MUSKOGEE — It’s “Girls Gone Wine” versus “Girls Gone Wild.”
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That’s w-i-n-e, as in the drink.
The three women with the clever name for their wine-selling business have sued the makers of those racy DVDs of stripping co-eds.
At issue is whether the women can keep their already trademarked name. The women are asking a federal judge in Muskogee to decide.
“We will crush them,” said “Girls Gone Wild” founder Joe Francis.
“This is blatant trademark infringement,” he told The Oklahoman. “It just backs up everything that people have tried to do to me over the last few years to take advantage of me and we’re tired of it.”
Francis, 34, a millionaire, spoke by phone from jail in Reno, Nev., where he is awaiting trial on a tax-evasion charge. He also is facing criminal charges in Florida of use of minors in a sexual performance and conspiracy to use minors in a sexual performance. “This is a nightmare,” he said.
He became wealthy by selling his “Girls Gone Wild” videos for almost a decade. His company is called Mantra Films Inc.
The videos, and now DVDs, show predominantly college-age women raising their tops and otherwise exposing themselves, often at spring break locations.
On the other side of the lawsuit are the three women who call their partnership “Shady Ladies” because they once considered investing in sun glasses stock.
They operate their “Girls Gone Wine” winery near Broken Bow, in a corner of Oklahoma popular with tourists.
The women went to federal court after getting a letter in July from a Mantra Films attorney demanding they “immediately cease and desist any and all use” of the winery’s name. The letter explained Mantra Films was prepared to take legal action if the women kept using the name.
The women struck first, so the issue could be resolved in court in Oklahoma rather than California.
‘We’re here to stay’
“It always makes your gut clinch when you get that kind of thing,” said owner Michelle Finch. “We’re hopeful that it will all work out. If not, we’ll just deal with that, too, if it ever comes. ... We’re here. We’re here to stay.”
She said “Girls Gone Wine” just kind of stuck because it sounded fun. The trademark was officially registered in February.
Finch, 44, said she doesn’t think anyone would confuse their business with the DVD-selling business.
“We certainly hope we never are. We don’t get people walking in the door looking for anything but wine,” she said.
The women’s attorney, Martin Ozinga of Oklahoma City, is confident they will succeed in court.
Ozinga said, “The United States Patent and Trademark Office has already said, ‘There’s no issue here. They can co-exist.’ ”
The company behind “Girls Gone Wild” has had to deal with this before, all over the world, said its general counsel, Michael Burke.
“It happens all the time,” Burke said. “Mantra Films has spent several hundred million dollars over the last 10 years advertising its name endlessly on television to build up the image that ‘Girls Gone Wild’ is a fun, party environment and these women are taking a free ride on all that advertisement and name recognition.”
Burke said the dispute with the winery still could be resolved in a friendly way, such as if the women agree to pay a royalty to Mantra Films and to not advertise nationally.
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child porn charges! and you still support these ladies associating their name with this company? WHY? WHY would you support that? why would you want your name even close to such a person or such a company?
asdfsadfs, oklahoma city - Dec 20, 2007 at 11:49 am
I believe that the "Girls gone Wine" is in proper order to use and display their business and any one else would do. The owner of the "distasteful" video is way out of line and at this time is setting in jail for those actions, plus the aspects of facing charges of child pron in the State of Florida, which I hope sticks. Girls gone Wine, good luck with this.
who cares....girls gone wild sucks, and most wine made in Oklahoma sucks too. Let them waste all the money in court that they want to. The difference between the two companies is that one of them actually has the money to waste and the other probably doesn't. Winner GGW.
Jan, how can Francis reserve the right to start some future business when these ladies are already in it? I agree that if they had named their product girls gone wild wine then there would be infringement. But along the same lines you would not have Dr. Thunder soft drinks or any of the cola drinks after Coca-Cola received it's trademark. I think that what's going to happen is Mr. Francis is going to see that he's gotten into a pen with 3 pitbulls in their own backyard.
It will be very interesting though to see how it plays out in court. It was a nice move for the ladies to file here in Oklahoma rather than be forced to fight in California.
Brad, I think that the value in Girls Gone Wild is that it is descriptive as well as the name and it happens to be the tag line for the company. I think that may be the difference between this company and Taco Bell/Taco Tico, etc.
Yes, I did use this example from the Internet because it is in layman's terms again. I am not an attorney nor do I profess to know everything about the law. However, I have been through the exact same scenario two times, being on both sides of the argument and I know exactly what transpires with regards to the whole issue. So, my opinion is that Joe Francis will probably win his claim or it will become too costly for these three ladies to keep up with the high costs of court. It's a shame though because it is a cute name.
