"Put up your Dukes!" A spot of sparring in the States

Here's another guest post from Katfriend Shalini Bengani on another of those actions which, in this Kat's opinion, should never see the light of day in court since, in practical and commercial terms, they seem to make no sense at all.  It sees two Dukes in action, one being a famous actor, the other being an equally famous university named after the family that generously funded its early growth. This Kat has lived with the knowledge of them both for some four decades and has never for one moment had any doubt that they were unconnected, notwithstanding their shared use of the common-or-garden term "Duke".  Anyway, Shalini takes up the tale here:

Debate and dissent over the existence and ambit of personality rights is not new, but a recent case that has brought it to the fore was one that pitted John Wayne Enterprises LLC (JWE) against Duke University in the United States District Court of California on 3 July 2014 (Case No.SACV14-01020 DOC(ANx). The parties have been duelling over the use of the nickname ‘Duke’ since 2005 (more can be read about it on Forbes, here). 

In short, JWE applied to register the word mark “Duke” (Serial No. 85860463) and the figurative mark “Duke John Wayne” (Serial No. 85864358) on 26 February 2013 and 1 March 2013 respectively. The figurative mark consisted of

“a silhouette of a cowboy, in the likeness of the late internationally known movie star John Wayne, who is wearing a cowboy hat, kerchief, vest, gun belt and boots, and holding a rifle in his left hand. The signature of "JOHN WAYNE" is below the silhouette and the word "DUKE" in block letters is superimposed over the silhouette with a spur shaped design connecting to the letter "E". 

Both these marks have been filed for 

“alcoholic beverages except beers, all in connection with indicia denoting the late internationally known movie star John Wayne, who is also known as Duke”. 

JWE's mission is to preserve and protect the name, image, and likeness of John Wayne by associating the John Wayne brand with the quality and timeless products and experiences that embody his spirit.  To further its mission, JWE entered into selective licensing or partnership agreements in advertising and merchandising; cancer research, treatment and education; and public facilities, institutions, and agencies. 

This application was opposed by Duke University on the grounds of deceptiveness, false suggestion of a connection, priority, likelihood of confusion and dilution.  Duke University maintained that products bearing John Wayne’s world renowned image and signature, such as this bottle of bourbon, would be confused and be associated with Duke University. The bottle of bourbon is imprinted with “monument valley distillers”. John Wayne's image and signature are prominently featured on the label along with the words “Kentucky Straight Bourbon Whiskey Small Batch” and the image of a shotgun shell casing. JWE, considering Duke University’s claims to be ludicrous, filed a complaint for declaratory relief regarding no likelihood of confusion and non-dilution. 

 JWE's complaint states that, from an earlier point in his life and career, John Wayne was known to family, friends and fans alike as Duke Morisson, Duke Wayne, Duke and The Duke. The story goes that Wayne had a dog named Duke and when he moved to Glendale in California, the local fire fighters also started calling him Duke. He preferred Duke to his original forename of Marion -- the name stuck for the rest of his life. Further, JWE averred that the actual and potential customer base and marketing channels of Duke University are different from that of JWE. Further, while Duke University sometimes uses marks that consist of the word ‘Duke’ in connection with the sale of its university related products and services, it does not own the word Duke in all contexts for all purposes. Duke is a common word that has been in use for centuries for a wide array of commercial and other applications wholly independent of Duke University. 

Analysis of the law 

Taking an expansive view of the right of publicity in the USA and, from a reading of McCarthy on Trademarks and Competition, it is clear that under US law, in the case of the combination of a personal name and other indicia (such as a nick name combined with other words or images, as seen in the figurative mark “DUKE JOHN WAYNE"), the issue is whether the totality is “inherently distinctive”. Since the other indicia are in the “inherently distinctive” category, the composite mark should be analyzed as a totality, so as not to violate the “anti-dissection” rule. In the final analysis, what needs to be determined is whether the commercial impression of the composite mark as a whole is inherently distinctive category or not. 

 In striking departure to this, in the UK, one needs to bear in mind what Laddie J said in the ELVISLY YOURS case (here), that fame leads away from distinctiveness in the trade mark sense and that 

“when people buy a toy of a well known character because it depicts that character, I have no reason to believe that they care one way or the other who made, sold or licensed it. When a fan buys a poster or a cup bearing an image of his star, he is buying a likeness, not a product from a particular source.” 

Thus when people buy bourbon with the figurative mark on the label they do so because it bears the likeness of John Wayne and would have no way to know, by perusing that mark, whether the source of the product or the business which is maintaining its quality is indeed ‘Duke Spirits’. Accordingly the “Duke” and “Duke John Wayne” marks would not function as trade marks, i.e, as designators of origin. They would not of themselves  be distinctive, but would operate in the minds of the public to designate John Wayne himself rather than to designate goods bearing the name as a trade mark. The same would apply in respect of the provenance of  any other line of JWE  products, such as spice rubs. 

In the UK, from a trade mark law point of view, any use which is not an indicator of origin is not trade mark use as the essential function of trademark is to point to the consumers re the provenance of the goods. 

This Duke's not suing*

Along with the distinctiveness issue, it is now up to the USPTO (since Judge David O. Carter of the U.S. District Court dismissed the suit, stating that his court lacked jurisdiction) to ascertain the confusion issue and determine whether consumers would be confused by the ‘Duke’ marked bourbon into thinking it had any commercial connection or association with Duke University or if it would indeed dilute their mark. In my opinion, the answer should be in the negative but the ball is in the USPTO’s court.

"Put up your dukes" here
Duke Ellington here (this Duke also has a connection to Bourbon, here) 
Dukes of Hazzard here
Duke of Edinburgh here and here

* Duke, by Sharon Hardy (Sweet Potato Pet Photos)