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Wed July 9, 2014
An Actor, A University And A Famous Name Lead To A Lawsuit
What do you think of when you hear the name Duke? That question is at the heart of a legal dispute between Duke University and the estate of John Wayne.
Fans of the late film star will recall that he went by the nickname "Duke," which his biographers have pointed out he picked up in childhood from a dog. (He preferred it to his real first name, which was Marion).
"That was how he was known by the people who were closest to him," says James Olson, coauthor of John Wayne: American. "He would say, 'Anyone who calls me John doesn't know me.' "
Now the actor's estate wants to sell a "Duke" brand of bourbon featuring the actor's likeness and signature on the label. Duke University filed an objection with the U.S. Patent and Trademark Office, arguing that "to prevent tarnishment of its brand, [Duke University] does not permit use of confusingly similar marks associated with unapproved goods or services."
Duke University and the Wayne estate have been duking it out — sorry, battling — over the name for the better part of the decade, according to The Hollywood Reporter. The estate has now filed suit in federal court, contending that it's "ludicrous" to think that the university owns the name "in all contexts for all purposes."
"Apparently, Duke University believes that products bearing John Wayne's world-renowned image and signature ... will somehow be confused as being associated with Duke University," the estate's filing argues.
Trying to cast Duke University as the villain in this story is a common strategy. Holders of copyrights are often accused of "trademark bullying," using their clout to push around the little guy.
In 2011, for instance, Chick-fil-A moved to block a Vermont artist named Bo Muller-Moore for selling T-shirts that read, "Eat More Kale," which the company contended sounded too much like its trademarked slogan "Eat Mor Chikin." NPR characterized this at the time as a "David and Goliath" story.
But trademark holders have not just the right but a responsibility to enforce their intellectual property, says Reid Wilson, an adjunct professor of trademark law at Ohio State University. Companies, universities and other big entities have to control their marks or they risk losing them.
"It may seem like the estate is being unfairly blocked from its business plans, but I think what Duke [University] is doing is within the realm of the enforcement expectations of a famous mark," Wilson says.
The university's mark may not extend into the realm of alcohol production, since it isn't in that business. On the other hand, the Wayne estate doesn't have a trademark, either. That's what the whole fight is about.
This is a different scenario from cases where companies license the use of a celebrity's name — for instance, with Jack Daniel's new Sinatra Select whiskey.
The Wayne estate is attempting to use the Duke nickname as a means of entree into an entirely new enterprise. (Wayne didn't use the name "Duke" when he appeared in ads for Camel cigarettes back in the 1950s.)
And even lifelong use of a nickname doesn't guarantee you the legal right to slap it on a product, Wilson says.
"It's one of those areas where people have a misperception about what a nickname gives you," he says. "A nickname doesn't give you the ability to have a mark."
It's not like Duke University has a problem with every other "duke" that comes along.
"We have not had issues with Duke University," says Rick Scarola, attorney for the estate of bandleader and composer Duke Ellington.