Bit Parts

The U.S. District Court for the Western District of Texas will let a dispute over the alleged unauthorized use of John Wayne's persona to market boots be first heard by a California court. On April 28, 2017, JWE filed suit in California's Orange County Superior Court alleging multiple unauthorized uses of the late actor's persona to promote Lucchese's boot products, which Wayne often wore and publicly praised. Four hours after JWE filed its lawsuit, Lucchese filed a declaratory action in the Western District of Texas asking for what District Judge Philip R. Martinez described as “extremely broad pronouncements regarding [Lucchese's] current, past, and future rights to use John Wayne's name, image, and likeness.” Granting JWE's motion to dismiss the Texas action, District Judge Martinez decided: “Lucchese's generic requests for federal declaratory relief in the Federal Suit do not predominate over its own parallel state claims, which mirror JWE's claims in the State Suit. Further, JWE suggests and Lucchese does not contest that Lucchese can bring defenses under federal or state law in the State Suit …” Judge Martinez added, “Regardless of the specific law governing the dispute, both parties would likely produce substantially similar evidence, witnesses, and arguments in either lawsuit.” Lucchese Inc. v. John Wayne Enterprises LLC (JWE), 17-CV-135 (W.D.Tex.).

Distinguishing Between Burden of Proof for California Statutory and Common Law “Likeness” Violation Claims