We reported on July 16, 2014 that John Wayne Enterprises, LLC (“JWE”), the entity owning the rights to the name, image, and likeness of John Wayne, a.k.a. The Duke, had sued Duke University in California federal court to protect JWE’s right to market alcohol products with the mark “Duke” or “Duke John Wayne.” Duke University had opposed JWE’s trademark applications before the Trademark Trial and Appeal Board (“TTAB”) in Virginia on the basis of potential deceptiveness, likelihood of confusion, and dilution of the university’s “Duke” marks.
On September 30, 2014, the California federal court handed Duke University a victory, by dismissing the suit of JWE for lack of personal jurisdiction and denying as moot JWE’s attempt to disqualify Duke’s counsel. JWE tried to argue that Duke’s opposition to JWE’s trademark application in Virginia was somehow enough to hale Duke into court in California. The California court said it was not so—Duke’s knowledge that JWE is a California corporation is not enough to show Duke purposefully directed activities at California or availed itself of California’s laws. The takeaway may be that while plaintiffs often seek a home-field advantage by filing in their own state, they need to think about whether the defendant can be forced to play there in the first place.
The case, now dismissed, is John Wayne Enterprises, LLC v. Duke University, et al., No. 14 Civ. 1020 (C.D. Cal.).