NEW HAWK, NEW HAWK

FindLaw reports that a Los Angeles court has found that a show featuring a Frank Sinatra impersonator infringed the Sinatra family’s trade mark rights in the FRANK SINATRA mark. The show, which ran in Atlantic City in 2001 and Las Vegas in 2002 was called “Sinatra: The Main Event”. Although the producers had employed a disclaimer stating that the show was unauthorised, the court found that confusion was still likely to result since the lettering used was very small. Additionally, Sinatra had used "Sinatra: The Main Event" as the title of a television program and of audio and video recordings during his lifetime. Consequently, the public would have mistakenly thought that the show was authorised by the trade mark owners, the Sinatra family.

The IPKat notes that, had this case taken place in Europe, it would probably have been an identical goods/identical marks situation although there’s still room for doubt. Arguably, as it is analogous to an “imitation X” situation, where the question arises whether there is use of an identical mark when the later user says that his goods are an imitation of the trade marked goods. Here though it seems that the public did not notice the word “unauthorised” so would have just seen the two marks as identical under the ECJ’s LTJ Diffusion case. The defendant could have argued that his use was descriptive of the contents of his show. While descriptive use is a defence under Article 6(1)(b) of Directive 89/104, such use must be in accordance with honest industrial or commercial practices. The Sinatra family may have retorted that confusing use is not honest but this is not clearly correct following last week’s Gerolsteiner decision.

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