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July 2003
(Issue No. 1: Decisions published June 16–30)

Case Summary:

Preliminary Injunction Granted To Enjoin Use Of Plaintiffs' Late Father's Name As Name Of Scholastic Prize

Bueno v. Dance Perspectives Foundation, Inc.

(S.D.N.Y. June 18, 2003), 2003 U.S. App. LEXIS 10312

Case Snapshot:

Trademark Issue:

Person's Name Used For Scholastic Prize

Case Overview:

Daughters sought preliminary injunction to prevent use of their deceased father's name as name for scholastic prize.

Holding:

Defendant acquiesced in daughter's withdrawal of permission to use the name for the prize. Preliminary injunction granted.

The Dispute:

"The de la Torre Bueno Prize": The late Jose Rollins de la Torre Bueno was a dance publishing editor. He was one of the founders of the defendant, which was created to promote and develop research and publication in the field of dance.

When he retired, "The de la Torre Bueno Prize" was established in 1972 in his honor and awarded annually by defendant to an author of a work of scholarship in dance.

His daughter Mary was on defendant's board. She was asked to resign after expressing dissatisfaction with how the prize named after her late father was being administered. In response, her counsel demanded that defendant cease using her family name for the prize.

Defendant agreed to her request to stop using her family name.

Mary then authorized another group, the Society of Dance History Scholars ("SDHS"), to administer "The de la Torre Bueno Prize" in the future.

Defendant does about face: It filed an application with the Patent and Trademark Office to register "The Jose Rollins de la Torre Bueno Prize in Dance Literature" as a service mark, and demanded that SDHS cease from using the name "The de la Torre Bueno Prize."

Eyes on the prize: Mary and her sister sued the defendant to prevent it from using their surname or their late father's name for defendant's prize. Both sides made cross-motions for preliminary injunction to prevent the other from using their respective prize names.

Procedural Posture:

Cross-motions for preliminary injunction.

Ruling:

Preliminary injunction granted to plaintiffs.



Key Points:

Use of Family Name: Defendant Enjoined, and its Cross-Motion Denied

Defendant enjoined because it agreed to Plaintiff's request that it cease using the name for its prize.

  • The court did not reach the fundamental issue of who owned the exclusive rights to use the name, because defendant agreed to stop using the name.

 I need take no position as [defendant] requests as to whether or not [it] was required to grant Mary Bueno's demand that [defendant] cease using her 'family name' upon her resignation from the board.... Defendant has continued to use Ms. Bueno's family name after she withdrew her permission and after defendant acquiesced in that withdrawal.   [pp. 4-5]

Defendant's new name for its prize still likely to cause confusion.

  • Defendant changed the name of the prize to "The Jose Rollins de la Torre Bueno Prize in Dance Literature," which the court found was likely to cause confusion with "The de la Torre Bueno Prize," which was the prize name that Mary authorized the other group, SDHS, to use.

Analysis

If Defendant had not agreed to stop using the name, it probably would have been found to own the service mark rights to the prize name "The de la Torre Bueno Prize."

  • Defendant was the senior user of that name used for its scholastic prize.
  • Mr. de la Torre Bueno was a founder of Defendant.
  • His name was used as the name for the prize while he was alive following his retirement. The prize was intially awarded jointly by Defendant and Mr. Bueno's employer, and later was awarded solely by Defendant.
  • The court was able to duck the issue of ownership, due to Defendant's assurance that it would stop using the name.