Posted: November 5th, 2015
By: Alexandra Braverman* | Staff Writer
The famous musician known for recording “The Twist,” Ernest Evans, aka “Chubby Checker,” brought suit against major retailers Nordstrom, Inc., Amazon, Inc., Macys, Inc., Squire Fine Men’s Apparel LLC, and Würkin Stiffs over a recently released line of cufflinks bearing the Chubby Checker trademark. The complaint, filed in Florida federal court, included claims of federal trademark dilution and infringement, federal unfair competition, and false endorsement. According to Mr. Evans, the cufflink manufacturer – Wurkin’ Stiffs – manufactured and marketed the cufflinks with the Chubby Checker name without obtaining consent from Mr. Evans or his related entities. In light of the use, Mr. Evans seeks injunctive relief, treble damages, and punitive damages to the tune of 8-figures, according to Mr. Evans’s lawyer.
In order to prevail on the trademark dilution and infringement claim, Mr. Evans must show that his well-known trademark, “Chubby Checker,” has been blurred or tarnished by its use on Wurkin Stiffs’ cufflinks, and that this use has reduced the Chubby Checker distinctiveness. Although showing that the trademark is a distinctive and protectable symbol is always required for showing trademark infringement, Mr. Evans will have little trouble establishing this element, having recently settled a case over trademark infringement with Hewlett-Packard.
Additionally, trademark infringement is an example of unfair competition, so the two claims will likely rest on similar showings of misuse. The rationale behind trademark infringement as constituting unfair competition is that the misuse of the trademark has confused consumers as to the source of the product. This is directly in line with Mr. Evans’ distress over the Chubby Checker cufflinks being completely unassociated with him and his entities. Furthermore, this confusion is likely to unfairly benefit the manufacturers and retailers if the customers favorably associate the cufflinks with Chubby Checker’s musical fame and this association increases product sales.
Under the Lanham Act, liability for false endorsement occurs when a commercial product bears a name that 1) is likely to cause confusion or deception over the product’s affiliations, origins, or other associations, or 2) misrepresents the nature of the good in commercial advertising or activities. A 2003 false endorsement case filed in the 6th circuit restates this more succinctly as “False endorsement occurs when a celebrity’s identity is connected with a product or service in such a way that consumers are likely to be misled about the celebrity’s sponsorship or approval of the product or service.” Because the cufflinks are named Chubby Checker, customers are likely to believe that Mr. Evans had a part in selling them, which we know is not the case. Interestingly, courts have also found that in false endorsement claims concerning celebrities, the “mark” at issue is the celebrity’s identity, which only strengthens Mr. Evans’ claims.
The complaint requests retailers to stop selling the cufflinks and award Mr. Evans damages based on sales, profits, emotional distress, and punitive damages. While none of the retailers have publically responded to the claims, the cufflinks bearing the name “Chubby Checker” have been removed from Amazon.com, Macys.com, and Nordstrom.com. As of September 27, 2015, however, the cufflinks can still be purchased at Macy’s under the new name “Wurkin Stiffs Knotz Checkered Cufflinks.”
*Alexandra Braverman is a fourth year JD/MBA student at Wake Forest University School of Law and School of Business. She holds a Bachelor of Arts in Political Science and Anthropology from the University of California at Berkeley. Upon graduation, she intends to pursue a career in corporate law.