When German immigrant and jazz fan Alfred Lion started the Blue Note record label in 1939, he may never have envisioned the name’s future cachet. And even if he had, he certainly couldn’t have imagined “Blue Note” would one day inspire some serious legal wrangling around the country — and even in cyberspace.
Between 1939 and the day it ceased operating in 1981, the Blue Note label was a home for jazz legends like Thelonious Monk, Dexter Gordon and Herbie Hancock. As a result, “Blue Note” became synonymous with quality, integrity and a cutting-edge hipness. Popular demand actually led to the label’s reactivation in 1985.
Not surprisingly, many music-related businesses have tried to tap into that cachet by incorporating “Blue Note” into the name of their operations, and “Blue Note” music venues have sprung up all across the country, from New York to Florida to Chicago. But as music clubs here and elsewhere have learned, “Blue Note” is now strictly off-limits.
In 1992, local entrepreneur Nick Novich and a group of investors purchased a bar in Bucktown, which they began remodeling, giving it a “late-night jazz atmosphere” and stocking the jukebox with jazz classics. Novich says he always liked the name Blue Note, so that’s what he called the new venue.
In September of last year, Novich moved the Blue Note to its present, larger location on Milwaukee Avenue, just south of North Avenue, because he wanted to begin presenting live jazz. That was when the letters began arriving.
“One day, I got a letter from some attorneys in New York representing the restaurant group that owns the Blue Note club there,” recalls Novich. “They were threatening to sue me if I continued using the name Blue Note for my club. Apparently the owners of the Blue Note in New York registered the name as a trademark in 1985.”
Novich says he considered fighting the order. Ultimately, however, he decided litigation would be too time-consuming and expensive.
“Also, since we had just moved to a new location and were now going to have live music, I decided that if I had to change the name at some point, now was the time to do it,” says Novich, whose club is now called simply The Note.
As it turned out, Novich wasn’t the only local club owner on the New York Blue Note’s trademark infringement hit list.
The Palatine case
In 1993, Joe Barrutia opened his Cabana Beach Club on Rand Road in Palatine, where he featured live blues and Cajun music. He renamed the club the Chicago Blue Note in March 1996.
“Two or three months later I received a letter from a New York law firm telling me I had to stop calling my business the Blue Note Jazz Cafe,” says Barrutia. “Since the name of my club was Chicago Blue Note, and it wasn’t a jazz place, I didn’t respond. Then they sent me another notice registered mail.”
After some fruitless legal negotiation, the Chicago Blue Note recently changed its name — again — to the Beale Street Blues Cafe. Barrutia acknowledges he isn’t happy about the change, but says it hasn’t hurt business. He’s also somewhat sympathetic to the New York Blue Note’s concerns.
“They’ve gone to the bother of registering the name, paying for it every year and maintaining it,” he says. “If they feel that strongly about their name, then they need to protect it. I think they have ideas about expanding in this country, so I think they’re trying to keep the market open.”
As it turns out, Barrutia’s last assumption is correct.
“Chicago is a market we’d probably love to explore,” says New York Blue Note co-owner Steven Bensusan. “And when there were two clubs with the name Blue Note in Chicago, we felt we had to go after them.”
The two Chicago clubs weren’t alone. Bensusan says his organization is on a continuous search for other Blue Notes around the country; it has successfully fought club owners in South Carolina, Florida and Pennsylvania.
The New York Blue Note club, which opened 16 years ago and regularly books high-profile jazz, R&B and Latin performers, has branched out overseas with three venues in Japan and is in the process of opening venues in Seoul and San Francisco.
But Bensusan says his campaign to change the names of other Blue Note clubs isn’t just a matter of keeping potential markets free of competitors.
“We can’t allow other clubs to infringe our trademark if we’re going to maintain our reputation with the general public,” he says. “There really was confusion between the Chicago Blue Notes and our club. A lot of our customers are tourists, and when they go to Chicago and see the name Blue Note, they think that there’s some kind of association.”
While Bensusan is quick to cite all the locations where he has forced venues to change their names, he fails to mention Columbia, Mo. For it is there that his organization has run into a wall.
Richard King opened his Blue Note club in Columbia on Aug. 1, 1980. Since then, it has become a popular spot with the city’s large college student population by presenting rock acts like John Hiatt, Primus and Veruca Salt. Although jazz acts aren’t generally booked by the club, that didn’t stop the New York Blue Note from demanding a name change.
“The first contact I had with those guys was in 1993,” recalls King. “They sent me a letter asking me to cease and desist functioning as a club called the Blue Note. I was stunned.”
King says his attorney determined that because King had opened his club before Bensusan and his partners had registered the name, he was legally entitled to use the name as long as he kept the club open.
“My attorney then wrote back to the Blue Note in New York informing them that I was entitled to use the name and asked them never to bother me again about it,” says King. “And I never did hear from them again. On that issue.”
A new wrinkle
As King would soon discover, however, his tangles with New York were not over. The club’s owners opened another line of attack — in cyberspace.
“A year or two later, I received a letter from them telling me that my Web page `The Blue Note’ was violating interstate trade laws, and if I didn’t stop using that name for it, they would sue me,” says King. “Again, I turned it over to my attorney.”
Legal experts eventually reached the opinion that King was within the law to use his club’s name on the Web page, but they recommended he concede the case because the legal expenses required to defend it would be prohibitively high. Two days later, before King had even responded to the initial request, the New York Blue Note slapped him with a $1 million lawsuit.
A personal friend of King’s, who was also an attorney, reviewed the case and advised him to contest it. In September 1996, a judge in the U.S. District Court of Manhattan threw it out, citing lack of jurisdiction. Undaunted, the New York Blue Note’s attorneys took the case to the 2nd Circuit Court of Appeals in New York, which eventually affirmed the lower court’s action.
That left two avenues open to the New York Blue Note: take the case to the Supreme Court or sue King in his home state.
“It looks like we’re going to go to Missouri,” Bensusan says.
By the way, he adds, New York has not conceded that the Columbia club has an undisputed legal right to the name Blue Note.
“My lawyers are researching that now,” he says. “If there is the opportunity for us to do something regarding the club’s name, we will.”
