Attorney Willie Gary, who has never been afraid of taking on the big boys, along with his team of legal eagles have recently filed a multi-million dollar claim on behalf of Earnest Evans, aka Chubby Checker, The Last Twist Inc., and the Ernest Evans Corporation against tech giant Hewlett-Packard and its subsidiary, Palm Inc. for trademark infringement, unfair competition and deceptive trade practices, dilution and false designation of origin.
So what exactly did HP and Palm do that has Chubby Checker “twisting” the wrong way? Well, apparently they released and maintained a software application made for Palm products that was called “Chubby Checker.”
The particular smartphone application is specifically geared toward the ladies or anyone interested in what it had to offer–it could be used to estimate the size of a man’s penis based on his shoe size.
HP claims that the application was removed during the same month that they received a cease and desist letter from Willie Gary asking them to take it down. Still, Willie Gary says that the suit is about “preserving the integrity and legacy of a man who has spent years working hard at his musical craft and has earned the position of one of the greatest musical entertainers of all time.”
In the complaint, Willie Gary and his team claim that HP and Palm’s infringing use of the name Chubby Checker in relation to its software application is likely to cause confusion or mistake in the minds of the artist’s long-time fans and supporters, such that it would do damage to the brand and Mr. Evans’ businesses. Additionally, if the infringement is allowed to continue, it will permit HP and Palm to benefit from profits to which they are not entitled.
Moreover, Gary claims that the sexual and obscene nature of the software app tarnishes the good name and positive associations that the general public has of the Chubby Checker name. Specifically, the complaint notes that HP/Palm “willfully intended to trade on Plaintiff’s reputation and to cause dilution of Plaintiff’s famous name and marks by adopting and using the name and mark CHUBBY CHECKER in its app.”
The complaint also alleges unfair competition in that HP/Palm’s app entered into the stream of commerce with the designation “The Chubby Checker” attached to it; however, Chubby Checker is a mark that is uniquely related, associated and identified with Mr. Evans. A further argument is made that the use of the app was “calculated to deceive consumers and to cause consumers to believe that the Defendant’s [HP/Palm] goods are connected with or sponsored by Plaintiffs [Earnest Evans, et al.].”
Gary also brings up an “unauthorized use of name of likeness” claim in the complaint on the basis that Mr. Evan’s famous stage name of Chubby Checker, which has been developed through continuous advertisement and ongoing use over the last 50 years, has considerable and significant commercial value. That said, the complaint alleges that HP/Palm have misappropriated and used the Chubby Checker name without the permission or consent of Mr. Evans and his companies for advertising and commercial purposes.
Additionally, it is alleged that such unauthorized use of the name has caused Chubby Checker to sustain loss or injury, to include such things like: loss of compensation that would have otherwise been due to Chubby Checker in connection with the products and services being provided under the Chubby Checker name, and the depreciation in value of the Chubby Checker name in relation to future commercial efforts.
Gary claims that HP/Palm were fully aware of what they were doing by using the Chubby Checker name without permission in relation to the app that was being offered for sale and downloaded, and that knowing misappropriation “demonstrates flagrant disregard for Chubby Checker’s interests…[and] warrants the imposition of punitive damages against the Defendants.”
Gary has asked that HP/Palm be permanently stopped from using the name Chubby Checker in any way, shape or form, or anything similar in its marketing efforts, websites, advertising or other goods and services. Additionally, Gary wants the court to make HP/Palm immediately cease its use of the name and to destroy all related computer software, files, literature, ads, packaging materials, receptacles, hard drives, menus and any other product in their possession that bears the Chubby Checker name.
If won, this $500 million lawsuit will most certainly prove a point to the tech giants, as well as others out there who might be considering doing something similar. That is quite a bit of money to have to pay out, particularly when the app yielded less than $100 according to those at HP. The tech companies claim to have removed the app back in September of 2012, but clearly, the fact that it existed at all has put Chubby Checker’s legs in a knot. Guess we’ll find out soon enough how this turns out.