Company Threatens Litigation Of Biblical Proportions To Protect Their “Jesus” Trademark
Just imagine every time you go to church and sing or pray Jesus’ name, mumble, “Jesus Christ” under your breath, exclaim, “Sweet Jesus” or the use Jesus’ name in variety of different curses that you could be slapped with an injunction for copyright infringement. Sound impossible? Not really.
An Italian company named Jesus Jeans, a subsidiary of Turin based BasicNet SpA owns the copyright to the name “Jesus” and they are not afraid to use litigation of biblical proportions to protect their investment in the name “Jesus”
According to the Wall Street Journal, “BasicNet first applied for a “Jesus” trademark registration in the U.S. in 1999, but it took another eight years for the trademark office to grant it. The Jesus Jean trademark covers clothing and sportswear, including jackets, vests, shirts, pants and belts.”
The Trademark office had initially opposed the trademark but Jesus Jeans argued that its fashion goods would not be confused with other trademarks that used the name of Jesus.
According to Domenico Sindico, the general counsel for intellectual property at BasicNet SpA, the company has met with resistance to trademark the name in other parts of the world. Turkey, Uzbekistan, Tajikistan and Kyrgyzstan have all rejected BasicNet’s trademark application. So did China, Switzerland, Australia, Norway and Cuba.
In 2003, BasicNet trademarked the name “Jesus” through the European Union as a “Community Trademark,” valid across the European Union in order to bypass the Britain’s patent office rejection of its application as “morally offensive to the public,”
Jesus Jeans was founded in the 1970s by Maurizio Vitale, an Italian entrepreneur, who as the story goes, was inspired during a trip to New York City when he walked by a theater marquee for the musical, “Jesus Christ Superstar,”
BasicNet acquired Jesus Jeans in the 1990s after Vitale’s death in 1987 when his heirs let the company which was known for it’s skimpy outfits, drove the company into bankruptcy.
Here in the U.S., BasicNet has been putting the clamps down on start ups by evangelical Christians who want to use the Jesus name on their apparel. Jesus Jeans has either sued or threatened to sue ”Jesus First,” “Sweet Jesus,” and “Jesus Couture,” among others, which abandoned their trademark efforts to avoid costly litigation from Jesus Jeans.
However, a David versus Goliath battle with BasicNet hasn’t seemed to deter Michael Julius Anton who came up with an idea for a clothing line that he thought was catchy, “Jesus Surfed” after organizing a spiritual beach retreat under the theme “walk on water.” He speculated that if Jesus were around today, he would be a surfer. So he registered jesussurfed.com and started selling bandannas, T-shirts, hoodies and bandannas with a silhouette of Jesus holding a giant surfboard under a palm grove.
Anton who bracing for a fight, he told the Wall Street Journal, “Jesus Jeans has absolutely nothing to do with anything biblical. I didn’t think it would be that big of a hassle.”
After Anton filed for the trademark, he learned a hard lesson in global commerce when he received a letter from an American attorney representing Jesus Jeans demanding that he abandon his application and agree not to use Jesus Surfed on clothes:
”If you agree to the foregoing proposal and comply with the proposal, then this matter will be amicably concluded. If you do not agree, then Jesus Jeans reserves its right to an accounting/damages and all other appropriate relief with respect to your trademark and trademark
It is unlikely that Jesus Jeans actually make a lawful claim to a monopoly on the name “Jesus.” As a federal judge explained in a decision against Walmart in Smith v. Wal-Mart. In this case, Walmart tried to claim trademark ownership to a yellow smiley face. Walmart also demanded Smith stop making and selling T-shirts, beer steins and other items that sport slogans such as “Wal-ocaust” and “Wal-Qaeda.”
Before BasicNet, can prevail on any of its infringement claims, like in Smith v. Walmart, it must establish that it in fact owns valid trademarks that Anton used in commerce without BasicNet’s consent. See 15 U.S.C. § 1125(c) & (d) (entitling only the owner of a mark to bring a claim for dilution by tarnishment or for cybersquatting); Lone Star Steakhouse & Saloon, Inc. v. Alpha, Inc., 43 F.3d 922, 930 (4th Cir. 1995) (in order to prevail on a trademark infringement or unfair competition claim, “a complainant must demonstrate that it has a valid, protectible trademark . . .”); Univ. of Ga. Athletic Ass’n v. Laite, 756 F.2d 1535, 1539 n. 11 (11th Cir. 1985) (noting that the test for deceptive trade practice and unfair competition under Georgia law is the same at the test for false designation of origin under the Lanham Act).
The judge also ruled trademarks would only apply if it is “associated in the minds of the public with the products or services offered by the proprietor of the mark.”