Pryor Cashman Obtains Summary Judgment for Friars Club Against Friars of Beverly Hills
Pryor Cashman obtained summary judgment for its client, The Friars Club, in a Lanham Act and Anti-Dilution lawsuit which it filed against Defendants 9900 Santa Monica, Inc. and Darren Schaeffer in the U.S. District Court for 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, Frank Sinatra and Elizabeth Taylor, claimed that 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.
Pryor Cashman Litigation partners Jamie M. Brickell and Frank P. Scibilia moved for summary judgment against Defendants, arguing that the Friars of Beverly Hills was not a successor to the Friars Club of California, that Defendants were intentionally infringing upon Plaintiff’s mark, and that the evidence – including newspaper articles and websites (and its own membership) inaccurately identifying the Friars of Beverly Hills as “The Friars Club” – indisputably showed that Defendants were using The Friars Club’s fame for its own advantage.
In a decision dated September 4, 2007, the Court agreed, finding that the name “Friars” was not transferable from the Friars Club of California to Defendants, 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.” Holding that “the only difference between ‘Friars’ and ‘Friars of Beverly Hills’ is the geographic designation ‘of Beverly Hills,’” the Court concluded that Defendants “may not evade trademark law by adopting” the Friars Club name and then “adding a geographic reference to try and distinguish its name.” The Court also relied on the fact that 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” in concluding that Defendants “intended to capitalize on the ‘Friars’ name by emulating it in every aspect.”
“In short,” as 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.”
To read the decision in its entirety, please click here.
The New York Times featured an article about the case on October 3, 2007. To read that article, please click here.
