So now it’s official: the Friars Club of New York did score that legal victory over the Friars of Beverly Hills I reported way back on September 7th. (See my previous, Bicoastal Friars Club War Ends: NY Wins?) The court order was officially signed last week instructing the Friars of Beverly Hills to stop using the Friars’s name. Of course, it took the flacks at Rubenstein 17 days to get back to me on this. Here’s the PR:
THE FRIARS CLUB WINS WITH SUMMARY JUDGMENT AGAINST THE FRIARS OF BEVERLY HILLS: Attorneys from Pryor Cashman Prove the Friars of Beverly Hills Violated Trademark Law in Using the Friars’ Name
Los Angeles, CA — Attorneys for The Friars Club at Pryor Cashman have officially obtained a summary judgment against the Friars of Beverly Hills in a Lanham Act and Anti-Dilution lawsuit, which they filed in the U.S. District Court of the Central District of California. The Friars Club, renowned for its legendary Friars “Roasts” and whose members have included entertainment luminaries such as George Burns, Jerry Lewis, Bob Hope, Frank Sinatra and Elizabeth Taylor, claimed that the defendants infringed and diluted The Friars Club’s trademark by operating “Friars of Beverly Hills” and by falsely claiming that it was the successor to the Friars Club of California, a now-defunct former licensee of The Friars Club.
In its decision, the Court found that the name “Friars” was not transferable from the Friars Club of California to the defendants. Furthermore, it found that the evidence clearly demonstrated actual confusion on the part of the consuming public and blurring between the two organizations, and that The Friars Club had acquired “secondary meaning.” The Court concluded that the defendants “may not evade trademark law by adopting” the Friars Club name and then “adding a geographic reference to try and distinguish its name.” Relying on the fact that the defendants admitted that the name “Friars” is a “luxury brand,” that “everybody knows the Friars in the Country,” and that the “Friars” name is “a legacy” and “historic”, the court also concluded that the Defendants “intended to capitalize on the ‘Friars’ name by emulating it in every aspect.”
“In short,” the Court ruled, “Defendants are using a mark (used by The Friars Club for over a hundred years) to identify a social club that is for all intents and purposes modeled after Plaintiff’s historic club.” Such “free riding on the investment of The Friars Club must now come to an end.”
“It’s good that we are now able to put this all behind us and get back to business as usual at the Friars,” said Freddie Roman, the Dean of the Friars Club. “We had a good run on the West Coast for many years but now we move on. The Friars name is legally secure and we can continue to carry out the traditions our entertainment founders set forth over a hundred years ago.”