Jazz great’s heir sues craft brewery for using dad’s likeness on merchandise
In an art form already brimming with intense personalities, jazz great Thelonious Sphere Monk stood out from the crowd.
His talent, at first eclipsed by the mainstream artists of his time, turned jazz from an art form associated with dance and popular entertainment into something else altogether. Disjointed, angular and cerebral, Monk’s music was music for its own sake ‒ music for the serious listener. He holds the distinction of being the second-most-recorded composer in jazz, just behind Duke Ellington. Although he composed only a handful of works next to Ellington’s prodigious output, Monk’s impact on the genre is unmistakable.
And as much as any contemporary pop star, Monk crafted an inimitable persona: shaggy, pointed beard, distinctive fezzes and berets, the round glasses of a professor.
“I don’t imitate anybody,” he once said in an interview. “I have my own way of walking and talking.”
Well, You Needn’t
Monk’s son, Thelonious Monk Jr., took exception to what he alleges is the appropriation of that persona by North Coast Brewing Co., a California-based craft brewer. Among other brands, the company produces Brother Thelonious Belgian Style Abbey Ale, which, Monk Jr. claims, uses the likeness, name and image of his father as the primary artwork on its packaging ‒ and not just its packaging. North Coast, Monk Jr. alleges, uses Monk’s image on all of its advertising for the brew, as well as “at least seventeen (17) other items including cups, hats, hoodies, iron on patches, soap, t-shirts, tap handles, metal and neon signs, pins, playing cards, mouse pads, posters, and food products.”
Although Monk Jr., as head of his father’s estate, had once given the company permission to use the likeness for the purpose of promoting a charity, he claimed that he rescinded that permission in January 2016, forbidding the company from continued use without some sort of merchandising agreement.
Monk Jr. sued North Coast in the Northern District of California in August 2017, claiming that the company continued using his father’s likeness after he forbade them from doing so. He seeks damages for trademark infringement, unjust enrichment, violations of the California Civil Code and violations of the New Jersey Common Law Right of Publicity.
Straight, No Chaser (The Takeaway)
North Coast moved to dismiss; the court denied the motion and kept the parties on track for a trial.
In its motion, North Coast attacked the complaint by offering a contrasting theory of Monk Jr.’s claim ‒ labeling the complaint as essentially a trademark rights dispute rather than a false endorsement claim. The court disagreed, noting that the argument, while inspired by confusion within the amended complaint, was not valid: “While the FAC does not use the term ‘false endorsement,’ it does make clear that Plaintiff is seeking relief for Defendant’s alleged infringement of the Monk name, image, and likeness ‒ not for some asserted interest in the Brother Thelonious brand itself.”
“Notwithstanding the parties’ failure to engage with the relevant doctrine,” the court went on to define how Monk Jr.’s complaint qualified as a false endorsement claim under the Lanham Act, citing an eight-factor test to determine whether the representations were likely to cause confusion regarding the estate’s affiliation with the brand. In addition to the similarity of the likeness used by the defendant to the actual plaintiff, criteria include recognition enjoyed by the plaintiff among the “segment of society for whom the defendant’s product is intended” and the relevance of the plaintiff’s fame to the product.
Monk Jr.’s other claims ‒ right of publicity under New Jersey law and unjust enrichment under California law ‒ survived as well.
Enterprises can take away the fact that a right of publicity cause of action may be more difficult to shake off. Courts may also be more reluctant to determine whether a trademark license or mere consent was given before facts are more fully developed with further discovery. Finally, this case also highlights the need to get agreements in writing.