DAYTONA BIKE WEEK VICTORY

Originally posted by Buck Lovell on Saturday, 24 December 2011 in Buck Lovell’s – American Biker Blog

BIKE WEEK LEGAL BATTLE ENDS

By Clayton Park photo by Buck Lovell

DAYTONA BEACH — The Daytona Regional Chamber of Commerce has won its nearly yearlong legal battle to protect its right and that of local businesses to freely use the phrase “Daytona Beach Bike Week” on T-shirts and other goods. U.S. District Court Judge Mary Scriven on Tuesday ruled invalid a claim by Holly Hill-based Joe Cool Inc. and its two New York affiliates to have exclusive ownership rights to the name of Daytona Beach’s annual spring motorcycle rally, which began in 1939. That claim was based on Joe Cool owner Yosef Amar’s purchase in 2009 for $87.50 of a state trademark to the phrase Daytona Beach Bike Week. Late last year, Joe Cool’s affiliates — Consolidated Distributors Inc. and Mettemp Inc. — began circulating a letter to various Daytona Beach-area businesses threatening to “take all legal actions to protect its rights” against any that produced T-shirts and/or other merchandise bearing the Daytona Beach Bike Week name without agreeing to pay a royalty fee. The letter, which identified Joe Cool as Mettemp’s “licensee” — also suggested those actions could include seizing those goods, which it described as “counterfeit.” In February, the chamber and two businesses — Good Sports Daytona Inc. of Daytona Beach and Good Sports Inc. of Connecticut — filed a federal lawsuit against Amar and his New York affiliates, seeking cancellation of the trademark. Joe Cool and its affiliates filed a counterclaim in March not only against the Daytona Regional Chamber and the two Good Sports companies, but also against chamber CEO Larry McKinney, seeking monetary damages for interference in Joe Cool’s “contractual relationships, which total in the millions of dollars, including lost business and destruction of business reputation.” According to a copy of the countersuit obtained by The News-Journal, Joe Cool and its affiliates also sought a court injunction that would prevent the chamber from using the phrases “Daytona Bike Week” and “Daytona Beach Bike Week.” The chamber has been the official organizer of Bike Week since 1988, and was recognized for that role via a city resolution in 1995. On Tuesday, Judge Scriven issued a written ruling in which she wrote that Good Sports Inc. had been using the phrase Daytona Beach Bike Week on clothing since 1983 and that “innumerable” other vendors had done so many years before then. “Because the phrase ‘Daytona Beach Bike Week’ has been used by so many different entities over the past few decades, consumers do not associate the term or phrase with any one source and no one entity has any control over the use of the phrase,” Scriven wrote in ruling that the phrase Daytona Beach Bike Week and its functional equivalents are generic and cannot receive trademark protection.

Scriven also wrote that the chamber and the two Good Sports companies were entitled to permanent injunctive relief because “defendants Consolidated and Mettemp have made false allegations of trademark infringement with the intent to interfere wrongfully with, disrupt, and injure the business operations of (the) plaintiffs and other vendors in Florida by harassing vendors for royalty payments.”Attorney Heather Vargas of the Daytona Beach law firm Cobb Cole, who represented the chamber and the two Good Sports companies in the case, along with Cobb Cole attorney Kelly Parsons Kwiatek, said Amar agreed before Scriven’s ruling to withdraw his claim to the Bike Week trademark and to pay the chamber and Good Sports a financial settlement of an undisclosed amount to offset some court costs. Vargas said while “there’s always a potential for them (Mettemp and Consolidated) to appeal” Scriven’s ruling, she added that appeared unlikely because both defaulted the case. Vargas also said the wording of Scriven’s ruling was significant because it would apply to anyone else who might attempt to trademark the Bike Week phrase in the future. “We’re thrilled,” Vargas said.Jim Gallagher, co-owner of Mid-Florida Sportswear, the Daytona Beach company that has printed the chamber’s official 2012 Bike Week T-shirts and other apparel items, said the judge’s ruling was great news for the business community. Gallagher, who served on the chamber’s litigation committee in the case, said, “Everybody pulled together. We fought them. We dug our heels in and we prevailed. It was a good ending.” Kevin Kilian, the chamber’s chief operating officer, described Scriven’s ruling as “a nice Christmas present for the business community and for the people who are planning for Bike Week 2012,” which is scheduled March 9-18. Amar did not return a telephone call seeking comment. David Bakshet, an official with Consolidated and Mettemp in New York, declined to comment when reached by telephone Thursday morning, saying he would only respond to questions via email. By late Thursday afternoon, he had yet to respond to the News-Journal’s email inquiry.