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Blog

Distillations: Trapped

September 15, 2017

Blog

Distillations: Trapped

September 15, 2017

Back to Fish's Trademark and Copyright Blog

 

A recently-filed trademark infringement case out of California offers something of a cautionary tale on one of the oldest maxims of law and business: Get It In Writing.

Thelonious Monk, Jr., son of the jazz legend, has sued North Coast Brewing Company, a craft brewery in Fort Bragg, California, regarding their use of Thelonious Monk’s name and likeness on a Trappist style ale (Get it?  Trappist Monk!) called “Brother Thelonious Belgian Style Abbey Ale.”  The complaint alleges that the brewery is not authorized to use Monk’s name or image and is unfairly profiting from his fame.

This all seems straightforward enough – there’s no denying the name and likeness on the label – but as always, the backstory is a little more complicated.  The complaint states that “[s]ome time prior to January 11, 2016, T.S. Monk [Jr.] verbally agreed to permit North Coast to utilize the THELONIOUS MONK name, image and likeness for the limited purpose of marketing and distributing BROTHER THELONIOUS BELGIAN STYLE ABBEY ALE in exchange for North Coast’s agreement to donate a portion of the profits … to the Thelonious Monk Institute of Jazz.”

Two details jump out from that sentence: one, that the permission was apparently not in writing (verbally being used here as a synonym for orally); and two, that the plaintiff apparently is not sure when the permission was given.

The complaint further alleges that the brewery is also using the THELONIOUS MONK name and image on a wide array of other merchandise, “such as cups, hats, hoodies, iron-on patches, soap, t-shirts, tap handles, metal and neon signs, pins, playing cards, mouse pads, posters and food products,” and that these ancillary uses were never authorized by Mr. Monk or the Monk Estate.

The complaint goes on to state that on January 11, 2016 the “verbal” permission was “terminated and revoked” by a letter to North Coast; the termination letter also demanded that North Coast enter into a formal license and merchandising agreement, with royalties to be paid to Thelonious Monk’s Estate.  Notwithstanding this demand, North Coast has continued to use the BROTHER THELONIOUS mark without compensation to the Monk Estate.  (Left unsaid is whether North Coast is continuing to pay the Monk Institute.)

T.S. Monk Jr. thus seems trapped in a situation partly of his own making.  Had he insisted on a detailed written agreement back when he originally permitted the brewery to use his father’s name and likeness – with definite parameters as to authorized uses and merchandise, payment terms, duration and termination, and quality control – he would not now be in a position where he must spend a lot of money to litigate a dispute and address thorny questions like:

  • How long had North Coast been using the Monk name and image pursuant to the verbal permission without any objection from the Monk Estate?
  • Did the Monk Estate ever exercise any quality control over products sold by North Coast?
  • Why did the Monk Estate never object to the expansion of the use to other merchandise until 2016? How long had that expanded use been going on?
  • Why did the Monk Estate permit North Coast to continue to use the Monk name and image for another year and a half between sending the termination letter and filing suit?

The case is Thelonious Sphere Monk, Jr. as Administrator of the Estate of Thelonious Sphere Monk v. North Coast Brewing Co., Case No. 3:17-cv-05015, U.S. Dist. Ct., N.D.Ca.

Blog Authors

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Robert M. O'Connell, Jr. | Of Counsel

Robert O’Connell is Of Counsel in the Boston office of Fish & Richardson. His practice focuses on trademark and copyright strategic advice, prosecution and enforcement, including all aspects of domestic and international trademark law; registration and protection of...

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