Trademark feud centers on unsolved double murder

Lizzie Borden House, left; Miss Lizzie's Coffee, right.

A museum and a coffee shop are locked in trademark litigation over the name of an heiress accused of an infamous double murder. (All photos by RJ Peltz-Steele CC BY-NC-SA 4.0.)

Last year, Williamsburg, Va.-based US Ghost Adventures, owner-operator of the Lizzie Borden House and Museum in Fall River, Mass., sued Miss Lizzie's Coffee and its owner-operator, Joseph M. Pereira. The coffee shop opened in a house next door to the museum on Second Street in Fall River. US Ghost Adventures accused Miss Lizzie's of infringing on its trademark in "Lizzie Borden" and profiting from consumer confusion over the coffee shop's ownership.

In October, the federal district court, per Judge Leo T. Sorokin, denied the plaintiff a preliminary injunction. US Ghost Adventures appealed, and the matter is now pending in the First Circuit.

In 1892, Lizzie Borden was tried and acquitted of the axe murders of her father and stepmother. The brutality of the killings and the gender of the accused summed a blockbuster news event in the 1890s—not coincidentally, the pyrite age of yellow journalism—and the public followed the criminal trial breathlessly. No one ever was convicted of the crime, and Borden lived the remainder of her life under a cloud in Fall River social circles. The case has been a font of endless speculation in the popular culture, inspiring books, articles, films, TV shows, video games, songs, and nursery rhymes.

Lizzie Borden House and Museum

Opened to the public in 1996, the Lizzie Borden House and Museum, where the murders occurred and Lizzie lived at the time, features artifacts from the Bordens' life and the crime. The bed-and-breakfast part of the business capitalizes on the reputation of the property as haunted.

In August 2023, Pereira opened the coffee shop in a house adjacent to the Borden House. There is no confusion about what "Miss Lizzie's" refers to. The shop features images of Lizzie, boasts an overall theme of bloody death, and sells small souvenirs related to the Lizzie Borden story. US Ghost Adventures sued in September 2023.

"Hatchet blade" mark
registered to US Ghost Adventures
USPTO

While there is no confusion over the fact that both businesses aim to profit off the Lizzie Borden story, that overlap in itself does not constitute a trademark infringement. The defendants argued in federal district court, and the court agreed, that Lizzie Borden's name and image, and the story of the Borden murders are in the public domain. Trademark specifically protects only the brand name of the Lizzie Borden House and Museum as a hospitality service provider.

(UPDATE, Aug. 7: US Ghost Adventures has registered marks in "Lizzie Borden" and in its hatchet-blade graphic (pictured) for "hotel and restaurant services," which, I admit, comes closer to a coffee shop than mere hospitality. I would still draw the line. US Ghost Adventures also has registered "Lizzie Borden Museum" for "museum services" and the hatchet-blade image for key chains, jewelry, mugs, golf balls, hats, shirts, etc. Search "Lizzie Borden" at the USPTO for full details. HT@ Prof. Anoo Vyas.)

The trademark test for "consumer confusion" about who is the service provider presents, essentially, a frame-of-reference problem. US Ghost Adventures says that its trademark precludes another hospitality service provider from using the Lizzie Borden name, or anything confusingly similar thereto, and a coffee shop is a hospitality business. The defendants argued, and the court agreed, that a coffee shop is a sufficiently different enterprise from a bed and breakfast as not to induce consumer confusion.

Miss Lizzie's Coffee

It's not that a coffee shop could not infringe the trademark, but that this one has not, the trial court concluded. The plaintiff tried to tighten the connection between the two businesses by pointing to their proximate location and their common uses of hatchets in signs and promotional images. The court found neither proffer convincing. It makes sense to locate any Borden-themed business near the scene of the crime, and the hatchet images the businesses use are different. Lest there be any lingering doubt in a customer's mind, the coffee shop put up a sign avowing its non-association.

(There is some dispute as well about the difference between a hatchet and an axe, which was used in the murder, and which is depicted where. I don't have the bandwidth to, uh, chop through that thicket.)

Notwithstanding the plaintiff's appeal, I think the trial court got it right. Judge Sorokin convincingly suggested by way of example that trademark law does not preclude a business from using the historical name of Sam Adams, as long as the business isn't a brew works. In the same vein, in any close case, I prefer to see trademark law construed as not at cross-purposes with economic development, which Fall River can use. More touristic business floats all boats.

As the appeal unfolds in the First Circuit, an unfortunate and layered backstory is coming to light. For reasons unstated in the record—one might fairly speculate the burden of attorney fees—Pereira discharged his two lawyers, who withdrew from the case in April 2024. In July 2024, Pereira responded pro se to the appellant-plaintiff's brief. 

