Lawsuit Claims First Tennessee Copied Ad Idea - 12/12/2003

By Michael Sheffield

First Tennessee Bank could be facing the end of its popular "Money Men" campaign if a California brokerage firm wins a lawsuit filed in Nashville.

J.B. Oxford and Co., a discount brokerage firm based in Los Angeles, says it created the animated money concept in 1999 and launched a national print ad campaign with spots in USA Today, Newsweek, Time, The Wall Street Journal and other national publications.

J.B. Oxford says its campaign featured the moving and speaking currency character, as well as the slogan "Put Your Money to Work" in its ads. First Tennessee's ads vary from showing a $20 bill dressed as a coach with the slogan, "Every dollar has potential. Are you getting the most from yours?" to television spots showing the money characters trapped in the walls of a house and telling consumers to "Get the money out of your house and put it to work." The lawsuit demands First Tennessee stop running the campaign, destroy all copies and pay J.B. Oxford damages of up to $30 million.

First Tennessee representatives declined to comment on the case. The ad campaign has been a visible one for the bank, which has employed actors to make appearances as the Money Men at Memphis Redbirds games and in commercials, as well as recent promotional appearances for its new NASCAR sponsorship with driver Dave Blaney.

J.B. Oxford chairman and CEO Chris Jarrett, who says his company does business in Nashville and who lives in Nashville himself, says the ads are too close to be coincidental.

"We take this very seriously because we spent millions on the ad campaign," he says.

The suit alleges J.B. Oxford spent $10 million on its campaign, but only filed a copyright Oct. 28 of this year that states the ads were created in 1999.

J.B. Oxford's attorney, George Barrett, a Nashville lawyer with Barrett, Johnston and Parsley, says the timing of the copyright filing is not as important as the filing itself.

"It doesn't matter when the copyright was filed," he says. "We think we've got a good case because the ads are that close to what they did originally."

Roy Berkenstock, a patent and trademark attorney with Wyatt Tarrant and Combs, says there is an advantage to an artist who registers a copyright before publication, but after publication, there is only a limited time to file. He also says there is a burden of proof on the plaintiffs to prove actual copying.

"It's usually between 30 to 90 days. If they wait any longer, they'd have to rely on their common law rights, but that makes a lawsuit more difficult," he says. "If they had filed before, they'd be entitled to statutory damages."

Barrett says the suit was filed in Nashville instead of Los Angeles, where J.B. Oxford is based, or in Memphis, where First Tennessee is based, because Jarrett lives there, J.B. Oxford does business there and because "cases move fast in Nashville."

While First Tennessee is the sole defendant in the case, Memphis-based Thompson and Co., which created the campaign, also could be affected by the case. Thompson created the ads in 2000 and began running them on Super Bowl Sunday in 2001.

Michael Thompson, chairman and CEO of Thompson and Co., says the lawsuit has no merit.

"The whole thing is totally without merit and it will be found as such when all the facts are presented," he says. "The working money campaign, which this is about, was conceived and developed at Thompson and Co. for First Tennessee. It's work we're very proud of."

Berkenstock says in the event of alleged copyright infringement, the violation would be copying. If First Tennessee didn't get any information from J.B. Oxford and can prove it created the campaign, no copying is involved, he says.

CONTACT staff writer Michael Sheffield at 259-1722 or msheffield@bizjournals.com