For many New York club-goers in the 1980s and 1990s, the Limelight defined what it meant to be cool. Years after the place closed in 2001, its reputation still fascinates nightlife entrepreneurs. Now clashing ambitions to revive the notorious club’s brand have spawned a trademark dispute between its founder, the eye-patch-sporting Peter Gatien, and younger rivals who operate the Tao Group club chain and Dream hotels.
The Limelight opened in 1983 on the site of a deconsecrated Episcopal church, immediately ascribing it a dark credibility. Andy Warhol hosted parties there, and over the years, performers who included Prince, Pearl Jam, Smashing Pumpkins, Funkmaster Flex, Mary J. Blige, Jay-Z, and Sean “Puffy” Combs appeared inside its dimly lit confines.
In the 1990s, club kids danced furiously and did drugs there in impressive volumes. The New York Post called Gatien “the King of Clubs” in recognition of his owning not just the Limelight but also the Palladium, the Tunnel, and Club USA. He nurtured his reputation as the renegade ruler of New York partying. The Limelight's reputation turned darker in 1996 when a party promoter named Michael Alig was arrested and later convicted for the killing of a fellow club kid who frequented the Limelight. The authorities investigated Gatien on drug charges but couldn’t make them stick. He did, however, plead guilty in 1999 to failure to pay New York state taxes; that conviction was followed by deportation to his native Canada, where he resides today.
For the past 15 years, Gatien says, he has mulled various plans for reviving a Limelight club and has undertaken such ventures as selling Limelight-themed apparel. He's presently developing a feature film about the club, he says. But now, he recently discovered, someone else wants to use that famous name.
Gatien, 65, alleges in a lawsuit filed Thursday in Los Angeles federal court that, over his objections, the Tao Group defendants plan to open a Limelight nightclub in a Dream hotel in Los Angeles. “Rather than establish a brand and reputation of their own,” the suit states, the “defendants are attempting to misappropriate the goodwill of the Limelight-recognized brand and compete in a manner calculated to deceive consumers and irreparably harm Mr. Gatien.”
“The defendants’ decision to use Peter Gatien’s brand is inexplicable and obviously in bad faith given their knowledge of Peter’s ownership of the legendary Limelight brand,” Gatien’s attorney, Bill Carmody of the New York office of the Susman Godfrey law firm, said.
I emailed both Tao Group and Dream Hotels, seeking their response to the Gatien allegations, but haven’t heard back. When and if they respond, I'll update this post. One defense they’re almost certain to raise in court is that Gatien and his then-attorney allowed the registration of his Limelight trademark to lapse, leading to its removal from the U.S. Patent and Trademark Office registry on Dec. 1, 2015. Subsequently, owners of the Tao Group took steps to register the trademark for themselves. And this May, the patent office said it would allow the Tao Group trademark.
Carmody says his client's failure to renew the trademark registration, while a complicating factor, ultimately doesn't matter in the eyes of the law. Gatien retained a “common law” trademark by dint of his continuing to use the Limelight name in commerce, Carmody asserts. He adds that allowing others to take over the Limelight brand will mislead potential club-goers and deny Gatien his right to profit from the goodwill he built over many years.