Federal Registration Trumps Right of Publicity Claim

October 7, 2021

By: Milton Springut and Rebecca Aschen

What’s in a name? Perhaps not always the right to commercially exploit one’s own identity – that is, if someone else holds a federal trademark registration in the name.

In a recent decision, Timothy Moran, personal representative of the Estate of Frankie Edith Kerouac Parker v. Edie Parker, LLC, the federal court in Michigan, in a first decision of its kind, held that a state right of publicity claim based on a name was subject to being preempted by a federal trademark registration held by another party for the same name.

The decision underscores the value of obtaining the federally secured rights afforded to trademark holders, further solidifying the importance of registration for companies wishing to exclusively use a mark in connection with their goods and services.

In the complaint the plaintiff claimed that Frankie Edith Kerouac Parker (1922 – 1993), the first wife of writer Jack Kerouac, was well-known to the public as “Edie Parker,” was a celebrity in her own right, and that her identity continues to carry significant goodwill and value even 27 years after her death. The Defendant, our client, Edie Parker, LLC (and its principal), is a well-known handbag and accessory designer. The complaint alleged, under Michigan’s common law right of publicity, that Defendants’ use of the name “Edie Parker” violated Plaintiff’s rights in that name.

Without undertaking any discovery, the Edie Parker Defendants moved to dismiss, arguing that Plaintiff’s common law right of publicity claim was preempted by the federal Lanham Act.

The court granted the motion and dismissed the complaint finding that “Defendants secured their trademark rights in EDIE PARKER through eight federal registrations. The Michigan common law right of publicity cannot be used to deprive Defendants of their federally secured rights.”

The court went on to say that “[r]equiring Defendants to abandon these trademarks in the face of a common-law tort claim would utterly frustrate the goals of the Lanham Act.”

The decision highlights the importance of and provides a further reason for companies to obtain federal registrations for marks used in connection with their goods and services.