IP & Copyright

The Duke’s Trademark Suit Against Duke University is Dismissed

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A California federal court dismissed a trademark lawsuit last week that John Wayne Enterprises brought against Duke University. The case was dismissed based on lack of jurisdiction and improper venue.

Actor John Wayne, born Marion Robert Morrison, had several nicknames that contained the word “Duke,” such as Duke Morrison, Duke Wayne, and The Duke. John Wayne Enterprises was created to “preserve and protect the name, image, and likeness of John Wayne by associating the John Wayne brand with quality and timeless products and experiences that embody the spirit of John Wayne and give back to the community.” In July 2013, the organization filed a trademark application with the Patent and Trademark Office to use the trademarks “Duke” and “Duke John Wayne” on all alcoholic beverages except beer. Last July, the organization sued Duke University for infringing its Duke trademark on alcoholic bottles.

John Wayne Enterprises argued that Duke University does not own the word “Duke” for use for all purposes’ however, the university argued that John Wayne Enterprises’ use of “Duke” on alcohol beverages caused consumer confusion, which trademark law is designed to prevent. According to the Los Angeles Times, John Wayne Enterprises’ “Duke” trademark is “a label on a bottle of bourbon stamped with a silhouette of the movie star in a cowboy hat, clutching a gun. The name ‘DUKE’ is stamped over his thighs, and John Wayne’s signature is reproduced near his feet.”  The John Wayne Enterprises logo can be seen here.

John Wayne Enterprises tried to gain personal jurisdiction over Duke University in a California federal court because “the school actively recruits students there, raises money there, maintains alumni associations there and sells university-related products there.” However, U.S. District Judge David Carter dismissed the Wayne estate’s lawsuit for lack of jurisdiction and said the case belonged in front of the Patent and Trademark Office Trademark Appeal Board in Alexandria, Virginia.

The court believed that “Duke was aware of John Wayne Enterprises’s presence in the state, but that there was no showing how Duke [University] purposefully directed its conduct at California by filing an opposition to trademarks in Virginia [the location of the Patent and Trademark Office.]”

John Wayne Enterprises and Duke University have battled over the use of the “Duke” trademark before. A July article in the Hollywood Reporter cites conflicts over using the name “Duke” in restaurant services, gaming machines, and celebrity licensing services. Thus, Judge Carter’s dismissal is likely not the end of this case. John Wayne Enterprises can always bring a suit against Duke University on the East Coast.

It’s rare to see John Wayne on the losing-end of a battle, but I am sure that John Wayne Enterprises is already preparing its next move to prevail in the end.

Joseph Perry
Joseph Perry is a graduate of St. John’s University School of Law whose goal is to become a publishing and media law attorney. He has interned at William Morris Endeavor, Rodale, Inc., Columbia University Press, and is currently interning at Hachette Book Group and volunteering at the Media Law Resource Center, which has given him insight into the legal aspects of the publishing and media industries. Contact Joe at staff@LawStreetMedia.com.



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