How A US Burger Chain Brought 'Ruby Tuesday' Full Circle Through Trademark Bullying

from the the-circle-is-now-complete dept

Circles are so zen. So jedi. So the force. "The circle is now complete," Darth Vader says in A New Hope. Well, it turns out that the universe has a way of pulling this sort of dynamic out of the realm of the mystical and into the far more mundane realm of trademark bullying. You may be aware of the American burger chain Ruby Tuesday. The chain has locations all over the United States and internationally. Notably, the company's website lists no locations in Australia. This is notable because the American chain has for some reason decided to try to bully an Australian rock band, Ruby Tuesdays, into changing its name over trademark concerns.

Ruby Tuesday the restaurant has served Ruby Tuesdays the band with a letter outlining their intent to sue. It reads: “While many artists pay tribute to other artists through imitation, when it comes to imitating famous trademarks, only Ruby Tuesday is entitled to the goodwill of its mark.”

The letter continues: “In fact, the knowing adoption of a mark intending to play off a well-established mark is among the most egregious of trademark violations, warranting courts to apply the harshest of consequences.”

The corporation has demanded that the group change its name, close down its website, destroy all of its merch and pass on all of its profits as compensation.

So, a number of things should be immediately obvious here. First, these two organizations are not remotely in the same marketplace. Burgers and music acts offer no avenue for public confusion as to what the source of the prodct is. Second, for that and a myriad of other reasons, there is no potential for confusion here. The entire point of trademark law is to keep consumers informed as to the source and affiliations of a product. That is simply not in issue here. All of that is particularly so when you consider that Ruby Tuesday does not have any storefront locations in the entire country in which the band exists. We can just add here for context that this is a penniless hobby band that has very little notoriety, even in Australia.

But back to the concept of this representing a circle. Our younger readers may not realize this, but the Ruby Tuesday restaurant chain has an ironic source for its name.

The restaurant's name was derived from The Rolling Stones song, "Ruby Tuesday", which was popular during the time of the first restaurant's inception. The name was suggested to founder Sandy Beall by Bob Hope.

"The circle is now complete." Yes, the restaurant yoinked the title of one of the most popular songs from one of the most popular rock bands ever for its name in the 1960s and then turned around and attempted to bully a little-known rock band out of that same name in the present. I'll give Ruby Tuesday credit here for the pure audacious irony of its tone-deaf attempt at legal asshatery.

Zero credit is awarded, however, for having anything resembling a valid trademark claim.


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  • icon
    That One Guy (profile), 12 Jul 2018 @ 6:16pm

    Hypocrisy AND legal thuggery, nice combo

    The corporation has demanded that the group change its name, close down its website, destroy all of its merch and pass on all of its profits as compensation.

    Translation: 'Burn your band to the ground, and then give us any money you might have gotten to ensure that it stays ash.'

    In their shoes I think I'd make it clear that I would be willing to spend the band into the ground before I'd give them so much as a cent. Some 'look at what these hypocrites are doing' advertising might be warranted too, to ensure that Ruby Tuesdays doesn't come out of this without their own black-eye.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 12 Jul 2018 @ 7:58pm

    Now that Barbra Streisand has become their publicist,

    the Oz rock band might just get the exposure they are looking for. Kudos to the restaurant chain for arranging her to manage the band's publicity, out of the goodness of their hearts and all.

    reply to this | link to this | view in chronology ]

  • icon
    Gary (profile), 12 Jul 2018 @ 8:13pm

    Turnabout

    Kinda reminds me of a rodent based company that lifted all their stories from the public domain. Except they had the audacity to "lobby" for infinite extensions to support their bullying. :)

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 12 Jul 2018 @ 8:19pm

    It's time for The Stones to send their own C&D letter to the greasy spoon.

    reply to this | link to this | view in chronology ]

  • identicon
    Pixelation, 12 Jul 2018 @ 8:29pm

    Well... good bye Ruby Tuesday's.

    reply to this | link to this | view in chronology ]

  • icon
    mhajicek (profile), 12 Jul 2018 @ 9:03pm

    Wondering if the band would be able to prevent the restaurant from ever opening a location in Australia, as they had the name first in that jurisdiction.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 13 Jul 2018 @ 5:14pm

      Re:

      Since the rule concerning different business in different industries is strictly enforced yes, also we do award winners of civil cases costs, so if the band stay the course the big bad want to be multinational will have to pay for all the lawyer fees.

      reply to this | link to this | view in chronology ]

  • identicon
    Junkyardmagic, 12 Jul 2018 @ 11:29pm

    A proud tradition

    Rock music has a great tradition of bands naming themselves from songs - and not getting bullied by the song's originator. Death Cab for Cutie were named after a Bonzo Dog Bang song and there are loads of other examples. If the stones had behaved like the burger chain they would have face a copyright suit before their first burger was flipped.
    Its a rare example if the music industry showing common sense when faced with a compliment.

