Lee vs. Viacom Raises Trademark Questions

What’s in a name?

If it’s a name like Spike, a lot of things: the showboating football move, the overhead smash in volleyball, the muscle-bound cartoon bulldog. Some of what’s in it comes from the late comic bandleader Spike Jones, a bit from movie director Spike Jonze (“Adaptation”), maybe even a little from shortstop Spike Owen, who played for the Angels and a string of other baseball teams during his journeyman career.

But to many people, including former Sen. Bill Bradley and actors Edward Norton and Ossie Davis, a lot of what’s in the name was put there by filmmaker Spike Lee.

Lee, the New York-based director of “Malcolm X,” “Do the Right Thing” and a host of other movies, is at present the only Spike suing Viacom Inc. for trying to relaunch its TNN cable TV channel as guy-oriented, attitude-fueled Spike TV.

So far, Lee is ahead on points: On the eve of the channel’s June 16 relaunch, he won a preliminary injunction barring Viacom from using the new name.

The network was forced to overhaul its promotional campaign -- at a cost, Viacom says, of several million dollars -- and revert to the wimpier moniker “the New TNN.”

Trademark infringement lawsuits are filed by the dozens every day across the country, and legal experts don’t think Lee’s case is likely to set any powerful precedents. Still, a lone celebrity -- with a legal team headed by celebrity lawyer Johnnie L. Cochran Jr. -- has, at least for now, managed to frustrate an entertainment colossus.

Not that there hasn’t been some price to pay. Lee has been pelted with verbal tomatoes for what some consider a fatheaded attempt to monopolize a word that appears in every dictionary and countless times in the phone book. (A search of the Internet white pages, for instance, turns up no fewer than two Spike Johnsons, three Spike Smiths and 15 Spike Joneses.)

“I find it frightening that a court would allow Spike Lee to acquire an exclusive (and free) ownership interest in the name ‘Spike’ in the television and entertainment field,” Spike Jones Jr., the bandleader’s son, said in an affidavit.

The suit, Jones added, seems to violate the kind of artistic freedom of expression that he would have expected Lee to champion.

In a more pointed blast, the author of a June 18 letter to the editor of Variety found it odd that Lee “didn’t complain before, when they named a TV show after him: ‘Jackass.’ ”

Lee has heard the gibes and the late show one-liners. He sounded frustrated during a telephone interview last week in Los Angeles, where he is working on a TV pilot.

“The pundits have been saying this is about my being an egomaniac, but really, it’s always been about an artist trying to protect his reputation,” said Lee, whose real name is Shelton Jackson Lee but who at an early age was dubbed Spike by his mother.

The 46-year-old filmmaker will have a chance to demonstrate his seriousness of purpose today, when he faces a deadline to put up an additional $2-million bond -- for a total of $2.5 million -- required by the presiding judge, Walter Tolub of New York Supreme Court in Manhattan.

If he loses his case and Viacom can prove damages, Lee could forfeit the whole bundle -- and then some. Viacom has estimated its losses at $17 million and counting.

The media giant insists that Lee’s case is “an extreme overreach.”

In a legal reply to his complaint, the company says: “He simply ignores the existence of the common meanings of the word ‘spike’; the existence of numerous other well-known ‘Spikes’ in the entertainment world ... and the widespread use of ‘Spike’ as a first name generally; all of which militate against any logical conclusion that Lee is ‘clearly’ identifiable as the ‘Spike’ in Spike TV.”

Lee declined to answer specific questions about the suit, but his legal complaint and statements filed with the court provide some clues to his objections. For one thing, he said, nobody from Viacom asked his permission to use the name Spike.

If it goes to trial, the case could turn on concepts such as “blurring” and “tarnishment,” experts said.

The moviemaker enlisted Bradley, Norton and Davis, among other prominent people, to attest that when they first heard about brash, irreverent, edgy Spike TV, they assumed that their friend Spike Lee must be involved. The confusion created by the network has thus “blurred” Lee’s reputation in the public’s mind, his lawyers may argue.

And what about “tarnishment”? Wouldn’t Lee welcome being associated -- even mistakenly -- with something as cool as a TV channel for real guys?

Not necessarily. One of his lawyers, Jonathan W. Lubell, noted that one of the network’s highly promoted new offerings is “Stripperella,” a cartoon about a stripper superhero voiced by Pamela Anderson, the former “Baywatch” star. Lubell suggested that his client has no interest in being connected with something so tawdry.

A potential weakness of Lee’s case is that the network uses only the name Spike without a surname.

“Defendants correctly point out that there are no reported cases in New York in which a celebrity’s first name, standing alone, without some other indicia of his or her persona, has received the protection of law that Mr. Lee seeks here,” Judge Tolub wrote in granting the injunction.

But it isn’t out of the question. In a legal action years ago, for example, former “Tonight Show” star Johnny Carson successfully halted sales of a portable toilet christened “Here’s Johnny!”

That was an easier case for Carson, because he had taken the trouble to trademark that famous phrase, said Q. Todd Dickinson, a Washington-based intellectual-property lawyer and former director of the U.S. Patent and Trademark Office.

Spike Lee vs. Viacom probably would play out as an “evidentiary contest,” in which each side would trot out expert witnesses and statistics from consumer surveys to rebut the other side’s experts and surveys, Dickinson said.

Viacom, while acknowledging that the injunction was a setback, could claim at least a partial victory when Tolub raised Lee’s bond to $2.5 million from $500,000 and scheduled a relatively quick trial date of Aug. 18. Moreover, Tolub ruled that it will be a nonjury trial, which would deprive Cochran of the kind of audience he has proved himself adept at wooing.

With Lee’s $2.5 million at risk and the network presumably anxious for a quick resolution, a settlement is always a possibility. In fact, the two sides held extensive settlement talks from May 22 through May 29 without coming to an agreement, Lubell said in his affidavit.

Lee, in the telephone interview, hinted that something was “going to happen in a few days.” He declined to elaborate.

If things don’t work out between Spike Lee and Spike TV, the network isn’t without a fallback position.

TNN President Alan “Albie” Hecht said in an affidavit that a number of other names also were under consideration, including Guy, Jack, Rick, Dave, Bob, Joe and, yes, Randy.