All That Jazz: Miles Davis Properties Sues Cafe Owner

According to Satoru "Miles" Kobayashi, he had an vision one night in the form of the late, great Miles Davis in which the latter told the former he should change his first name to Miles and name his cafe accordingly. Not one to ignore the wishes of a jazz legend, whether corporeal or not, Kobayashi did as was requested and opened a New York spot called "Miles' Cafe." Unfortunately for Mr. Kobayashi, Miles Davis Properties LLC, which owns trademark rights in Miles Davis' name and likeness, got wind of Kobayashi's establishment and promptly filed suit. Miles Davis Properties, whose members include two of Mr. Davis' children and one of his nephews, said in its complaint that "Defendants are intentionally free-riding off the goodwill associated with the Miles Davis marks by using them to promote a jazz club entitled Miles' Cafe in a way that is likely to mislead the public." Does the lawsuit hold water? Trademark infringement suits are all about public confusion. You can sue anyone for infringement but if their use is not in such a way as to be a likely source of confusion to the consumers, you will not have a case. In this case, I think that a court would not be likely to find the likelihood of confusion in using the name "Mile's Cafe." However, according to the complaint the cafe is also using a silhouette of Miles Davis (or someone who looks awfully like him) in addition to the name. This could put Mr. Kobayashi on shakier legal ground, as it makes it more apparent that the "Miles" in Miles' Cafe is not just any Miles, but that one particular Miles.

On a side note, it is interesting to read some of these cases on trademark infringement that deal with historical persons or works. Because trademarks never expire, trademark law is often used to protect things that would either have no protection (rights of publicity and to your own image disappear when you die in many states), or would have gone into the public domain long ago. Two such examples are Mickey Mouse and Sherlock Holmes, works protected by copyright that should have been in the public domain long ago. However, by using the works as trademarks, Disney and the Sir Arthur Conan Doyle Literary Estate have been able to successfully bring actions to keep others from using the characters well into present day.