Horse Race Announcer Sues Over Bill Murray Film That Included His Trademarked Tagline

from the quite-a-stretch dept

People’s confusion as to what trademark law protects and doesn’t protect is a source of neverending frustration for those of us who simply cannot stand the growth of ownership culture. There is this pervasive and growing sense by those who aren’t particularly well informed that trademark law simply allows one to own a word or phrase to the exclusion of every other person’s use. That, obviously, is not the case and it’s always worth reiterating over and over again that the point of trademark law is to prevent the public from being misled as to the source of a good or service. And, yet, that baseline fact eludes far too many people.

Such as Dave Johnson, for instance. Johnson is a rather renowned announcer for horse racing, having spent time on the Illinois circuit and, more famously, calling races at Santa Anita Park. If you’re a fan of the pony races, you may know his signature call even if you don’t know his name: “And down the stretch they come!” Johnson trademarked the phrase in 2012. He also recently sued the Weinstein Co. over the 2014 Bill Murray film, St. Vincent, in which Murray uses the line.

In the federal lawsuit filed in New York, Johnson takes issue with Murray’s use of it in the film “St. Vincent.” In the movie, Murray plays a “retired grumpy alcoholic who gambles regularly on horse racing,” the suit states.

The suit alleges that by putting his words in the mouth of an “unsavory character,” the film “infringes, damages, blurs, tarnishes, and dilutes the mark and the rights and reputation of the mark’s creator and owner, Dave Johnson — an esteemed and accomplished gentleman who is a universally respected legend in sports broadcasting and entertainment.”

It’s a lawsuit that seems ridiculous on its face. Trademarking the phrase doesn’t somehow obliterate the First Amendment rights of a filmmaker, after all. And it seems painfully obvious that there is no potential customer confusion over which to be concerned. The tarnishment allegation is the only one that seems even remotely plausible, except that claiming a fictional character’s use of the phrase in a creative work somehow tarnishes the mark or its creator in real life is much more of a stretch than would appear in any race Johnson might call. This feels like a pure money-grab. And not one that is likely to prevail.

Complicating this further is that Murray’s character is a grumpy alcoholic gambler, not an announcer. All of which divorces the phrase from the claim that Murray’s film somehow is trying to imitate Johnson in real life.

In other words, none of this makes sense and this suit should be dismissed upon request.

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Comments on “Horse Race Announcer Sues Over Bill Murray Film That Included His Trademarked Tagline”

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Anonymous Anonymous Coward (profile) says:

I confused it with car racing...erm...

I am wondering what categories of business this trademark was applied for? Then, I am wondering how the trademark was granted, as it sure seems to be a description of an action taking place on the track rather than some unique term of art that clearly identifies some product? What products does Dave Johnson sell? Right, calling races. If there was some competition for his product in the general marketplace, rather than just between racetracks, there might have been something to talk about, but racetracks are a fairly limited market and if the competition for Dave Johnson’s talents was that fierce, I somehow feel that his ‘owning’ that line did not come into play.

Determining that it wasn’t actually copyrighted, which might have been a claim if it had been, isn’t difficult. Then again I bet it is a phrase that has been used hundreds, if not thousands of times by other track announcers, and for that reason wouldn’t be copyrightable either.

So now I will state that it is my unequivocal opinion that Dave Johnson is a horses ass who is trying to make some money because the movies have more money than his announcers pay.

cpt kangarooski says:

Re: Re:

Novelty isn’t a requirement for trademark. It’s perfectly fine to trademark things that already exist, that other people use, even if used by others as trademarks. The key is whether the mark identifies your goods or services and isn’t confusable for others’ goods or services.

The PERSON’S case is a fantastic example. A Japanese company developed and used the mark in Japan, an American businessman saw it in use there, came back to the US, registered and began using the mark here, and got priority over the Japanese company which, when it tried to expand to the US, was blocked from using the mark.

So the mark here about horse racing isn’t problematic in that other people said it first, it just matters whether or not it uniquely identifies the one announcer’s announcing services. Tricky, given that other people can probably still use the expression as a literal description of the action on the track.

K`Tetch (profile) says:

I grew up around horse racing in the UK (Regular at Haydock, Aintree racecourse mutiple times a week in the late 90s, even been to the Epsom Derby (and had the tent put up 5 feet from me when they euthanized a horse on track). Of course, I also spent a lot of time in betting shops with my grandparents, and half my scrap paper was betting slips, written on with bookie’s pens, and my dad won a regional competition to be their ‘top tipster of the year’ with horse racing. Hell, I even got taught a song at school about tic-tac men. And yes, my parents even pushed me towards horse riding (unusual given we grew up in Liverpool slums, that made Compton seem nice) with the hope that being small and scrawny might mean I could be a jockey [my 6ft, 200lb ass now laughs at them].

I heard that phrase ALL MY LIFE around races. Literally ALL MY LIFE. It was quite a popular phrase of John McCririck, the freaky horse racing pundit and commentator from Channel 4 racing in the uk.

I’d say bill Mirray is odds-on favourite, while this Dave Johnson guy (who I’ve never heard of, but then why would I, he plays in those cheap and nasty ‘dirt’ parks, doesn’t he?) is at impossibly long odds, and should probably Shergar himself, before the knackermen come to turn him into glue (or findus lasagna, if you remember 2013…)

PaulT (profile) says:

Re: Re:

"It was quite a popular phrase of John McCririck, the freaky horse racing pundit and commentator from Channel 4 racing in the uk."

This was going to be my point. I’ve only been casually exposed to horse racing over the years and the only race I typically watch in any given year is the Grand National. But, I’m pretty sure I’ve heard the phrase in the last week, and I’ve never watched a US race in my life AFAIK.

Anonymous Coward says:

There is this pervasive and growing sense by those who aren’t particularly well informed that trademark law simply allows one to own a word or phrase to the exclusion of every other person’s use.
I had to reread this just to make sure I didn’t misread it the first time, and now that I did, I feel I need to alter the statement for accuracy:
"There is a pervasive and growing sense by everyone, well informed or not, trademark law simply allows one to own a word or phrase to the exclusion of every other person’s use."

The reason I couldn’t stop myself from armchair editing an otherwise well-written article is because I see more cases of well-informed people abusing trademark law than those who don’t understand it (and will be quickly reminded ignorance is no excuse).

Jeremy Lyman (profile) says:

You Don't Own The Words

Seems like a Trademark that’s only effective in preventing someone else from trademarking the words. As a descriptive phrase, surely you can’t expect to prevent people from saying it in cases where they aren’t referring to your goods and services.

Reminds me of the GTA Lohan suit where they claimed the likeness was too similar but also defamed for being different.

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