8:02am PT by Eriq Gardner
Judge Dismisses John Wayne Estate, Duke University Fight Over 'Duke' Alcohol
For the time being, geography has saved Duke University from having to face claims by John Wayne's heirs that the famous university located in North Carolina is getting in the way of bourbon. On Tuesday, a California federal judge rejected the lawsuit on jurisdictional grounds.
The two sides have spent many years fighting each other at the Trademark Office over various goods and services. The battle entered federal court this past summer on the subject of food and alcohol.
In July, the actor's estate sued Duke University, seeking a declaratory judgment. The plaintiff ridiculed the "ludicrous" idea that consumers would be confused by a bottle of "Duke" bourbon with John Wayne's image and signature on the label. In its court papers, John Wayne Enterprises pointed out that the school has never been in the business of selling alcohol, though Duke previously told the Trademark Office that it "does not permit use of confusingly similar marks associated with unapproved goods or services," and that it does indeed have food products and beverages under its sphere.
After we first reported the story, and it began picking up other media attention, Duke University attempted to give an explanation. A university spokesperson told The Los Angeles Times that "the university doesn't object to the use of 'Duke' on alcoholic beverages, as long as it is clearly linked to John Wayne's likeness."
That wasn't enough for John Wayne's estate, which told the judge that the university was backtracking, but that this was exactly "its ridiculous position" in papers filed at the Trademark Office.
Nevertheless, despite its attempts to draw Duke University into a California court by among other things, pointing to the way the school actively recruits students there, raises money there, maintains alumni associations there and sells university-related products there, U.S. District Judge David Carter sees no basis for adjudicating the dispute in his courtroom.
The judge applied what's known as the “effects test," which measures whether a defendant acted in a way that was wrongful and expressly aimed at affecting California and whether harm was likely to be suffered in the state. Here, Judge Carter says that Duke was aware of John Wayne Enterprises's presence in the state, but that there was no showing how Duke purposefully directed its conduct at California by filing an opposition to trademarks in Virginia. The judge added that other than one Nebraska case, "there is no basis for JWE’s contention that a defendant’s actions to protect its intellectual property rights in an administrative proceeding constitute the type of harm contemplated under the 'effects test.'"
For those reasons, the judge declines to assert jurisdiction over Duke University, and the case is dismissed. It's possible that a new lawsuit could be brought on the East Coast.