In a decision which provides a whole new meaning to the phrase “going to the ‘john’”, the John W. Carson Foundation (Foundation) has successfully opposed registration of Johnny Carson’s famous phrase “HERE’S JOHNNY” as a trade mark of portable toilets (proposed mark). This decision has come about more than 30 years after the same toilet manufacturer first attempted to register the proposed mark.
Mr Braxton (the owner and president of the present applicant, Toilets.com Inc) first tried to register the proposed mark in 1976 when he was owner and president of Here’s Johnny Portable Toilets Inc. That original application was unsuccessful when Carson successfully sought:
- A Court order that Here’s Johnny Portable Toilets Inc’s use of the mark in connection with portable toilets violated Carson’s right of publicity in the phrase “HERE’S JOHNNY”;
- A permanent injunction enjoining a range of people connected to Here’s Johnny Portable Toilets Inc (eg: agents, servants, employees) from using the phrase “HERE’S JOHNNY” in certain ways (eg: advertising, promotion or otherwise furnishing goods); and
- A Board decision refusing Here’s Johnny Portable Toilets Inc’s registration of the proposed mark.
In the present case, the US Trademark Trial and Appeal Board (Board) found that registration of the proposed mark by Toilets.com Inc was barred on the basis of res judicata. The Board also found that the permanent injunction prevented Toilets.com Inc from making use of the proposed mark in commerce. The Foundation’s opposition was therefore sustained, and registration of the proposed mark refused.
One of the more interesting aspects of this decision was the Board’s consideration of whether or not Carson’s right of publicity (which was assigned to the Foundation) in the phrase “HERE’S JOHNNY” had survived Carson’s death. It was found that it had because the jurisdictions in which the permanent injunction was granted, where Toilet.com Inc’s business operated, and where Carson had lived, recognised a post-mortem right to publicity.
Note that Australian law does not recognise a “right to publicity” per se, however a person may rely on other means, for example defamation law or Trade Practices law, to prevent misuse of their persona.