    reply to this | link to this | view in chronology ]

    • icon
      PaulT (profile), 13 Jul 2018 @ 2:24am

      Re: A proud tradition

      There's an excellent Nirvana cover band who tour often where I live in Spain called The Buzz Lovers, clearly named after one of the band's songs. I can't think of anything more of a tribute to Cobain's memory than how a group of people half a world away have worked hard to keep the experience so accurately alive for a generation who could not have experienced the original band. I couldn't think of anything more of an insult than trying to shut those guys down because they used one of his song titles.

      reply to this | link to this | view in chronology ]

      • identicon
        David, 13 Jul 2018 @ 3:08am

        Re: Re: A proud tradition

        I can't think of anything more of a tribute to Cobain's memory

        Well, that's the problem, isn't it? Confronted with a rock band named "Ruby Tuesdays", people will immediately think of the Rolling Stones. Not some stupid obscure burger joint wherever.

        So exactly because it is a tribute does that burger chain want to shut down any musical reference to the Stones' "Ruby Tuesday".

        reply to this | link to this | view in chronology ]

        • identicon
          Anonymous Coward, 13 Jul 2018 @ 1:01pm

          Re: Re: Re: A proud tradition

          Indeed... I'm not from Australia, but I had heard of the Ruby Tuesdays because of something one of the members posted online. I've never heard of the US burger chain though. Maybe this was a last gasp attempt at publicity?

          reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 13 Jul 2018 @ 12:02am

    Because why come up with a trademark to enforce, when you can (using terms that the RIAA uses) steal somebody else's trademark, escape punishment for the obvious reference, and bully somebody else over it instead?

    out_of_the_blue's heroes, ladies and gentlemen!

    reply to this | link to this | view in chronology ]

    • identicon
      Bruce C., 13 Jul 2018 @ 4:50am

      Re:

      If the restaurant chain did use the name without a licensing agreement with the Rolling Stones, I sure hope Mick Jagger & co decide to complicate the restaurant's life with a copyright infringement suit.

      reply to this | link to this | view in chronology ]

      • identicon
        cpt kangarooski, 13 Jul 2018 @ 5:24am

        Re: Re:

        Unlikely. Song titles aren’t protected. Trademark doesn’t apply to mere titles of works, copyright doesn’t apply to words or short phrases.

        reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 13 Jul 2018 @ 12:53am

    Asshattery?

    I just find it a little difficult to take anything from an author that uses the term “asshattery” seriously.

    reply to this | link to this | view in chronology ]

    • icon
      That One Guy (profile), 13 Jul 2018 @ 12:57am

      Re: Asshattery?

      Stupid lawsuits are deserving of mockery, at times using language that is somewhat short of 'polite', and using that sort of language can help deal with the headache from overwhelming legal stupidity.

      reply to this | link to this | view in chronology ]

    • icon
      Mike Masnick (profile), 13 Jul 2018 @ 12:58am

      Re: Asshattery?

      I just find it a little difficult to take anything from an author that uses the term “asshattery” seriously.

      Why?

      reply to this | link to this | view in chronology ]

      • icon
        Flakbait (profile), 13 Jul 2018 @ 10:23am

        Re: Re: Asshattery?

        Because he prefers proper words like 'tomfoolery', 'shenanigans', 'monkeyshines', and 'high jinks.' Use of vulgarity-based words make him go all jackanapes.

        reply to this | link to this | view in chronology ]

        • identicon
          Anonymous Coward, 13 Jul 2018 @ 9:44pm

          Re: Re: Re: Asshattery?

          Maybe he prefers Scalia's terms: "gollywaddles", "argle-bargle", "pure applesauce", and "jiggery-pokery".

          reply to this | link to this | view in chronology ]

    • icon
      PaulT (profile), 13 Jul 2018 @ 2:22am

      Re: Asshattery?

      That's fine. I can't think of anyone less relevant than someone who whines about which word an author uses in an article, lacking anything to question in its substance.

      reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 13 Jul 2018 @ 8:43am

      Re: Asshattery?

      How about "douchebaggery" or "dumbfuckery"? Both would have been accurate substitutes in this instance.

      Do you really take yourself that seriously?

      reply to this | link to this | view in chronology ]

  • identicon
    David, 13 Jul 2018 @ 1:05am

    Think big!

    Having successfully trademarked "Ruby Tuesday", I think it's aiming low to sue a band calling themselves the "Ruby Tuesdays".

    Just think what kind of license fees they could collect my suing calendar makers for any reference to "Tuesday". Or, to stay within the music business, concert agents scheduling concerts on "Tuesday" (admittedly not the most frequent occurence).

    reply to this | link to this | view in chronology ]

  • identicon
    David, 13 Jul 2018 @ 1:14am

    Self-fulfilling prophesy

    The lyrics actually say

    Goodbye, Ruby Tuesday

    Who could hang a name on you?

    and now we have the answer.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 13 Jul 2018 @ 8:01am

    So that's what happened...

