SAN FRANCISCO — Chubby Checker has many talents: singing, dancing and doing the twist, to name a few. Estimating the size of a man's penis based on his shoe size apparently isn't one of them.
The singer best known for his No. 1 hit "The Twist" slapped Hewlett-Packard Co. and subsidiary Palm Inc. with a trademark infringement suit earlier this year for approving "The Chubby Checker," a penis measurement app, for sale in the Palm App Catalog.
U.S. District Judge William Alsup allowed the case to move forward Thursday after lawyers for Ernest Evans, aka Chubby Checker, faced off against the Durie Tangri team representing HP and Palm over the companies' motion to dismiss.
Per tradition, Alsup had threatened to cancel the hearing if a lawyer four or fewer years out of law school did not deliver oral argument. Durie Tangri associate Laura Miller, who graduated from New York University School of Law in 2010, stepped up to argue for HP.
As one of the entertainer's lawyers, Michael Santucci, spoke of his client's renown, Alsup turned to Miller.
"Maybe you're too young. Do you know who Chubby Checker is?" he asked.
"Yes, your honor," she replied. The singer's case hinges on his fame. Given Checker's wholesome image, the tawdry use of his name should have raised a red flag for HP during the app approval process, Santucci argued. Evans registered his stage name with the U.S. Patent and Trademark Office in 1998. By peddling the male member measurer, HP and Palm marred the good name Checker has carefully maintained over more than 50 years in the public eye, his lawyers allege in Evans v. Hewlett-Packard Co., 13-2477, which was transferred to the U.S. District Court for the Northern District of California from Florida in June.
"They've made a public association of his name, equating it to a penis," Santucci, a partner at Florida's Santucci Priore, said in an interview after the hearing. "This tarnishes his brand and trademark and on a personal level."
In HP's motion to dismiss, Durie Tangri partner Michael Page noted that his clients did not develop "The Chubby Checker," and they yanked it from the market three days after receiving a cease-and-desist letter from Checker's lawyers. There is no evidence HP and Palm knew the app violated Checker's trademark but continued to sell it, Page argued.
Alsup checked HP on that argument. Given the companies' approval process for apps, the plaintiffs can argue that HP and Palm knew or should have known that Checker would not have allowed his name to be used "for such a vulgar purpose," Alsup wrote in the order.
Although Alsup let Checker's trademark infringement claims stand, the judge tossed state law claims the singer filed in California and Pennsylvania, where he resides.
"The Chubby Checker," an app produced by MagicApps, was available online for about two years before the singer objected, according to HP and Palm's motion to dismiss.
"Any of you ladies out there just start seeing someone new and wondering what the size of there [sic] member is," a description of the app reads. "All you need to do is find out the man's shoe size and plug it in."
Few were curious enough to buy the app. It was purchased a mere 88 times, yielding $16.58 for Palm, according to the motion to dismiss.
Those sales are not the only measure of the damages Checker is entitled to, his lawyers say. The value of the suit was put at $500 million in a press release issued in February by another lawyer for Checker, Willie Gary of Florida's Gary, Williams, Parenti, Watson & Gary. Given the slim sales, Alsup pressed Checker's lawyers on how much the singer could reasonably expect to net from the suit. But first, he administered a check-up on Checker.
"How's his health? Is he in good health?" Alsup asked.
Santucci, a guitarist, assured Alsup that Checker is alive and well, noting that they are set to perform together this fall. Miller told Alsup she couldn't speculate whether Checker was likely to condone such a vulgar use of his name, noting that she does not know him personally. But with so many apps submitted for approval, HP and Palm are limited in how thoroughly they can review each one, she argued.
Santucci insisted that HP must be held to a higher standard. Although Checker still performs, licensing is how he makes a living. In recent years, Checker has registered his name with the PTO for use with jerky, hot dogs, steaks, lamb chops, pork chops, veal chops and hamburgers, among other products, according to the complaint.
Though the Chubby Checker app did not sell well, Santucci said he suspects that its presence may have enhanced sales for other apps, perhaps driving up the damages the singer is entitled to.
"God," Alsup said. "Unlikely."
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