Edie Parker – the brand whose colorful and often customized acrylic box bags have garnered a very long list of famous fans and graced red carpets from the Oscars to the Met Gala – has prevailed in a legal battle that it has been fighting over its name. The case got its start last year when Timothy Moran, a personal representative of the estate of Frankie Edith Kerouac Parker, the writer and first wife of Jack Kerouac, filed suit against Edie Parker, arguing that the now-11-year-old brand’s name is not actually its name but that of the late Ms. Parker, and that the brand had been making use of – and benefitting from – the “Edie Parker” name without ever seeking or getting authorization from the late Ms. Parker’s estate.
According to the complaint that he filed in a Michigan state court in September 2020, Mr. Moran alleged that in or around 2012, New York-based Edie Parker LLC and its founder Brett Heyman (the “defendants”) “began selling high end handbags and accessories patterned after vintage styles favored by Ms. Parker.” Hardly an unknown figure, Moran argued that Ms. Parker, who was “known to fans and friends alike as 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.”
Given the fame that she enjoyed during her life, Moran argued that “Ms. Parker’s identity continues to carry significant good will and value even now, 27 years after her death.” Because the Edie Parker brand name “is identical to that of Ms. Parker’s, and because its [offerings] mimic Ms. Parker’s style, consumers associate the company with Ms. Parker herself,” the plaintiff alleged, contending that such an association has been bolstered further, including by the fact that Ms. Heyman “has given interviews in which she characterized the name of her company as a nod to Ms. Parker and other ‘stylish Edies’ from the mid-20th century.”
Against that background, by using the late Ms. Parker’s name without authorization from her estate, Moran claimed that the defendants “have and continue to infringe on the rights to Ms. Parker’s identity, including her privacy and publicity rights” under Michigan state law, which provides legal protection for “an individual’s pecuniary interest in the commercial exploitation of his or her identity.” (And the plaintiff was sure to note that “as with most states, this right survives an individual’s death and may be enforced posthumously by the individual’s estate or heirs.”)
In connection with a single claim of unauthorized use/infringement of publicity rights and/or invasion of privacy, Moran sought monetary damages, including a disgorgement of any profits and income that the defendants “derived from [their] unlawful infringement of [Parker’s] intellectual property rights,” while also arguing in favor of injunctive relief to permanently bar Edie Parker LLC and Heyman from “any further infringement of such rights belonging to Ms. Parker’s estate.”
The defendants pushed back against Mr. Moran’s suit, filing a motion to dismiss early this year on the basis that the common law right of publicity claim is preempted by the Lanham Act, a federal trademark statute, because Edie Parker LLC maintains eight federal trademarks for the “Edie Parker” name. And in a Memorandum Opinion & Order dated September 27, Judge Nancy Edmunds of the U.S. District Court for the Eastern District of Michigan agreed. (The case was removed to federal court in October 2020.)
In her opinion late last month, Judge Edmunds granted the defendants’ motion to dismiss, holding that the defendants “have registered the trademark EDIE PARKER as their own, [and] thus, federal law is necessarily implicated by [Moran’s] state-law claim.”
Reviewing the facts of the case, Judge Edmunds stated that as Moran “sees it, in the minds of consumers, the defendants’ chic products absorb and reflect Ms. Parker’s style and allude to her celebrity, [and] thus, on the back of Ms. Parker’s fame, [they] have turned a profit amounting to tens of millions of dollars without regard to the rights of Ms. Parker’s heirs.”
The court also set the stage by noting that while Michigan courts have not yet spoken to “whether the right of publicity survives the death of an individual, the Sixth Circuit Court of Appeals has predicted the state would continue to recognize the right post-mortem as it ‘is more properly analyzed as a property right and, therefore, is descendible.’” At the same time, the judge noted that “neither the Sixth Circuit nor any other court has considered how long such a post-mortem right of publicity survives under Michigan law.”
Ultimately, Judge Edmunds did not delve into that issue because the defendants maintain registrations for the EDIE PARKER trademark, making it so that Moran’s right-of-publicity claim is “impliedly preempted by the Lanham Act.” The court did note that “if [Moran] were given the opportunity to prove [his] allegations, perhaps Ms. Parker’s estate could have collected a portion of the defendants’ business profits, or perhaps could have prevented the defendants from doing any business at all.” But again, “that is not the case here,” according to the court, due to the federal trademark element.
“Requiring the defendants to abandon [their] trademarks in the face of a common-law tort claim would utterly frustrate the goals of the Lanham Act,” Judge Edmunds ultimately determined, and held that applying “the state law [would be] an obstacle to the accomplishment and execution of the full purposes and objectives of Congress.” And with that in mind, the court granted the defendants’ motion to dismiss and tossed out Moran’s complaint.
As for the Edie Parker brand, quite a bit more than the branding of its hot-selling handbags was at stake in the case. Heyman has since spawned something of a little universe out of the brand, developing her formerly limited collection of acrylic handbags into array of acrylic homewares, while also launching a sister brand – Flower by Edie Parker – which caters to fashion-forward pot-smokers by way of handmade acrylic, ceramic, and glass blown smoking products (think: glass pipes and acrylic rolling trays) and merch to go along with it.
A rep for the estate of Ms. Parker was not immediately available for comment.
The case is Moran, Personal Representative of the Estate of Frankie Edith Kerouac Parker v. Edie Parker, LLC, et al., 2:20-cv-12717 (E.D. Mich.).