Monk Estate Not So Jazzed, Files Trademark Infringement Suit

In a blow to beer drinkers who appreciate North Coast Brewing Co.'s "Brother Theolonius" Belgian Style Abbey Ale (this author included), the estate of jazz legend Theolonius Monk filed a complaint against the microbrewery on August 29, 2017 alleging trademark infringement and violation of publicity rights. The allegations apparently stem from the brewery's continued use of the jazz great's name and likeness after the estate revoked its grant of licensing rights in 2016.

What the Complaint Says

According to the complaint, the original grant of rights was verbal, was limited to the ale, and was given "in exchange for North Coast's agreement to donate a portion of the profits...to the Theolonius Monk Institute of Jazz."  However, the estate revoked the verbal license on January 11, 2016 after finding out that the brewery was selling all manner of unrelated goods, including t-shirts, cups, soap, and mouse pads (really, soap and mouse pads??). Despite receiving a cease and desist letter giving notice that a merchandising agreement would now be necessary to continue using Monk's name and likeness, the brewery has allegedly continued doing so without entering into a new agreement as demanded.

Scope of Verbal License in Question?

The complaint does not say when the agreement was entered into, but according to the North Coast website, the ale was released "in 2006." Another interesting fact: the website says that over $1 million "from proceeds of the sale of the beer and gear" (emphasis added) has been donated, which raises an issue of whether use of Monk's name and likeness on products other than ale was either understood by North Coast to be part of the original grant, or at least acquiesced to by the estate. These issues will most likely be spelled out in the brewery's response to the complaint, as well as whether any accounting records exist showing the sources for all money donated under the verbal agreement.

The entire affair smells like a misunderstanding, and highlights the reason why verbal licensing agreements are loathed and discouraged by competent IP counsel. The beer, wine, and liquor industry is a crowded field where unique trademarks are at a premium, as recent trademark spats between breweries demonstrate. This author sincerely hopes that the parties come to an understanding short of a complete rebranding, so beer drinkers may continue to get jazzed over a pint of this exceptional brew.

Public domain photo by William P. Gottlieb of Thelonious Monk at Minton's Playhouse, New York, ca. September 1947.

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