Right of Publicity Trademarks

And Down The Stretch They Come! Was Infringed, Says Sportscaster Dave Johnson

And down the stretch they come! It is a popular saying in horse racing, which was popularized by sportscaster and longtime ABC, CBS, ESPN and NBC voice Dave Johnson. It is also a phrase that is now the subject of a trademark infringement lawsuit pending in the U.S. District Court for the Southern District of New York.

Johnson has filed a Complaint against a variety of defendants, including The Weinstein Company, for using his trademarked phrase, which he says he has exploited for commercial gain for decades, without his consent. Some of that commercial gain came from selling merchandise that bears the trademarked signature phrase.

He says that TV networks and racetracks even compensate him for their use of his voice in association with “and down the stretch they come.” Yet, the defendants did not feel the need to do so when they used it in a movie called St. Vincent. Therein, actor Bill Murray exclaims the phrase in the context of a race and, as Johnson states, in a clear attempt to imitate the trademark registrant.

Johnson also seeks relief based on a claim that the defendants violated his right of publicity under New York law by misappropriating the phrase, which he says is inextricably linked to his celebrity persona, likeness, identity and voice.

This case is particularly interesting to me, since Heitner Legal assisted another popular sports voice — Bill Raftery — with the registration of trademarks attached to his own popularized phrases “ONIONS” and “WITH A KISS.” Like Johnson, Raftery has developed a line of apparel in conjunction with the marks and continued to use the marks when he is on television, commentating primarily on college basketball games including those about to take place during the NCAA Tournament.

While we are unaware of any infringing uses of Raftery’s registrations, the conclusion of Johnson’s case could shed light on the extent of our options should a violation of Raftery’s rights occur in the future.