Roll Over Beethoven, I've Got Trademark Blues Today
Photographers, agents and publishers are up in arms over the latest legal trend that is growing like bacteria within their industry. New York's Chrysler Building, San Francisco's Transamerica Tower, Daytona Beach, and Cleveland's Rock and Roll Hall of Fame have all been the subject of trademark challenges brought by their owners against photographers and publishers who incorporated original images of each of these properties in posters or advertisements. Reliable sources say that the Dallas Chamber of Commerce has even claimed trademark rights in the Dallas skyline. Will Camden Yards and the Legg Mason Building be next?
Of the reported cases, my favorite is a suit brought by Cleveland's Rock and Roll Hall of Fame against photographer, Charles Gentile, because he sold posters bearing his photo of the Museum and the moniker "Rock 'N Roll Hall of Fame". He signed the posters and did not mention the Museum anywhere on the poster but yet he was sued. The basis of the suit was trademark infringement and unfair trade competition. In essence, the Museum attempted to obtain a monopoly to commercialize any image of its distinctive building.
The Museum alleged that its I.M. Pei-designed building was unique and inherently distinctive, and the court did not disagree. In fact, the Museum had even registered the building's design for trade and service mark purposes with the State of Ohio. Similar applications for protection of the design were pending with the United States Patent and Trademark Office. The Museum registered the service mark, THE ROCK AND ROLL HALL OF FAME in 1988 with the PTO.
The Museum contended it had actually used THE ROCK AND ROLL HALL OF FAME and its building design as trademarks. By selling the poster bearing the words ROCK 'N ROLL HALL OF FAME and the photo of the Museum, Gentile, the Museum alleged, had infringed its marks. Gentile claimed that he was entitled to sell photos of the building and that his photo did not serve as a trademark.
Believing that sale by Gentile of a poster bearing the design of the building, and a very close imitation of the service mark, was likely to confuse consumers into believing that the posters either originated with the Museum or that the Museum had authorized the posters, a U.S. District Court sitting in Cleveland enjoined the sale of the offending posters.
Key exhibits in the Museum's case were a $20 poster sold by the Museum featuring a photo of its unique building at sunset and postcards and t-shirts with varied depictions of the building. The Museum's poster was markedly different from the photographer's, as it featured an elevated photo of the building taken from afar on the Museum's opening night. Red carpet led from the Museum's front door and all the lights of the Museum were lit. In contrast, Gentile's photo was shot from a closer distance and from ground-level when the Museum was closed. It was merely a photo of a distinctive building that had become a Cleveland landmark. Both photos were of the highest artistic quality, the court found, but they were very different from one another.
The Museum's poster was clearly marked to show that its purveyor was the Museum. Gentile's photo was marked with his name and the name of his production company. The t-shirts and postcards from the Museum's gift shop contained photos or drawings of the building. Some photos were similar to the photo on the Museum's poster, but others depicted totally different views of the building.
Appealing issuance of the injunction, Gentile argued that his photo on the poster was not a trademark use of the Museum's building design and his use of the words ROCK 'N ROLL HALL OF FAME was merely descriptive. The Court bought the argument.
The Court reasoned that when it viewed Gentile's poster and his photo of the Museum, it did not readily recognize Gentile's photo of the Museum as an indicator of a source of sponsorship. In other words, it was merely a photo of a well-known, well-recognized building.
Nevertheless, it is possible for the Museum or any other owner of a landmark property to use its building to serve as a trademark. But where the court rightfully struggled was over the lack of evidence presented at trial that people had cause to recognize the building's design as a trademark. And it was unlikely that the design in this case would function as a trademark because of the inconsistent use of the design of the building on the various items sold by the Museum.
The Museum sold postcards and t-shirts bearing the design of the building and each was different from the other. On some products the front of the building was photographed or drawn; on others it was the rear of the building. On posters, still another photo was used. There was no consistency. As a result there was not a consistent and distinct commercial impression created by the Museum as an indicator of a single source of origin or sponsorship.
Or to say it another way, the Court would not allow the Museum to establish a trademark in every conceivable photograph that would depict the visage of the Museum's famous building. As the court held:
Consistent and repetitive use of a designation as an indicator of source is the hallmark of a trademark.
Without consistent and repetitive use secondary meaning cannot be established, and without secondary meaning there will be no trademark.
Any owner of a famous building, whether Camden Yards or the Chrysler Building, who wants to establish trademark rights in its property should heed this ruling. The owner should select the absolute best visage, or two, and not deviate from reproduction and exploitation of this vantage point on commercial merchandise. Then, when an infringer markets a commercial product bearing a photo similar to that used by the owner on its products, or in connection with its services, or uses that photo in an ad, the trademark's owner will be able to enforce its trademark rights because secondary meaning will be established.
James B. Astrachan is a principal at the Baltimore firm of Astrachan, Gunst, Goldman & Thomas, P.C. Mr. Astrachan is a former chair of the Maryland Bar Association's Intellectual Property Law Committee.
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