Jan, I do believe I read an article giving the exact same Xerox/Kodak examples. If you are so experienced in this area, why do you have to resort to the likes of Google to explain these concepts to me? Oh.. sure.. it could just be a wild coincidence that you used the exact same examples as a Harvard article which is one of the first things to pop up when you google "trademark law." At any rate, even with these examples you give -- Xerox and Kodak -- these are far different than "Girls Gone..." Mr. Francis' brand is "Girls Gone Wild" while the others are "Girls Gone Wine." A simple Google search will churn up quite a few different "Girls Gone" brands out there -- from "Girls Gone Good" to "Girls Gone Weed." While I think Francis would have a pretty good argument if the business he was protesting was named "Girls Gone Wild Wines," it's not. You have to admit that the Kodak and Xerox cases (actual cases, I believe) are not quite on point.
Bill, I see what you're saying and I actually think it's a very cute name. But, can you imagine having a business that is highly successful only to have someone else use what I think is as close to an actual name as I've seen? If this were allowed we would be seeing Granny Apple Computers, Fjord Trucks or NewsIsOk.com. I can assure you that none of the above companies would for one moment stand for their hard work to be capitalized on by someone else. I am very well sure that the women knew of the Girls Gone Wild franchise and deliberately did a play on the name. Cute name but not good business practice at all.
Doug, I guess ignorance is bliss. I don't know about that one but if you say so. I never said that they depended on the alcohol to get the girls to do anything or that they plied them with alcohol. Quite the contrary. I said that it was done in a party setting, i.e. Spring Break. I have also maintained that it would not be a stretch to assume that Girls Gone Wild may move into the alcohol business at some point and time because of the type of events that they throw. Spring break parties, bikini contests, etc. Do you also think that Hugh Hefner is scum because he took the innocence of women in the 50's and did something that was so unthinkable as to put them into the media naked or are you a hypocrite that used to sneak your daddy's dirty magazines to the bathroom for some "alone" time? I don't understand why people are so uptight about the human body. I wouldn't do it nor do I enjoy watching it but that's just my personal preference. I believe that as long as the parties are consenting and the item is legal then whatever they want to do or watch is their business including the Girls Gone Wild videos.
We live in Broken Bow and I've driven past Girls Gone Wine lots of times. There is never a mob there, it's in a nice, touristy location and there's nothing at all even suggestive of anything except what it is, a winery! So what if they've used the catch phrase of the videos??? I'm sure most people, when they see their sign, think of the videos, but to associate one with the other is silly! It's cute! I say more power to them if they win the case! BTW...this is just giving the girls' business some free advertising!!! I'm sure they're loving it! The only negative??? It might bring more Texans, but hey, we'll take their money!!!
What I haven't understood is how newsok wrote about this story about these three ladies doing nothing but selling their wine and they fail to write the story about the Okla. City police officer who was taken to jail after being stopped by an OKC PO for being drunk. Yes it was Anthony Germany and this is the second time he has been charged. Why hasn't this been brought to the publics attention? Guess it wasn't as important as the Girls Gone Wine story was it?
Jan, ignorance is bliss I guess. The scum that produces the girls gone wild CANNOT use the argument that they have any connection with alcohol or that would cause problems with the "contracts" that they have entered into with the drunken 18 year old (and in some cases 17 year old) girls. A person who is drunk cannot enter into an enforceable contract. So if the pervert wants to sue these ladies over the fact that they are dealing alcohol and Girls Gone Wild depends on alcohol as part of its free trade, then they basically cut their own throats. I would say the Girls Gone Wild ought to drop this before it hits The Today Show.
A., I can respect someone's intelligence or business sense without respecting what they do in that business and to me taking an "idea" and making it into a multi-billion dollar business is a pretty phenomenal accomplishment. There is also something called the USC 2257. I can almost 100% guarantee you that no footage has ever been used by GGW that was not properly documented. There are such stringent rules and regulations outlined in USC 2257 concerning the documentation of models (which is what these girls happen to fall under) that very few photographers or videographers would be foolish enough to publish any material without it and I would hedge a very strong guess that given the nature of GGW and that business that they would not publish anything without proper documentation. USC 2257 is in place to ensure that proper documentation is secured from models to ensure that they are of legal age to appear in provocative, suggestive or pornographic material. But, it is being enforced in all areas of video and photography because of the ads that are put out by companies like Abercrombie and Fitch, Guess and others.
