from the made-my-day dept
A few months back, we wrote about the ridiculous story in which Duke University, ostensibly a higher-learning establishment, sued the John Wayne Estate, claiming that its "Duke Bourbon" product might somehow confuse brown-liquor drinkers into thinking that the school produced the product. This, despite the logo for Duke Bourbon including an image of John Wayne and nobody ever defaulting to thinking that a university was going to start making and marketing its own liquor.
And now, with the John Wayne Estate suing for a declaratory judgment, the California court in which the claim was brought has essentially punted on the issue by using a procedural evaluation over jurisdiction.
The judge applied what's known as the “effects test," which measures whether a defendant acted in a way that was wrongful and expressly aimed at affecting California and whether harm was likely to be suffered in the state. Here, Judge Carter says that Duke was aware of John Wayne Enterprises's presence in the state, but that there was no showing how Duke purposefully directed its conduct at California by filing an opposition to trademarks in Virginia. The judge added that other than one Nebraska case, "there is no basis for JWE’s contention that a defendant’s actions to protect its intellectual property rights in an administrative proceeding constitute the type of harm contemplated under the 'effects test.'"The decision may technically make sense, but damn if it wouldn't be nice for the judge to instead have spent a half an hour laughing directly in the face of Duke University's lawyers before lighting all of their paperwork on fire instead. The entire attempt to block the trademark of a bourbon by the university borders on insane. That this crap will have to go back into a different court before eventually being tossed out is too bad.