July 10, 2014
“While we admire and respect John Wayne’s contributions to American culture, we are also committed to protecting the integrity of Duke University’s trademarks.”
Duke University spokesman
“Don’t pick a fight, but if you find yourself in one I suggest you make sure you win.”
John Wayne borrowed his nickname from his childhood dog. Now, his heirs are trying to borrow some labeling rights from Duke University. In a pre-emptive strike against the institution of higher learning, the actor’s heirs filed a lawsuit last Thursday in the United States District Court for the Central District of California. The action revolves around federal law, Kentucky bourbon and a nearly 10-year long battle over a single word.
Duke University can’t claim a dog in the history of its name. It can, however, point to a gift of $40 million in 1924 from tobacco and electricity mogul James B. Duke. At that time the former Trinity College, founded by the United Methodist Church in 1838, renamed itself in honor or its benefactor. Once its basketball program grew into prominence, merchandising became a monkey-maker for the University and it began to protect the use of the word “Duke.”
So what exactly is going on here? To begin, it’s important to note that Duke University has several registered trademarks on the word “Duke.” (Several media outlets asked Duke just how much money it makes on the sale of Duke branded merchandise, but the University, which is private and under no obligation to release that information, did not respond.) As such, Duke is very protective of attempts by others to trademark the word “Duke” for other purposes.
But Duke University is not the only entity that has such trademark protection. Duke is a common word. It dates back to the 12th Century and its use to describe a level of nobility dates to the 14th Century. Indeed, several other businesses have registered trademarks involving the word, including the heirs of Jazz great Duke Ellington and a marketer of a brand of mayonnaise.
John Wayne’s heirs have operated a company since his death that is known as “John Wayne Enterprises.” JWE markets a number of products associated with the name and likeness of Wayne. Nine years ago JWE began the process of trying to obtain trademark protection for products that used Wayne’s nickname, “The Duke.” Almost immediately, Duke University began to formally object every time that JWE filed a trademark application.
JWE is now set to launch a line of liquor products that bear the name “Duke.” One of them is called “Duke Kentucky Straight Bourbon” and bears the name of the distiller, the name of the product and a large picture of Wayne, in western garb and carrying a rifle. Because Duke University had objected to the trademark application, JWE fears a lawsuit and filed the action last week in California. What JWE is requesting is a “declaratory judgment” - an order from the court that rules on a limited legal issue before that issue is the basis of a separate complaint. Quite literally, it is a judgment that declares something.
As is always the case in trademark law, the question will be whether JWE’s use of “Duke” in conjunction with Wayne’s image in the marketing of alcohol will confuse people into thinking that Duke University is somehow involved in the marketing of bourbon. It will also examine whether JWE’s use of the word will “dilute” (you might even say “distill”) the University’s mark. If it does, then Duke U. can prevent JME from using the word. If not, then you can drink to the Duke, from the Duke.
In the meantime, you can get all the Duke you want on Netflix. They have him in True Grit, The Green Berets and even guest starring on Laugh-In. Of course, they also have him in the 1972 film, “The Cowboys.” You might want to avoid that one, lest Jerry Jones’ Dallas team got some thoughts about a trademark lawsuit of their own.
David Hejmanowski is a Magistrate and Court Administrator of the Delaware County Juvenile Court and a former Assistant Prosecuting Attorney.