The 2014 film “St. Vincent” used a horse-racing broadcaster’s trademark catchphrase as a line for actor Bill Murray without the broadcaster’s permission, a new lawsuit alleges.
Plaintiff Dave Johnson claims that Murray saying “And down the stretch they come!” would confuse consumers into thinking he endorsed its use in the film and would dilute a trademark he first used in the 1960s. The March 20 complaint, filed in the U.S. District Court for the Southern District of New York. names production companies including Chernin Entertainment, The Weinstein Company LLC and Lantern Capital Partners LP as defendants.
The case will test the bounds of trademark protection of purportedly famous phrases. Registering a phrase doesn’t give trademark owners exclusive rights but allows them to block commercial use of it as an identifier of the source of a product in a category of products in a way that could confuse consumers.
Johnson registered “And down the stretch they come” with the U.S. Patent and Trademark Office in 2012 for “entertainment services, namely, participation in announcing and calling horse races for others.”
He stressed in his complaint the “quality and artistry unique to legendary broadcaster Dave Johnson” and said Murray’s line “clearly imitates Dave Johnson and creates an association with the phrase’s celebrity creator.”
The filmmakers’ use of a “confusingly similar” trademark is “in connection with goods and services that are competitive with and are closely related to Dave Johnson’s goods and services,” Johnson said in his lawsuit. The defendants used the mark knowing of Johnson’s rights, and claims Johnson is entitled to punitive damages, he alleged.
Johnson also alleges trademark dilution, which can stretch across different categories of goods and does not require consumer confusion. Dilution claims require the trademark to be widely recognized by the general public as a designation of a source of goods or services.
Andrew J. Mollica represents Johnson.
The case is Johnson v. The Chernin Group LLC et al., S.D.N.Y., No. 19-2485, Complaint 3/20/19