Famed El Paso boot company Lucchese is duking it out against John Wayne Enterprises, whichsued the company over allegedcopyright and trademark infringement for its use of the late actor's name and image.
John Wayne EnterprisesLLCfiled the civil suit seeking what could amount to the El Paso company paying more than $1 million reparations.
The lawsuit claims that LuccheseInc. allegedly misappropriatedthe name and likeness of the late actor to sell its products.
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John Wayne Enterprises filed the lawsuit April 28 in the Superior Court of the State of California in Orange County.
Lucchesefiled a complaint for injunctiverelief on the same day. The company is asking thata federal judge issue a declaration that John Wayne Enterpriseshas no rightor grounds to claim that the company infringed on the John Wayne trademark or violated “the right of publicity of the estate of the late actor John Wayne,” court documents state.
The injunctiverelief complaint was filed in the Western District of Texas. Both the lawsuit and complaint are pending in court.
Lucchese director of marketing Mario Vega declined to comment on the lawsuit since it is pending. John Wayne Enterprises officials could not be reached for comment.
The lawsuit filed by John Wayne Enterprises, which was established to preserve and protect the actor's name, imageand likeness, claims that Lucchese has continually “utilized the name and image of John Wayne to market and sell Lucchese products” without permission.
John Wayne Enterprises officials claim that in 2011 Lucchese approached itabout a potential licensing relationship, including giving its representativesa tour of the Lucchese facility in 2014.
The licensing discussion wasabruptlyended in September 2016 after Lucchese officials said they were no longer interested in a partnership, the lawsuit states.
John Wayne Enterprises executivesthen learned in December that Lucchese placed an advertisem*nt in the January issue of “Cowboys & Indians” magazine. The ad used a photo of John Wayne with the caption, “John Wayne Stood Tall In Lucchese Boots,” the lawsuit states.
Lucchese did not ask or receive permission to use the photo or Wayne’s name in the ad, the lawsuit claims.
John Wayne Enterprises representativesthen went through Lucchese’s website, where they allegedly “discovered numerous uses of John Wayne's name and image, including so-called 'blog'entries discussing John Wayne's purported fondness for Lucchese products, and even a video of a Christmas card ostensibly sent by John Wayne to Lucchese's founder, Sam Lucchese, prominently featuring John Wayne's signature.”
Lucchese's representatives argued in their complaint for injunctive relief that Wayne and the boot company had“a long and rich history” spanning well over 50 years. The complaint includes photos of the actor trying on Lucchese boots at one of itsstores in San Antonio in 1951.
They also claim that “John Wayne never objected to the fact that Lucchese was proud of his relationship with the company.”
The complaint also claims that John Wayne Enterprises promoted the relationship between the actor and the boot company on social media.
A Facebook post by John Wayne Enterprises on Jan. 14, 2016, included a photo of Lucchese boots and states, “Did you know … John Wayne had his boots made by Lucchese Boot Company in San Antonio, Texas?”
The photo is credited to “A collection of John Wayne’s Lucchese Boots.”
However,John Wayne Enterprises argued in itslawsuit that “John Wayne did not commercially endorse Lucchese” during his lifetime.
Its lawsuit also states that Lucchese sold boots promoted with a "John Wayne Toe" style without permission.
After being contacted by the company, Lucchese allegedly changed the "John Wayne Toe" style to "Square Toe," court documents state.
Lucchese argued in itscomplaint that “John Wayne Toe” is a term used throughout the boot-making industry;therefore, any use never rose “to the level of endorsem*nt, sponsorship, or trademark use.”
It also argued that use of the actor’s name and image were only used to illustrate the “history and heritage of the Lucchese brand” and “were done with the knowledge, if not consent, of John Wayne during his lifetime and the knowledge, if not the consent, of JWE since then.”
John Wayne Enterprisesclaims that Lucchese has “effectively destroyed the possibility of any other use of John Wayne's name, image or likeness in the critical western-wear boot market, a market to which John Wayne is obviously uniquely well-suited.”
The lawsuit asksfor no less than $300,000 on each cause of misappropriation of name or likeness, common law misappropriation of name or likeness, and common law unfair competition.
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John Wayne Enterprises also is seeking payment for any revenue, profits and other money made by Lucchese. It also is asking the court to issue an order to stop Lucchese from future use of Wayne’s name and likeness, the lawsuit states.
Wayne, who passed away at the age of 72 on June 11, 1979, due to stomach cancer, starred in more than 170 motion pictures, including 1969’s "True Grit," for which he won the Academy Award for Best Actor.
Lucchese was founded in 1883 in San Antonio bySam LuccheseSr. and moved itsoperations to El Paso in 1986, according to the company’s website.
The company has made boots for several other high-profile celebrities, including Bing Crosby, Johnny Cash, Zsa Zsa Gabor, Arnold Schwarzenegger and former U.S. President Lyndon B.Johnson.
Aaron Martinez may be reached at546-6249;aamartinez@elpasotimes.com; @AMartinez31 on Twitter.