Oh, and "sleeping on their rights" is not a valid argument because quite frankly I'm sure that the vinyard has only recently begun to gain some popularity and familiarity with consumers and was "under the radar". It also is not valid because regardless of whether a business has chosen to enforce their trademark or not (btw GGW is constantly and aggressively defending their mark) it still does not give anyone the right to come along and use it without permission.
Kevin, I do know quite a bit about trademark law having been in the throes of battle concerning various endeavors that I have had. However, here is what I am referring to: Blurring occurs when the power of the mark is weakened through its identification with dissimilar goods. For example, Kodak brand bicycles or Xerox brand cigarettes. Although neither example is likely to cause confusion among consumers, each dilutes the distinctive quality of the mark. Now, you can argue: Fair use occurs when a descriptive mark is used in good faith for its primary, rather than secondary, meaning, and no consumer confusion is likely to result. However, my counter argument to that would be that it could very well be confused that Girls Gone Wild is now in the alcohol/wine business given the nature of their videos. If they can sell surfboards and t-shirts it's not a far stretch to assume that they can do alcohol. My "riding on the coattails" description was of course not a quote of the actual statutes but rather a layman's term.
Jan, either you know a lot more than I do about trademark law, or you are misstating the law on blurring. You state that "riding on the coattails" is the essential cornerstone of trademark infringement (at least in this present action). There is no such law, there is no such rule. The law, as best I can research in 15-30 minutes (I'm a 3rd year law student, so I know one or two things about legal research) is fairly clear cut -- your "riding on the coattails" standard, as best I can tell is completely bunk. The black letter law is set out in 15 U.S.C. § 1125(c)(1) (although there is a LOT of case law on the subject as well). From a purely statutory perspective, I think your "on the coattails" language is derived from section 2 of the Code where it says that the defendant must have "...willfully intended to trade on the owner’s reputation or to cause dilution of the famous mark." I'd have to go further, but on its face, I just don't see how your argument gets there. I guess the Girls Gone Wine folks' lawyer will be saying about the same thing that I am.. not to mention the fact that there is case law which supports the proposition (which I'm sure these ladies will raise) that GGW has "slept on its rights" with regards to this action -- that they've been in operation for years now and that he is only suing them now because he might be able to stand to gain financially from doing so. In my humble opinion, Jan, the case just doesn't hit on enough of the factors to be a strong case.
Jan--I did not say in my comment that all women are taken advantage of. Perhaps you should read a little more closely next time. The footage being used without consent is different than the people IN the footage being used without consent. When someone's comments or actions are used without proper consent (i.e. a signed form), then it does become a problem (and illegal). I never challenged what you feel, just was curious how you can know him and respect him, but not be a fan, friend, or supporter of his material.
A., I am merely an acquaintance. I'm not friend or foe but I've had the opportunity to observe his business from a bystander's point of view. Oh and A., The women are not taken advantage of for their pleasure. It is nothing different than women who pose for Playboy. The women approach this organization and consent to appearing on video. Conversely, if the girls think about the decision and contact the company before the footage has been put into production it is not used. Show me exactly where it's been proven that the video footage was used without consent and that Joe Francis was aware that it was used without consent. I'm sure that there are girls that are caught in the background of some of the videos and they have not given consent. However, there is this little thing known as "public display" and if you do anything in public you are at risk of being witnessed, filmed or recorded doing it. I did not say that I advocate these films. But, I will stand up and defend anyone's constitutional rights that are being violated whether it be the person in front of or behind the camera or doing any other thing on this earth. The fact is, Mr. Francis has every legal right to make these videos. They are not illegal and do not harm anyone other than the girls who CHOOSE to act foolishly when the camera is around. I'm sure that many of them regret their impetuous decisions down the road but I've regretted spending $500 on a purse before but there wasn't anything I could do about it but learn my lesson and not do it again. Mr. Francis also has the right to protect the trademark that he has worked diligently to build into a multi-billion dollar empire. They don't just do videos either. They have an entire line of merchandise that could very easily include alcohol labeling if they so chose. So, back to the original question. Yes, I think that the Girls Gone Wine should have to change their name based upon what I know of trademark law. This shouldn't be a challenge to the morality of the company but rather plain old business law.
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Taco John.
Taco Mayo.
Taco Tico.
Pizza Hut.
Pizza Inn.
Get the point.
Francis has no case.
Wow.