US Ghost Adventures was able to sue both Pereira and Miss Lizzie's because, according to the allegations, Periera opened the shop about a month before his business registration was formalized. The plaintiff therefore demanded that Pereira personally disgorge ill-gotten profits from that first month.

The problem now on appeal is that a corporation cannot be represented pro se, and Pereira is not an attorney. So his responsive brief, already shaky on legal formalities, cannot represent the position of Miss Lizzie's. The court accordingly ordered that Miss Lizzie's would not be permitted to argue on appeal. In an August 1 reply, the plaintiff then asked the court to decline oral argument entirely, as Pereira inevitably would argue Miss Lizzie's position in violation of the court's order. 

As I said, I think the plaintiff is wrong on the merits, so the First Circuit should affirm. And that would be the safe bet in ordinary circumstances.

But the plaintiff's reply fairly faults Pereira for thin legal arguments in the pro se brief. That puts the appellate court in an awkward position. Even if the plaintiff bears the burden of persuasion on appeal, the First Circuit is looking at a record short on effective counterargument. 

Considering the preliminary disposition of the proceeding in the trial court, the appellate court might err on the side of reversing and remanding, to develop a fuller trial record. The defendants' pro se bind will persist, though, and would threaten an outcome dictated by access to counsel rather than the case on the merits.

There's a deeper layer yet. It happens that Pereira has a troubled history with the law. According to The Standard-Times, in 1996, he "pleaded guilty to stealing more than $119,000 from 15 people after posing as a lawyer and mortgage broker." Appearing as an attorney in a 1993 housing matter, Pereira "was so good, witnesses say, that ... he stood up to a judge, a clerk and another attorney without even raising an eyebrow," The Standard-Times reported in 1995. A veteran attorney said that "he never suspected a thing," and that Pereira "was very polite and seemed pretty knowledgeable about the lead-paint law."

Pereira's record did not improve subsequently. In 2010, he was sentenced to three to five years' imprisonment after "he pleaded guilty to 13 counts of larceny, one count of practicing law without a license and one count of committing that offense after being convicted of the crime in 1996," Wicked Local reported in 2012. As The Herald News put it upon an arrest in 2019: "Since 1982, Pereira has been arraigned approximately three-dozen times on larceny-related charges. His most recent arrest added another 17 larceny charges to his record." He did beat some charges.

To Pereira's credit, I did not think his response in the First Circuit was as devoid of reasoning as US Ghost Adventures alleged. Albeit in improper form, the appellee's brief more or less rehashed the core arguments in the case. If in proper form, that's what the appellant's brief did, too.

Certainly Pereira's criminal history should have no bearing on the trademark case. The case also, ideally, should not be decided based on either party's access to counsel, though such immateriality of resources is not the way of the American legal system, especially on the civil side.

Whatever comes to pass procedurally, I stand by my assessment of the merits. On Friday morning, I picked up a cup of coffee at Miss Lizzie's.

The appellate case is US Ghost Adventures, LLC v. Miss Lizzie's Coffee LLC, No. 23-2000 (1st Cir. filed Nov. 27, 2023). The case in the trial court is US Ghost Adventures, LLC v. Miss Lizzie's Coffee LLC, No. 1:23-cv-12116-LTS (D. Mass. Oct. 27, 2023) (CourtListener).

Sunshine filters in to Mass. jail with gloomy history

Bristol County, Mass., Sheriff Paul Heroux is seeking to close a jail with a gloomy history, and last week he gave journalists a look inside.

Built in 1888, the Ash Street Jail in New Bedford, Mass., housed Lizzie Borden during the 1893 trial in which she was acquitted of killing her father and stepmother. The "Lizzie Borden House" is a tourist attraction in nearby Fall River, Mass., today. Undoubtedly the site of executions in Bristol County, Ash Street is often said to be the site of the last public hanging in Massachusetts, in 1898. Records conflict (compare O'Neil with O'Neill, and see Barnes), but if it's not, it's close enough. The commonwealth changed its method of execution to the electric chair in 1900.

Purchase St., New Bedford, Mass., 1888.
Whaling Museum photo via New Bedford Guide.

One of the oldest jails in continuous operation in the United States, Ash Street gained new notoriety beginning in the late 20th century, especially after 1997 during the tenure of Sheriff Thomas Hodgson. In 25 years of service as sheriff, after prior service in local politics, Hodgson earned national press for hardline measures such as the removal of televisions and gym equipment from the jail, the imposition of room-and-board charges for detainees, the institution of chain gangs, and an offer of detainee labor to the Trump Administration to help build the border wall.

Meanwhile, Hodgson was unapologetic for conditions within the jail. Former detainees complained of uncontrolled mold, uncontained sewage, and intolerable cold and heat (WBUR). The complaints have been controverted. A former jail official lauded staff and facility in a 2022 letter to the New Bedford Guide, for example, and a news reporter, upon a tour of the facility in 2016, wrote favorably of a modernized interior.

