August 29, 2012 7:54pm PT by Eriq Gardner
Humphrey Bogart Estate's Sofa Lawsuit Survives Key Challenge
Is it possible that Ashley Furniture Industries named its sofa products "Gable-Mocha," "Brando-Cocoa," "Newman-Oyster," "Presley-Cafe," and "Bogart-Ocean," and without intent, stumbled upon the surnames of such old Hollywood stars as Clark Gable, Marlon Brando, Paul Newman, Elvis Presley and Humphrey Bogart?
It's hard to believe in such a coincidence, but in defending a lawsuit that claims it took advantage of the names and personas of such Hollywood stars, Ashley insists that's what occurred and has an explanation for how it happened.
A Georgia federal judge on Tuesday wasn't convinced. In a lawsuit brought by the estate that controls Bogart's intellectual property, the judge rejected a motion to dismiss the case, allowing it to move to a trial where several millions of dollars will be at stake.
Ashley's attempt to persuade the judge began with the explanation that it has some 650 products and that the Bogart estate selected 16 of them with names suggestive of actors and actresses including Marilyn Monroe and Johnny Carson. Small sample size. Take 16 names from a list of 650 and one can hypothesize any conspiracy.
Further, the company stated that the names at issue don't only belong to celebrities.
"I am in charge of choosing these two words for Ashley products like the product at issue in this case, Bogart Ocean," said Lisa Adair, vp design and merchandising at Ashley, in a declaration. "The first word in these labels is chosen from various publicly available lists of words such as lists of the names of rivers, parks, cities, lakes, streets, baby first names, and the like. The second word is a word that refers to the color of the product."
Alas, says the furniture company, the "Bogart Ocean" sofa was a blue one that was based not on Humphrey Bogart, but rather... the city of Bogart, Georgia.
The derivation of the name of this sofa is more than simply a fun controversy as there's a mountain of loose change at the back of the cushion for taking.
In 2001, Bogart LLC entered into a licensing agreement with another furniture maker named Thomasville for the "Bogart Collection." For the next decade, the Bogart estate received royalty payments somewhere between 3 to 3.75 percent of net sales. The deal earned more than $5 million for the estate.
Bogart LLC also brought forth an expert on the value of the imprimatur of a Hollywood icon on furniture. Ashley asked the judge to throw out the testimony of this witness, Jon Albert, but the request was denied. According to Albert's calculations, Ashley's use of Humphrey Bogart's name was worth a guarantee of $1 million per year against more than three percent of sales.
In a 43-page ruling, U.S. District Court judge Clay D. Land notes that the Bogart estate hasn't brought forward any evidence of actual confusion yet, but nevertheless, he finds enough to move the lawsuit forward. The judge says a genuine factual dispute exists as to Ashley's intent and also declares that a trial is warranted to figure out issues like whether the "Bogart" couch confused consumers, diluted plaintiff's trademarks, violated Bogart's publicity rights, and was a deceptive trade practice. Further, the judge is allowing the possibility of punitive and exemplary damages.
The full decision is on the next page.
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