The Blue Note & Rose Blog

The Name Game: Lawsuit Edition

The Blue Note Columbia vs. The Blue Note New York 

Richard King and The Blue Note were involved in one of the early influential lawsuits regarding the internet and cyberlaw in 1997.

It asked the eternal question: Just how much Blue Note is too much Blue Note for our world to handle?

What’s the interweb?
A year before the lawsuit, an employee named Eric Lomo came to Richard with a radical idea of joining something people were calling the “World Wide Web.”

Richard was skeptical. “Jesus Christ,” he told Eric. “Get out of here with that stuff! What is that?”

Eric explained that people were pretty excited about websites. For The Blue Note, a website could be revolutionary. Fans and audiences could have access to calendars and show info — not to mention advanced tickets.

Richard liked the idea, and he trusted Eric, whom he still calls “such a smart guy.” So Eric began designing the venue’s website.

Eric, being a smart dude, went about registering several domain names: “thebluenote,” “theblue-note,” and “blue-note.”

As the internet changed the way the world operated in the 1990s, The Blue Note also underwent a drastic change with its website. The venue didn’t have to rely on posters and word-of-mouth to sell tickets anymore, and suddenly finding out about new music, bands and sounds was easier than ever for fans.

The Blue Note in New York

Wikimedia Commons / Frederic Germay

Wikimedia Commons / Frederic Germay

After a year of the website’s operation, another Blue Note entered the mix. This venue, the Blue Note Jazz Club, was in New York City, and Richard had been in a legal tangle with it before.

Several years earlier, in 1993, The Blue Note in Columbia received a cease and desist order from The Blue Note in New York, which claimed ownership of the name “The Blue Note.”

Fortunately, Richard had registered the name in 1980 in the state of Missouri. The Blue Note in NYC hadn’t registered until 1984, so Columbia’s club was safe. Cue the sigh of relief.

However, internet ownership was a whole different ball game. The laws were being written around events as they happened, and no one was sure what the web would mean for the world, the law and business.

About a year into the website’s life, The Blue Note was slapped with another legal battle from its New York counterpoint.

Bensusan Restaurant Corp. v. King
The Blue Note New York claimed that The Blue Note Columbia was illegally advertising in New York because Columbia’s website, of course, reached New York City residents — or anyone with access to the internet.

The suit, Bensusan Restaurant Corp. v. King, was brought up in the District Court for the Southern District of New York. The claims against Richard were trademark infringement, trademark dilution and unfair competition.

It was a problem of jurisdiction. New York state had a long-arm statute that could loop Columbia’s club into its own legal arena, even though Columbia’s Blue Note was a locally based company with a geographically small audience that doesn’t extend to New York City.

Plus, the internet was a hazy jumble of unknown ownership and advertising rights.

Before the lawsuit, Columbia Blue Note’s website had this disclaimer on it: “The Blue Note, Columbia, Missouri should not be confused in any way, shape, or form with Blue Note Records or the jazz club, Blue Note, located in New York. The CyberSpot is created to provide information for Columbia, Missouri area individuals only, any other assumptions are purely coincidental”

It wasn’t enough to protect the website’s operation once the claims were leveled. Columbia’s website, thebluenote.com, was pulled from its cyber existence, potentially leaving the venue without a functioning web calendar and ability to sell advanced tickets. That domain name was forced into what Richard calls “internet limbo.”

Richard laughs delightedly when he tells how they were able to finagle their way out of a standstill. He explains: “But Eric Lomo being the smart guy that he is, pulled up theblue-note.com and put us right back up. We didn’t skip a beat.

“Man, it really pissed them off.” He smiles.

Chick Corea Elektric Band performing at the Blue Note Jazz Club. Wikimedia Commons / Jesse Merz

Chick Corea Elektric Band performing at the Blue Note Jazz Club. Wikimedia Commons / Jesse Merz

The Blue Note Columbia got another lucky break as the lawsuit progressed. They found out that their insurance was required to cover the lawsuit. For Richard, who says he has “always hated spending so much money on insurance,” this was excellent news.

The insurance company was responsible for hiring lawyers, and it didn’t cut corners. Soon, The Blue Note in Columbia had one of the top 10 law firms in the world working on their behalf: Simpson, Thatcher & Bartlet.

“It was incredible how many lawyers they had on the case,” Richard remembers. “It was getting into 93 or 94.”

The day before the case went to trail, Richard spoke with whom he calls “the King Bee lawyer” on the case.

“I asked him, ‘What do you think? Are we gonna win?’ And he told me, ‘We’re gonna win, don’t worry. This is easy.’ He was very arrogant.” Richard says. “But then he said something I’ll never forget. He said, ‘But if I was working for them, I’d kick your ass.’”

The day of the trial, the sign on the docket outside the door read, “The Blue Note vs. The Blue Note.” Richard had a friend attending law school in New York who went to sit in on the hearing. That friend stole the sign and ended up mailing it to Richard.

The room was packed with lawyers interested in the case, and three federal judges presided.

It took six months for the judges to come back with a ruling, but they ruled in favor of The Blue Note in Columbia. Of course, Bensusan Restaurant Corp. appealed the case.

It took another several months, but the Second Circuit for the US court of Appeals upheld the original decision, ruling in Columbia’s favor yet again.

And the world took notice.

The Blue Note goes viral — 1997-style
“I had people calling me from all over the country,” Richard remembers. Newspapers like The New York Times, LA Times, the Wall Street Journal and the Chicago Tribune wrote about it. The case became a staple in law books and classes.

An April 14, 1997, article from The New York Times says: “The clash of the dueling Blue Notes has become a test case for an issue now being debated by lawyers, academicians, legislators and regulators in the United States and from Germany to Malaysia: Whether a person or business on the Internet falls under the laws of some, all or any of the jurisdictions from which that Internet site can be reached.”

In a Chicago Tribune article from that time, Bensuan promised to find another way to sue. But the only options left for him and his Blue Note were to change legal venues to Missouri or take the case to the Supreme Court.

Richard says he received offers from lawyers all across the country — from Missouri to New York and in between — to help him if further charges were brought.

“They were all Mizzou graduates, and they all remember coming to shows at The Blue Note, he says, “They wanted to help the venue they loved.”

Advertisements

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s