In a “git-r-done” decision, Larry the Cable Guy’s merchandising company and a Diamondhead store have settled a lawsuit that had accused the store of copyright violations and trademark infringement.
Git-R-Done Productions Inc. and the Giterdone C-Store settled the lawsuit, according to an order signed Wednesday by Chief U.S. District Judge Louis Guirola Jr.
The store owner is pleased with the settlement, said Darlene Jacobs, a New Orleans attorney.
“He will get to keep the name of the store, and his sign,” she said. “He opened up the store after Hurricane Katrina to help the community. He will be able to continue to do that.”
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Thomas Wood owns the store, which is on Yacht Club Drive just south of Interstate 10.
Larry the Cable Guy, the blue-collar comedian whose real name is Daniel Lawrence Whitney, is an officer of Git-R-Done Productions. The company handles the merchandising of products that use his name, likeness and popular catchphrase.
Terms of the settlement were not released. However, Git-R-Done Productions had asked in court filings that the convenience store and gas station turn over or destroy merchandise that was in violation of trademark and copyright laws. And it wanted the store’s trademark canceled.
Git-R-Done Productions had filed its lawsuit Nov. 18, 2015. The business was organized in Florida and its main office is in Atlanta.
The production business registered its trademark first and has numerous registrations for its goods and services, records show.
The store had registered its mark in a retail store category. It was found to have sold merchandise using the catchphrase, and had parked a truck out front that resembled the one used by tow-truck driver Mater in the animated film “Cars.” Larry the Cable Guy was the voice of Mater in the movie.
The store had filed a countersuit that said, in part, Larry the Cable Guy was not the first to use the catchphrase.
Whitney’s testimony sealed
Guirola dismissed the counter-claim but allowed the store to file an amended claim. In that complaint, it claimed the comedian’s antics had blemished its professional reputation. The store wanted to subpoena Whitney to testify in a deposition in Diamondhead.
Whitney did testify, but not in Diamondhead. He apparently gave his deposition in Omaha, Nebraska, where he lives. An excerpt of his deposition was sealed, a court document said.
Guirola noted Git-R-Done Productions is the “senior” user of the catchphrase nationwide, and dismissed the store’s countersuit in June.
Guirola, in an order in January, said Git-R-Done Productions was not entitled to judgment on its claims against the store. He ordered a settlement conference, and a pretrial conference if a settlement wasn’t reached.
Store didn’t act in bad faith
Git-R-Done has a “myriad of long-lasting, unchallenged” registrations, but the mark each business has used “is not inherently distinctive,” the judge wrote.
“It does not appear the convenience store acted in bad faith,” Guirola wrote.
Git-R-Done had claimed the store infringed on its trademark, created confusion by making the public believe Larry the Cable Guy is affiliated with the store and created unfair competition.
The company claimed trademark dilution, a concept in trademark law that gives owners of a famous trademark the right to prohibit others from using the mark in a way that would make it less unique.
To claim trademark dilution, a mark would have to be “widely recognized by the general consuming public,” such as the marks of “Budweiser beer, Camel cigarettes, Barbie Dolls ...,” Guirola wrote, citing case law.