What seemed like a simple change involving the Mint Jubilee Derby Eve gala has devolved into a legal battle pitting the event’s co-founders against the University of Louisville.
Today Chris Thieneman is filing a federal lawsuit in U.S. District Court charging the U of L Foundation and the Brown Cancer Center with federal trademark infringement, tortious interference with prospective business relations, and unfair competition.
It all seemed simple enough. Thieneman, owner of the Mint Jubilee trademark and co-founder of the 13-year-old Derby Eve gala, decided he didn’t want the University of Louisville’s Brown Cancer Center to be the designated charity for the event after a five-year licensing contract expired.
As we’ve reported, he sent U of L a letter asking it to sign off on allowing the licensing agreement to expire, since the agreement with the school didn’t end until just before next year’s event. U of L officials said, sure they’d sign it.
Thieneman wants next year’s event to benefit a charity operated by Norton Healthcare, which has a strained relationship with U of L thanks to a dispute over brain surgeons. But it also treats a lot of cancer patients, and it’s important to the Mint Jubilee co-founders (Chris, his brother Tom Thieneman and Hollywood producer Matt Battaglia) that the gala make money for cancer treatment.
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Now U of L is refusing to sign the agreement and, according to Thieneman, refusing to answer calls about the issue after it got a letter from a California legal entity retained by Battaglia specializing in trademark law. The law firm’s letter asked U of L to respond by today, May 22.
U of L, meanwhile, has continued to market and organize for its Julep Ball, the name it came up with to replace the event. U of L’s marketing materials, including a website, continues to include wording that’s objectionable to the founders, including the phrase “formerly the Mint Jubilee Gala” and several photos and references to the 2009 event as the Julep Ball.
On the night of this year’s Mint Jubilee, according to the lawsuit, a U of L representative announced that “as of tonight, The Mint Jubilee would no longer exist.”
Thieneman says the school is also using the Mint Jubilee trademark to secure long-term sponsors for its new event, and in the lawsuit claims the Julep Ball trademark that U of L is using is “likely to continue to cause confusion, mistakes and deception….”
The lawsuit asks for punitive damages and that the court prevent U of L from using the “Julep Ball” trademark or any similar name.
The U of L Committee has already met to get organized for the 2010 Julep Ball. It has a signed agreement with its primary sponsor, Southern Wine & Spirits, and presumably others.
Meanwhile, Lynnie Meyer, chief development officer of Norton’s Children’s Hospital Foundation, says her organization would love to jump in and help organize the 2010 Mint Jubilee — as soon as this business with U of L is settled.
The courts, however, are likely to intervene, which could put both evens in jeopardy, and cost both U of L and Thieneman a bundle in legal fees. Thieneman said today that he would prefer that money go toward a charitable cause rather than fighting the school over the trademark.
U of L spokesman Mark Hebert released this statement from U of L: “Now that this matter is tied up int he courts, the University of Louisville will have no comment other than through its attorneys.”