John Wayne was born Marion Robert Morrison in 1907. But to many, he was “the Duke.”
“That was how he was known by the people who were closest to him,” James Olson, co-author of “John Wayne: American,” told NPR. “He would say, ‘Anyone who calls me John doesn’t know me.’ ”
Lawyers for Duke University were obviously not among the late actor’s confidantes. The North Carolina school, famous for its basketball team and academic reputation, is trying to block Wayne’s estate from selling “Duke” bourbon.
Early last year, John Wayne Enterprises filed applications to use the trademarks “Duke” and “Duke John Wayne” on alcoholic beverages. According to John Wayne’s son, the actor had an “unfulfilled dream of distilling fine spirits.” Ethan Wayne is a partner in Monument Valley Distillers, makers of Duke spirits. Then Duke University filed an objection with the U.S. Patent and Trademark Office.
As it turns out, the two Dukes have been dueling for some time. Since 2005, the university has also tried to block the estate from using “Duke” in connection with a John Wayne-themed restaurant and celebrity licensing services.
Now, the university objects to Duke-branded bourbon because they say the estate’s mark, which features a silhouette of Wayne in full cowboy regalia with “Duke” superimposed on the image in block letters, is “ substantially similar” to the university’s own logos, which include the blue devil mascot and the university shield, or say “Duke” or “D” in blue letters.
The school also claims the booze the estate wants to sell is “closely related to goods and services” that bear the university’s mark, according to a complaint filed by the estate last week in the U.S. District Court for the Central District of California.
The estate calls the claim “ludicrous,” and directs the court to Exhibit A: a picture of a bottle of bourbon featuring the mark, along with John Wayne’s signature, an image of a shotgun casing and the words “Kentucky Straight Bourbon Whiskey Small Batch” – not something you’re likely to find at a campus store hawking Duke University-branded sweatshirts and binders. Nonetheless, the university says the estate’s use of the mark would cause “confusion, “suggest a false connection” and diminish Duke’s rights to the use of its own name.
Wayne’s estate concedes the university uses the “Duke” mark “in connection with the sale of its university-related products and services.” But, they argue, “Duke University does not own the word Duke in all contexts for all purposes.”
“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,” said Michael Schoenfeld, a spokesman for the university. “As Mr. Wayne himself said, ‘Words are what men live by, words they say and mean.’”
When major corporations and large institutions try to protect their trademarks, they are often cast as the villain and accused of “trademark bullying.” After all, they’ve got a rep to protect.
It’s not just their right but their responsibility to protect their trademarks, Reid Wilson, an adjunct professor of trademark law at Ohio State University, explained to NPR. Otherwise they risk losing them.
Wilson said Duke’s objections are “within the realm of the enforcement expectations of a famous mark.”
Each side has arguments in its favor. On the one hand, Duke isn’t in the business of selling booze. On the other, the university has a trademark and Wayne’s estate doesn’t.
“It’s one of those areas where people have a misperception about what a nickname gives you,” Wilson told NPR. “A nickname doesn’t give you the ability to have a mark.”
In John Ford’s 1938 western “Stagecoach,” Wayne’s character asserts: “A man’s got to do what a man’s got to do.”
Wayne’s heirs seem to be taking those words to heart. They intend to proceed with their business plans despite the “the cloud of an eventual infringement claim.”
By Gail Sullivan