Since a consent agreement was entered into in 2003 regarding the use of images of the Kentucky Derby racetrack, Churchill Downs – owner of the KENTUCKY DERBY trademark – sued DerbyBox.com again.

DerbyBox specializes in ticket packages and accommodations for thoroughbred racing events throughout the year, some of which – including the Kentucky Derby – are run by Churchill Downs. The website also contains a disclaimer that it is not affiliated with the track, the race or any other event from its package tours. In promoting its packages, DerbyBox uses trademarks such as KENTUCKY DERBY to describe its travel packages. Churchill Downs objects to this.

The judge would have none of Churchill Downs’ arguments. In his decision, Judge Heyburn wrote, “The Court has no reason to believe that the website has changed significantly in its use of the Marks ‘Kentucky Derby’ and ‘Churchill Downs’ since January 6, 2003. It strains credulity to suggest that between the entry of the Consent Decree and early April 2007, Churchill Downs failed to review www.derbybox.com, especially considering Churchill Downs invested significant resources in the prior lawsuit against Defendants.”

I sometimes do not understand the position of businesses in this regard. DerbyBox is not competing with the Kentucky Derby. In fact, by selling his travel packages to tourists, he is selling tickets to the race. In selling tickets to the race, Churchill Downs is making money. Why would Churchill Downs object to this kind of use? Not only is the defendant selling entrances to the plaintiff’s event, he is also providing free advertising.

I could understand if the defendant were using the KENTUCKY DERBY to draw internet users to its web site and then offering tickets to another, competing event that Churchill Downs would object to this use. But the defendant was selling tickets tothe plaintiff’s own events.

Sometimes, I really think that trademark owners should think through possible infringement claims before moving forward. Unless I’m missing some crucial facts, this seems like an unreasonable course of action.

I’m still looking for the opinion.

Yet another example of trademark overreaching – in that case it involves the OSCAR mark.

This entry was posted on Friday, May 11th, 2007 at 3:21 am and is filed under Business of TMs, Descriptiveness, Fair Use, Infringement, Trademarks. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.