Wednesday, June 5, 2013

Easy money or true copyright infringement--Twisted Sister tale

"Little coffee shop runs afoul of ’80s rockers Twisted Sister"


Mike Hendricks

June 4th, 2013   

The Kansas City Star

On the rock line from New York City we have Jay Jay French, guitarist, founder and business manager of the ’80s heavy-metal band Twisted Sister.

Great to have you with us, Jay Jay. But first a program note to all the graying headbangers out there hoping to hear about the band’s summer touring schedule or what it’s been like working with front man Dee Snider all these years.

Not going to hear about that today.

Our focus, instead, is on trademark law — no, really — because it’s been French’s near-obsession for years to protect the band’s name from being used without permission by the likes of a coffee shop in Mission.

Tiny shop, that Twisted Sisters is, with duct tape spelling out the name because a regular sign is still on order.

Now, you might remember Twisted Sister’s monster 1984 hit “We’re Not Gonna Take It.” As it turns out, French really meant that when it comes to other businesses calling themselves Twisted Sister this or Twisted Sisters that.

He sics his lawyers on suspected infringers with regularity, from big corporations to mom-and-pop businesses coast to coast.

Stacks of stern warnings are sent out, he says. Just this week he got word that businesses have relinquished 24 Twisted Sister domain names in recent months under threat of legal action.

One recent recipient of such a cease-and-desist letter: the Johnson Drive java joint. And when word spread of that recently, French was called a bully by some in the blogosphere.

“Bogus” is how the editor of described the band’s tactics of trying to get businesses like Twisted Sisters Coffee Shop to change their names and surrender their Internet URLs to the band.

But far from apologizing, French says he has no choice but to be vigilant.

“I’m not a bad guy,” he says. It’s just that his lawyers tell him that the only way to protect a trademark is by defending it. Fail at that and the next thing you know your trademarked name becomes practically generic, like Xerox for copiers and Kleenex for nose wipes.

“Our basic premise is we’re a hard-working band protecting what is ours.”

Twisted who?

Twisted Sister the band has been around since 1973, and it trademarked the name four years later. In Mission, Sandi Russell and her younger sis, Nancy Hansen, opened for business last summer.

And honestly, Russell says, they had no notion that they might be violating federal trademark laws by naming their place the Twisted Sisters Coffee Shop.

Not until a letter from French’s attorney arrived in the mail back in March had they even heard of the rockers.

“I did not know who Twisted Sister were,” says Russell, who before opening the shop worked 20 years as operations manager at the Toy and Miniature Museum.

Instead, she says, the origin of the name goes back to the 1960s when their brother dubbed Sandi and Nancy his twisted sisters. Nancy was singled out as the “blonde tornado.”

You hear similar stories from other small-business owners who have been approached by the law firm representing French and Twisted Sister. Never heard of the band or thought they’d broken up years ago.

“My business partner didn’t know who the band was,” says Lisa Alexander, who started the Twisted Sister Bakery five years ago in Chicago.

Her partner simply liked the sound of the name. But soon after the bakery opened, French knew who Alexander was and had his lawyers make contact.

They regularly scour the Internet for domain names that include combinations of the words twisted, sister or some variation. But French also has friends who are the on lookout.

“My girlfriend’s brother saw it,” he says of the bakery’s sign in Chicago’s Old Town area.

Not wanting to spend a lot of money on legal fees, Alexander decided to change the name of her business to the Twisted Baker, even though she felt she would have won in court.

Indeed, she might have, says a trademark attorney who represented a now-defunct Clearwater, Fla., gift shop run by siblings who called their store Twisted Sisters Gift Gallery.

French sued lawyer Bill Larson’s clients in 2004, and his argument then was the same as it is now. The band’s trademark is limited to the entertainment field and not other areas of commerce.

Moreover, there could be no mistaking the gift shop with a hair band that used to cross-dress on stage, caked with makeup.

“There was very little likelihood for confusion,” Larson says, and “you have to have confusion” for a trademark holder to successfully prove infringement.

All the same, his clients settled rather than pile up legal fees arguing that point.

Others who’ve chosen to give up included a Boston-area pizza parlor that dropped “sister” and now goes by Twisted Pizza and Ice Cream. Last fall, a food truck in Minneapolis dropped the first two words of its original name, Twisted Sister House of Hunger.

But French is quick to point out that he doesn’t just press the issue with small companies unlikely to fight back. When an amusement park in Louisville, Ky., installed twin wooden roller coasters back in the 1990s called the Twisted Sisters, a three-year legal battle ensued. The owners of the now-mothballed Six Flags Kentucky Kingdom finally renamed the coasters the Twisted Twins.

‘Always settle’

After that, you’d think the word would have gotten out that Twisted Sister doesn’t fool around, but French says it’s been a constant battle. Google Twisted Sister, or its plural form, and business after business pops up. Balloon artists in San Antonio. Two sisters who were contestants on the Food Network’s Cupcake Wars.

A gift and card shop near the University of Kansas Hospital.

Those who haven’t gotten a letter from French will eventually, he says.

“They always settle,” he says. “Everybody eventually says, ‘Enough, we’ll stop using it,’ or I say we’ll license it for a nominal fee and I’ll donate the money to charity.”

That’s just what he’s offering to do in the case of the Twisted Sisters Coffee Shop in Mission. In exchange for $100 a year and signed legal papers in which Russell acknowledges her limited use of his trademark, the shop can keep its name, he says.

When Russell learned of the offer from a reporter on Tuesday, she was speechless at first.

Then minutes later she phoned back: “To whom do I write the check?”

Those details are yet to be worked out, French says, but ultimately the money will go to the Ocular Immunology and Uveitis Foundation, which helps people like his daughter who suffer from inflammatory eye diseases.

“I don’t care about making money on this thing,” he says. “I just want to do what’s right.”

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