When Heroux toppled Hodgson in the 2022 election, closing the Ash Street Jail was part of his platform.

President Trump and Sheriff Hodgson at the White House, 2019.
Trump White House Archives via Flickr (public domain)

Former Sheriff Hodgson is reminiscent of an infamous character in the annals of freedom of information law, Sheriff Thomas Lafayette Houchins, Jr., of Alameda County, California. Houchins lent his name to Houchins v. KQED, Inc., a 1978 U.S. Supreme Court case regarded generally as standing for the proposition that the First Amendment does not articulate a right of access to public places, if not more broadly foreclosing use of the First Amendment as any kind of freedom of information act.

In my 2012 casebook, Law of Access to Government, I contextualized Houchins with some biographical information about the sheriff (relying on sources such as the East Bay Times).

Thomas Lafayette Houchins, Jr., was a leader in the sheriff 's department in the 1960s and earned a reputation for uncompromising law enforcement. A veteran law enforcement officer, Houchins had joined the department in 1946 after serving in World War II as a Marine Corps fighter pilot. He was elected sheriff in 1975 and retired in 1979. In 1969, Houchins commanded a force of sixty or more deputies in crowd control at what became an infamously tragic concert headlined by the Rolling Stones. He recounted thirty years later: "Some guy jumped off an overpass because somebody told him he could fly. They lied. Another jumped into the [Delta Mendota Canal] because they told him he could swim. They lied to him, too.... I think we had five deaths and five births, so we came out even." Houchins died at his California home in 2005.

The Houchins case centered on news media investigation of the Santa Rita jail. Reporters wanted to tour "Little Greystone," a part of the jail in which "shocking and debasing conditions" were alleged to have caused inmate illnesses and deaths.

Houchins is one of a family of First Amendment access cases in which the Burger Court put the brakes on the liberal interpretations of the First Amendment that characterized the civil rights era. However, to the dismay of President Richard Nixon, who appointed him, Chief Justice Warren Burger was only marginally effective in rallying the Court to reverse the civil rights direction of the predecessor Earl Warren Court.

Houchins reflects that equivocation. Though Houchins's bar review flash card might read simply "no 1A access to public places," the decision came from a fractured Court of only seven justices and an opinion of only three. Harry Blackmun and Thurgood Marshall did not participate, the former having had recent surgery and the latter recusing. Burger was joined by only two others, including his successor as Chief Justice, William Rehnquist, in the opinion of the Court. They formed a majority of four with the addition of Justice Potter Stewart. (Read more about the fracas behind the scenes from Matthew Schafer.)

Concurring, Stewart joined Burger's conclusion on the facts of the case; he had been the author of two prior Court decisions, in 1974, rejecting press access to prisons or prisoners. Yet in his opinion in Houchins, he speculated that media might articulate a First Amendment claim on better facts. With three dissenters arguing at least as much, thus outnumbering the Burger contingent, Houchins arguably left the jailhouse gate open to a First Amendment theory, if you'll forgive the metaphor. Media law aficionados will recognize a pattern akin to Branzburg v. Hayes (1972), in which similar equivocation on the Court, aided later by clever advocacy from media lawyers, left the problem of constitutional reporter's privilege in disarray.

Much of the dispute in Houchins can be characterized as a frame-of-reference problem. In its broadest frame, Houchins is about public access to places to hold public officials accountable. That seems reasonable. But when I teach Houchins, students are quick to find the media position untenable, reading the case more narrowly as about reporters demanding access to any part of the prison, perhaps even with minimal advance notice.

That dichotomy in framing plays out in the public protests and media frustration over access to the Ash Street Jail in recent decades. There were tours; the writer who toured Ash Street in 2016, cited above, was then a reporter for public radio WBUR. Just like in Houchins, protestors and former detainees of the facility complained that public tours were limited and staged, showing reporters only what officials wanted them to see. Officials said that wider public access would jeopardize the security of the facility and the people inside, both detainees and workers.

The theoretical solution that emerged from Houchins, such as the case held, is that supervision of "non-public public places" should be accomplished not through the free press of the First Amendment, but through political accountability at the ballot box. To some degree, that's what happened when Heroux became sheriff in 2022. At the same time, prison conditions raise a peculiar problem in majoritarianism, familiar in criminal justice and civil rights contexts, and resonant in debate today over policing: The political system is not a reliable way to protect the rights of jailed persons, a minority class widely regarded with little sympathy.

On balance, I don't know whether the truth of the Ash Street Jail is closer to the horrifying complaints of former detainees or to the confident assurances of public officials. Whether constitutionally or statutorily, sunshine must be allowed to penetrate prison walls.