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Iconic neon Smilin’ Buddha sign at centre of trademark battle

Faced with a messy legal battle, the Museum of Vancouver and a commercial partner have stopped selling merchandise that featured…

By Rumnique Nannar , in Culture , on November 20, 2013 Tags: , , , , ,

Robert Jir, owner of the Smilin' Buddha Cabaret trademark sits by a photo of the neon sign and his father Lachman.
Robert Jir, owner of the Smilin’ Buddha Cabaret trademark, sits by a photo of the neon sign and his father Lachman.

Faced with a messy legal battle, the Museum of Vancouver and a commercial partner have stopped selling merchandise that featured the city’s iconic Smilin’ Buddha Cabaret neon sign.

The museum has been challenged about its use of the sign by a Vancouver man, whose family owned the landmark Smilin’ Buddha nightclub on Hastings Street from the 1960s to the 1980s. Robert Jir sent a cease-and-desist notice to the Museum of Vancouver in November, after discussions between the two went nowhere.

Besides the museum’s use of the sign on T-shirts and mugs, the organization had also partnered with Murchie’s Tea, which released a Smilin’ Buddha tea line. Murchie’s has stopped selling the tea.

The dispute over the sign, which is currently on display at the museum, revolves around who actually owned the right to the image.

“[The museum] told me I had no right to my trademark and that they didn’t believe it was valid,” said Jir. “I was trying to be fair with them but I’m not about to bullied by them. Anything to do with my trademark is an infringement on my rights. I will protect that all the way for me, my children, and my family history.”

Jir says that museum representatives met with him three times to discuss his family legacy with the club and even promised a heritage plaque dedicated to the family in the museum.

He says that when his father bought he club in 1962 that the trademark belonged to his family. Jir first trademarked the design in 1995, after the family had closed the club, and has renewed it until Sept 4, 2027.

An ambiguous case

The museum argues that the trademark belongs to Wallace Neon, the original manufacturer who sold out to another company, Sicon Signs.

The case is slightly ambiguous because the museum has no actual document showing that Wallace leased that particular sign, only that it was their general practice to lease signs to businesses.

“[Wallace] would lease their signs to owners. In the old rental agreement that I have seen, we don’t have the one of this particular sign,” said Debbie Doeuz, director of marketing and development.

“But the ones we have seen by the same company it said exclusive property of the sign manufacturer. So that’s why we feel it needs to be further investigated.”

With a Living History Night organized by the Hastings BIA, and talk of a new club using the same name, this has Jir feeling as if his family legacy is being ignored. He mentioned that the museum has not responded in kind, when he offered to partner with them to sell merchandise like T-shirts, mugs, and flags.

The museum and the Jir family are each considering the next steps of their case in protecting their stake in Vancouver’s heritage.

Hotspot on Hastings Street

The sign depicts a chubby Buddha with a rippling belly, made all the more charming with the flashing red lights.

The nightclub has a long and illustrious history. Robert Jir’s father, Lachman, bought the club in 1962 where luminaries like Jimi Hendrix played and was allegedly fired for being “too loud.” It was a hub for the underground punk scene in the ’70s and ’80s when bands like D.O.A, Dead Kennedys, and 54-40 played their early gigs.

[toggle title=”History of the Smilin’ Buddha Cabaret”]
1953 – Smilin’ Buddha Cabaret opens
1962 – The Jir family take over with acts like Jimi Hendrix, Dead Kennedys, Tommy Chong, and 54-40 play their early gigs.
1987 – The club closes down
1994 – 54-40 release the ‘Smilin’ Buddha Cabaret’ album and takes the neon sign on the road
[/toggle]

Neon heritage

Museums across the world often use prints of famous images and artefacts, in order to plaster them on mugs, T-shirts, and postcards. For a relatively young city like Vancouver, the neon signs of the ’50s and ’60s are the local version of the Eiffel Tower and Big Ben.

The historic Smilin' Buddha Cabaret sign in the Neon Vancouver exhibition at the Museum of Vancouver
The sign is part of the Neon Vancouver exhibition at the Museum of Vancouver. (Photo courtesy: Roland Tanglao)

The Smilin’ Buddha neon sign currently hangs in the museum’s permanent exhibition, Neon/Ugly Vancouver, with other neon relics of Vancouver’s past.

For the museum, it is about preserving the history of a young city.

“This is an unusual case because as a museum we are often reproducing images all the time.

Other museums are also making prints of artefacts as well, it’s an interesting area that requires more investigation and I think all museums would benefit from that,” said  Douez.

Buddha’s resurrection on tour

The sign was originally destined for the dump, until the band 54-40 stepped in to save it in 1994. Brad Merritt, 54-40 bassist noticed an article in The Province newspaper that had a photograph of the Smilin’ Buddha Cabaret sign sitting on the scrap heap and consulted with their manager Allen Moy to save the sign.

“It was in complete disrepair at the time, it was basically all the glass shattered,” said Moy.

Merritt rescued the sign and pooled the band’s resources to partially restore it. The band later brought the sign along on its 1995 tour and named its album after the eponymous relic.

“I’m kinda like the band archivist and historian. I thought we should grab this and hold onto it for posterity, keep it in good shape… I remember what it was like to see the other bands at the Smilin’ Buddha Cabaret and walk up to the sign and hear it humming in the rain. So I definitely wanted it to live on,” said Merritt.

The group donated the sign to the museum in 2008.

“The museum completely restored it, we only restored part of it,” said Moy. “The sign was originally an east-west sign, both sides of it were working. It was gigantic, it was probably nine or 10 feet long and four feet high, so it was very big.”

Intellectual property law 

The legal implications of intellectual property law cover more than just compensation. There’s also a requirement in the law for an acknowledgement of the trademark owner’s rights.

Intellectual property lawyer Andrei Mincov said that most cases should involve respect and courtesy from the larger party.

“Intellectual property is not just about the money. What it is about is control. Very often all the defendant has to do was pick up the phone and call the person who owns it and say, ‘We don’t have a lot of money so can we please use it.’ This little sign of respect to call when you actually call and recognize that its something that the human mind came up with.”

Mincov highlighted that trademark can be cancelled upon request by an interested party if it has not been used consecutively for three years.

But Jir says that he has been selling his own merchandise with the Smilin’ Buddha logo, at comedy and music events in his Burnaby café.

He has been planning to open a new club down the line to hand over to his children when they grow up, but he says the legal battle has taken a strain on his future plans.