of a common-law tort claim would utterly frustrate the goals of the Lanham Act;
- Applying state law would be an obstacle to the accomplishment and execution of the full purposes and objectives of Congress.
Therefore, the court granted the motion to dismiss, concluding that because Heyman secured its trademark rights in EDIE PARKER through eight federal registrations, the Michigan common law right of publicity could not be used to deprive Heyman of its federally secured rights.