    I always wondered what happened to Ruby Tuesdays. I grew up in their hometown, and overnight 2ish years ago, all of their shops in the area closed.
    Went from burgers to trademark bullies... That's progress.

    reply to this | link to this | view in chronology ]

  • icon
    John85851 (profile), 13 Jul 2018 @ 10:16am

    It's not about the market space

    I really wish discussions of these kinds of issues would do away with the idea of companies not being in the same market space.
    The real issue is that one company (in this case, the restaurant) doesn't want another company (the band) to use a similar name in case the public thinks both are somehow related, as in the band is authorized and endorsed by the restaurant. So the company lawyers use the only tool available to them: file a cease & desist or trademark notice.

    reply to this | link to this | view in chronology ]

    • icon
      Mike Masnick (profile), 14 Jul 2018 @ 12:34am

      Re: It's not about the market space

      I really wish discussions of these kinds of issues would do away with the idea of companies not being in the same market space.

      Trademark law specifically requires that marks only apply to specific markets, so it is entirely appropriate.

      The real issue is that one company (in this case, the restaurant) doesn't want another company (the band) to use a similar name in case the public thinks both are somehow related

      And part of the legal analysis for that is... whether or not they're in the same market.

      reply to this | link to this | view in chronology ]

      • icon
        The Wanderer (profile), 14 Jul 2018 @ 4:01am

        Re: Re: It's not about the market space

        The argument is that being in the same market is not a necessary requirement for the public to consider two things with similar names to be related, and therefore the legal analysis should not treat lack of that element as definitively resolving the question.

        On the one hand, I can see how the lack of a same-market requirement would expand the scope of trademark to the point where it would wreak havoc in a number of ways.

        On the other hand, speaking as a member of the public in question, I do see how the public may indeed not take in-the-same-market into account in considering whether to think of two things as related - because I have sometimes seen two names in unrelated markets where my initial default assumption would have been that it was either one company getting into two different businesses, or one entity endorsing another by lending the use of its name. (The first example that comes to mind is the one from the article on this site, some time back, in which one side of the dispute involved "Land O' Lakes" butter.)

        This is one of those subjects where I'm honestly not sure what the perfect way to resolve the problem is, nor indeed whether such a way even exists.

        reply to this | link to this | view in chronology ]

        • identicon
          Anonymous Coward, 14 Jul 2018 @ 9:52am

          Re: Re: Re: It's not about the market space

          This is one of those subjects where I'm honestly not sure what the perfect way to resolve the problem is,

          Make a trademark include distinctive features beyond the word used, like the golden arches of McDonalds. The style of presentation of the same or similar names can be distinctive, including background logos etc.

          reply to this | link to this | view in chronology ]

        • identicon
          Wendy Cockcroft, 16 Jul 2018 @ 7:14am

          Re: Re: Re: It's not about the market space

          Guys, they're in the same market as the Rolling Stones. Start there.

          reply to this | link to this | view in chronology ]

  • icon
    Ryunosuke (profile), 13 Jul 2018 @ 10:22am

    So the next obvious question....

    When is The Rolling Stones going to sue Ruby Tuesday's for trademark infringement and past royalties/profits?

    reply to this | link to this | view in chronology ]

  • identicon
    carlb, 13 Jul 2018 @ 10:39am

    It's by country and field of endeavour, first-come, first-served

    The restaurant's name was derived from The Rolling Stones song, "Ruby Tuesday", which was popular during the time of the first restaurant's inception.

    Yes, and the "Holiday Inn" chain was named after a Bing Crosby flick. "I'm dreaming of a white Christmas..."

    Nonetheless, if there already was a "Holiday inn by the falls" in Niagara ON before the chain came to Canada, the US chain could set up shop in Niagara NY or St. Catherines ON but no closer... until at least a half-century later, when they finally managed to recruit "Holiday inn by the falls" to the US "Holiday Inn" chain. A similar issue (name already in use by someone else) forced Booger King onto the "Hungry Jack's" branding in Australia for years (BK was originally owned by Pillsbury and the dough boy already held an AU trademark for a "hungry jack" flapjack/pancake mix so they re-used that trademarked name).

    reply to this | link to this | view in chronology ]

  • icon
    ECA (profile), 13 Jul 2018 @ 1:03pm

    AND??

    https://www.youtube.com/watch?v=ADtnUC_ctNk

    The Rolling Stones - Ruby Tuesday (Official Lyric Video)

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Coward, 14 Jul 2018 @ 9:59am

    Wouldn't help that Ruby Tuesday burgers have been implicated in HUNDREDS of cases of salmonella, food poisoning, employees ejaculating into customers food (men women AND kids) and a host of other nasty violations.

    reply to this | link to this | view in chronology ]


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