This was on the front page of the Friday 10/1/04 Wall St Journal:
Cecil McBee Makes
A Name for Himself
In Japan -- and Sues
Jazz Musician Toured Tokyo,
Then Discovered That
He Is Now a Chain of Stores
By AMY MERRICK and GINNY PARKER
Staff Reporters of THE WALL STREET JOURNAL
October 1, 2004; Page A1
Cecil McBee, an American jazz musician on tour in Japan, made an unscheduled stop one night in the early 1990s. A friend in Tokyo hurried him off to a shopping mall and said there was something he just had to see.
When the elevator doors opened on the third floor, Mr. McBee couldn't believe his eyes: The words "Cecil McBee" were emblazoned above the window of a chain store selling clothes to teenagers.
Ever since, in Japanese and U.S. courts, Mr. McBee, who has appeared for 40 years with the likes of Benny Goodman and Miles Davis, has been on a crusade to reclaim his name. The 69-year-old bass player hasn't been able to stop his moniker from appearing on bikinis, dog sweaters, cellphone covers and credit cards.
The store he saw is owned by the Japanese holding company Delica Co. It chose the name in 1984, soon after Mr. McBee's first performances in Japan. It now owns about 35 Cecil McBee stores, which had sales of about $112 million in 2002.
With its miniskirts, fake-fur jackets and silky, shoulder-baring tops, the chain is the vanguard of a current Japanese fashion craze called "erogance" -- a melding of "erotic" and "elegant" styles.
From his home in Yarmouth, Maine, Mr. McBee says the stores have cost him bookings and damaged his career. Colleagues say searches for his contact information on the Internet call up the chain's Web site. Music students have asked whether he had a side business selling clothes to young girls.
"I heard a few jokes about my profession and my name, and that was rather painful," says Mr. McBee.
Delica says it chose the name at random. Mr. McBee's lawyers hired a mathematician to calculate the odds of randomly coming up with that name. Her conclusion: less than 1 in 90,000.
Mr. McBee's team argues that Delica chose the name to convey an artistic, free-spirited image. They say Delica has violated Mr. McBee's "right of publicity," the right of a person to have his name and persona publicized only with his consent and in a manner he deems appropriate.
In court filings, Delica executives deny any association with the jazzman, though they can't be specific about how they came up with the name. They say it may have been suggested to the company's late founder by an outside store-design company, but that can't be confirmed.
Delica also enlisted an assistant professor of foreign languages at Lewis & Clark College in Portland, Ore., in its defense. In court papers, Bruce Suttmeier notes that Japanese businesses sometimes play word games to develop their names. He hypothesizes that "Cecil" evokes "see-through," which describes an aspect of the stores' merchandise, and "McBee" suggests "McV," the nickname for "McVitie's," a British cookie brand that has been advertised in Japan.
One day recently, the Cecil McBee store in Shibuya, a neighborhood popular with young people in their teens and twenties, was busy with a constant stream of young women. Techno music blared and lanky saleswomen in tight pants and miniskirts paced the white-tile floor. The styles are chic and racy: velour bandeau tops, lacy camisoles, and bikinis, all in black, white and jewel tones. A T-shirt with rhinestone studs runs a little under $40. There is a multitude of miniskirts. Some have chain belts, cargo pockets or zippers up the side.
Asked what "Cecil McBee" refers to, a store manager said it "has no meaning." Ai Mizuno, a 17-year-old high-school shopper from Tokyo, said, "I had no idea that it was a person's name. I just figured that it was some phrase from a foreign language."
Saori Horikiri, a 17-year-old high-school student from just outside Tokyo, was purchasing a camisole, probably the 15th Cecil McBee item she'd bought this year, she said. "Cecil McBee is cool, cute and sophisticated," she said, wearing a pink sweater with "Cecil McBee" across the chest. "Every girl in Shibuya probably has at least one item." She'd never heard of the musician, either.
Todd Holbrook, an attorney for Delica, argues that many Japanese companies use American names. "If the people buying [the products] don't know who he is, then he isn't cast as the spokesman," he says. Through its attorney, Delica declined to comment further.
Robert Newton, one of Mr. McBee's lawyers, contends it doesn't matter whether Cecil McBee shoppers have ever heard of Cecil McBee, the musician. "If you didn't know jazz and you heard the name Herbie Hancock, there's something in that name that evokes a sense of somebody," he says. "I think the same is true of Cecil McBee."
Mr. McBee first performed in Japan 22 years ago, on a tour with the Chico Freeman Quartet. After one show, he says, he signed autographs for 30 minutes. Since then, he has performed in Japan more than a dozen times, frequently with the well-known jazz pianist Yosuke Yamashita. He says Delica simply borrowed his name to ride his coattails.
In 1984, Delica registered a trademark for the katakana letters that stand for "Cecil McBee." Katakana is a syllabic form of Japanese writing, often used for foreign words. In 1996, Mr. McBee had an attorney send a letter to Delica asking it to stop using his name. Later that year, Delica applied to the Japan Patent Office to register the roman letters "CECIL McBEE."
In 2002, the Japan Patent Office invalidated Delica's trademark registration for "Cecil McBee," ruling in Mr. McBee's favor. But the Tokyo High Court reversed the decision, because the musician's full legal name is Cecil LeRoy McBee. He is appealing the decision.
Frustrated, he took on U.S. lawyers who asked Japanese-speaking U.S. residents to order merchandise from Cecil McBee stores. Once the products were shipped to America, Mr. McBee's lawyers used the transactions and correspondence from the stores to establish jurisdiction in the U.S.
Mr. McBee is currently pressing his case in federal court in Portland, Maine. In August, a magistrate judge recommended that the musician be allowed to press his case for damages, but that he could not seek an injunction on the sale of Cecil McBee merchandise outside Maine. The district court can adopt or disregard the recommendations, which both sides are challenging.
The growth of the Internet has been a big factor in the case. U.S. residents who ordered Cecil McBee merchandise relied on photographs and prices of the clothing posted on the chain's Web site. Anyone who types Mr. McBee's name into a search engine such as Google turns up references to the store. And some Cecil McBee merchandise has even turned up for sale on eBay.