W.Va. statue of Big Boy cooking up legal feud

10/8/2009

CHARLESTON, W.Va. — Big Boy looks happy from his perch 14 feet above this city's west side: the checkered overalls, the distinctive curl in his hair, the mammoth double-cheeseburger hoisted above his saccharin smile.

Don't be fooled by the smile: This Big Boy is in big trouble. Attorneys for the Warren, Mich.-based Big Boy International restaurant chain have ordered the removal of the lardy lad and his trademark grin from his red pillar. And that has residents worried they could lose a beloved piece of the city's heritage.

The restaurant chain's mascot adorns a monument to Alex Schoenbaum, founder of the Shoney's chain, who opened his first restaurant, initially called the Parkette, 62 years ago in Charleston. Shoney's once ran restaurants under the Big Boy name, but the company abandoned its franchise agreement with Big Boy — which once had more than 1,000 locations across the country — in 1976 to expand its own brand.

As far as Big Boy International is concerned, that was the end of the mascot's association with Shoney's.

“They're displaying a trademark that does not belong to them in a manner that causes confusion to the public regarding Big Boy's association with Shoney's,” said Jennifer Bourgoin, vice president and general counsel of Big Boy International, which franchises more than 450 locations in the United States and Japan.

She added that Big Boy owns all the rights to the trademark statue and will take the issue to court if necessary.

That isn't sitting well with Charleston residents who grew up with Shoney's, which now has headquarters in Nashville, and who fondly remember the Big Boy as part of an urban landscape that included cruising hot rods and giant burgers.

“I think that Big Boy should lighten up and remember they made a lot of money off the Shoney's franchise,” Charleston Mayor Danny Jones said.

“Since the monument's not outside a restaurant, and there are no Big Boy restaurants in the area, I don't see the violation,” he said.

Historical exhibit or not, the statue's legal status is far from clear.

Because it's part of a monument open free of charge to the public, it may have a different status than if it were advertising a restaurant or other business, said Martin Schwimmer, a New York City attorney who publishes a Web site called the Trademark Blog.

“If a community has a statue to honor an illustrious citizen, that's very likely not going to be a use of the trademark in commerce,” he said.

However, the matter is complicated by the presence of the word Shoney's on the monument, along with attendant memorabilia, which could lead people to identify Big Boy with Shoney's, said West Virginia University College of Law professor Michael Risch.

“It's a complex question, as opposed to just putting the Big Boy there for art's sake,” he said.