Las Vegas Sun

September 19, 2017

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Judge says phrase ‘The Rat Pack’ can’t be trademarked

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Las Vegas News Bureau

All five members of the Rat Pack, from left, Peter Lawford, Frank Sinatra, Dean Martin, Sammy Davis Jr. and Joey Bishop, perform at the Sands Hotel in Las Vegas, Jan. 20, 1960. Their gigs were often improvised and when one member of the Rat Pack was scheduled to give a performance, other members would show up for an impromptu show.

Click to enlarge photo

A postcard shows the Rat Pack (from left Frank Sinatra, Dean Martin, Sammy Davis Jr., Peter Lawford and Joey Bishop) posing in front of a Sands Hotel marquee bearing their names. Their performances at the Sands during the 60s marked the golden age of the group.

The phrase “The Rat Pack,” referring to tribute shows to Frank Sinatra and his pals, is generic and isn’t subject to trademark protection, a Nevada federal judge has ruled.

Ruling in a lawsuit pitting competing Rat Pack tribute show producers against each other, U.S. District Court Judge Lloyd George found Monday that one of the shows “cannot appropriate the term ‘The Rat Pack’ for its exclusive use.”

The ruling came in a case filed in May 2008 by TRP Entertainment LLC of Las Vegas against BC Entertainment Inc. of Las Vegas and BC President Barrie Cunningham.

TRP has been producing a Rat Pack show at the Plaza in downtown Las Vegas.

Cunningham says on his Web site he has produced a Rat Pack show and shows such as Superstars of Country and Superstars Live in Concert; and that he is an entertainer known for his tributes to Neil Diamond, Jimmy Buffett and Neil Young.

“As the term ‘The Rat Pack’ is generic in the context of live shows about or in tribute to members of the Rat Pack, TRP does not have an exclusive right to use the term ‘The Rat Pack,’” the judge wrote in his ruling granting partial summary judgment in favor of Cunningham.

But factual issues remain over the competing shows’ use of other identifying marks, and George ordered the case to proceed so they could be resolved.

The judge wrote that TRP alleges it has a protected mark in the phrase “The Tribute to Frank, Sammy, Joey, and Dean.”

Cunningham argues the tribute phrase he uses is generic, George wrote. Cunningham’s phrase is, “A Tribute to Frank, Dean, and Sammy,” the ruling said.

TRP asserted in its lawsuit that since May 2002 it has been conducting Rat Pack tribute shows and that the defendants had been infringing on its trademarks.

In response, attorneys for Cunningham said the phrase “Rat Pack” is a generic term created by the media — not the Rat Pack entertainers — and that it’s used by numerous tribute shows around the country and in Canada and the United Kingdom.

“It is a bedrock principle of trademark law that no person may acquire the exclusive right to the use of a term by which the covered goods or services are designated in the language. Such a term is ‘generic.’ Generic terms are not eligible for protection as trademarks; everyone may use them to refer to the goods they designate,” Cunningham’s attorneys said in a court filing. “This rule protects the interest of the consuming public in understanding the nature of goods offered for sale, as well as a fair marketplace among competitors by ensuring that every provider may refer to his goods as what they are.”

Cunningham’s filing said the phrase “Rat Pack” answers the question, “what are you?”

To be covered by a trademark, additional questions must be answered such as “who are you?” and “where do you come from?” and “who vouches for you?” the attorneys said.

“The term ‘The Rat Pack,’ through its popular use by the mainstream media as well as on many books, CDs, movies and documentaries, is recognized by the public as a generic reference to the Rat Pack members. The evidence clearly shows that the term ‘The Rat Pack’ is a generic phrase that is part of the public domain and free for all persons to use when it serves as a reference to the Rat Pack members,” Cunningham’s attorneys said in their filing.

George, in his ruling, also cited the “what” and “who questions.”

“TRP’s own common-law mark indicates that it adopted the term ‘The Rat Pack’ to draw upon consumers’ association of the term with the Rat Pack. In the context of live shows, ‘The Rat Pack’ standing alone, answers only the question ‘What?’ not ‘Who?’ ‘The Rat Pack’ is not a reference to TRP’s show, but a reference indicating that the live musical show concerns or is about the Rat Pack,” the judge wrote in his ruling.

Ryan Gile, a Las Vegas attorney with the firm Weide & Miller Ltd. who publishes a blog on patents, trademarks and copyrights, was initially involved in the case but later withdrew.

He said Thursday that George’s ruling is significant in that this is the first time the phrase “The Rat Pack” has been found to be generic in relation to tribute shows and that TRP will now have to add a disclaimer about it being generic to its trademark registration.

This isn’t the only lawsuit pending over Rat Pack tribute shows in Las Vegas.

Also on Monday, TRP Entertainment sued Sandy Zane Hackett, who along with Richard Feeney and Arthur Petrie founded TRP in 2002.

The lawsuit says TRP owns another trademark, “The Rat Pack Is Back,” and has performed tribute shows internationally and throughout the United States, most recently at the Plaza.

The suit says that in 2005, Hackett secretly filed a copyright application for a work titled “The Tribute To Frank, Sammy, Joey, and Dean” with an alternate title “The Rat Pack returns in the tribute to Frank, Sammy, Joey & Dean.”

Feeney and Petrie later bought out Hackett’s interest in the company for $40,000, and Hackett became an employee for the show, the lawsuit says. Hackett, son of comedian Buddy Hackett, had been performing as Joey Bishop.

Later, because of disputes, Hackett was fired from the show Sept. 9, the lawsuit says. It says Hackett’s attorney the next day sent a letter to TRP asserting Hackett’s sole ownership of the copyright in the show, demanding TRP cease production of the show and threatening litigation.

The lawsuit asks the court to declare TRP has a “continued right to produce the show free and clear of interference or harassment by Hackett and without any obligation or liability to Hackett, under copyright law or otherwise.”

Hackett has not yet responded to the lawsuit.

His attorney, Howard King, said in the Sept. 10 letter to Feeney and Petrie that Hackett is the “creator and author of the play that forms the basis of the” Rat Pack show at issue.

“Your actions to deprive Sandy of the fruits of his labor and creations, as well as your wrongful termination of his role in the production, are unjustified, unwarranted and unsupported by facts or legal authority,” King wrote in the letter, which was attached to the lawsuit as an exhibit.

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