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The road not taken

Men will be boys.  A long time ago, I handled a tradename infringement case, for the first (and last) time.  No biggie; a couple of bars, on the opposite side of town, which had similar names.  I didn't find anything about it especially interesting, and even if I had been at a point in my career where I could specialize in a particular field, that wouldn't have been it.

Which is too bad, because if I'd decided to pursue that, I might have wound up with a customer like Bikinis Sports Bar & Grill, trying to fend off Hooters in its claim to be "America's ONLY Breastaurant."

Yes, you read that right.  It seems that restaurants with a theme combining sports and scantily-clad waitresses are the fastest-growing type of eating establishment (they're in a separate category), now a billion-dollar industry which has proven virtually recession-proof.  Although Hooters was first at the party, plenty of others have shown up:  there's Twin Peaks (motto:  "Eats.  Drinks.  Scenic views."), Tilted Kilt, Bone Daddy's (and no, I didn't make that up), Mounds O'Fun (okay, I did make up that one), and several others. 

So here's today's legal lesson.  Back in 2005, Hooters tried to stifle the competition by filing a lawsuit claiming that its concept of cheeseburgers-cum-cleavage was entitled to trademark protection.  Did you know that there was even such a thing as "trade dress infringement"?  Neither did I.  One of the three elements a plaintiff must show to prevail is that the trade dress is primarily non-functional.  (Don't ask me why; that's just the way it is.)  The judge found that Hooters hadn't established this; in fact, Hooters admitted that the dress was functional, in that it was intended "to provide vicarious sexual recreation, to titillate, entice, and arouse male customers' fantasies."  Who woulda guessed?

At any rate, Bikinis' did get the trademark on "breastaurant," proving conclusively that for most men, the emotional aspect of the sexual maturation process stops at about age 16.

Seek and ye shall find.  That Biblical reference probably wasn't intended as a foreshadowing of the invention of Google, but the ubiquity of that and other search engines has led to a new expression of narcissism:  Googling yourself.  Of course, that has a downside.  If you've got a black-sounding name, for example, Googling it will be more likely to result in yielding ads suggesting that you've got a criminal record

For Beverly Stayart, the experience was even worse:  when she entered her name in Yahoo's search engine, she wound up with links to pharmaceutical companies and pornographic websites.  When she put in "Levitra Bev Stayart," for example, she got a link directing her to an online pharmacy.  She wrote Yahoo and asked them to remove such results, and got a letter back stating that they didn't monitor the results of searches. 

So she did what any red-blooded American would do:  she sued.  Specifically, she claimed that Yahoo violated Section 43(a) of the Lanham Act, which prohibits tradename infringement:  by virtue of linking her name with the drug and porn websites, Yahoo was implying that she endorsed them.  She lost that case, and a similar suit against Google met a similar fate.  In fact, the first lawsuit served to hoist Stayart on her own petard in the second.  Since she had sued Yahoo over the "levitra bev stayart" phrase, that made the phrase a matter of public interest, and a phrase that's a matter of public interest can't serve as the basis for a suit alleging misappropriation of a name.

And all this convinced me that I made the right choice long ago of foregoing a career in tradename infringement for representing drug dealers and child molesters.  Because if I had taken up tradename infringement, I wouldn't have clients like the guy who wants to trademark "breastaurant," thereby necessitating my spending countless hours at his establishment doing the necessary factual and legal research.  No, I would have wound up with some woman coming into my office with a shopping bag full of printouts of Internet searches, demanding that I file suit so that some guy in California won't think she's endorsing erectile dysfunction drugs.


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