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CAN LANDMARKS BE TRADEMARKED?
February 9, 1999
by: Nancy E. Wolff
The following article was first published in the Graphic Artists Guild
newsletter. Ms. Wolff is Counsel for the Picture Agency Council of America
and the article has also been published in the PACA newsletter.
Can you imagine a picture of New York without any landmarks in the skyline? No
Chrysler Building, no Public Library, no Flatiron Building, no Rockefeller
Center? Would designers, illustrators, and photographers then be forced to
create generic skyscraper buildings, using Photoshop to disguise the actual
buildings when depicting, say, a scene of Fifth Avenue at Christmas ? Sounds
far-fetched? Not if you share the opinion of the owners of the New York Stock
Exchange, the Chrysler Building, Rockefeller Center, the Public Library, Radio
City Music Hall, and the Flatiron Building, among others.
Some owners of Manhattan buildings are trying to prevent use of
illustrations or photographs of their buildings on everything from
advertising to note cards and textbooks. The problem is now trickling down to
the illustrator and graphic artist who works either on assignment for a client
or selling stock. Clients are becoming gun-shy in the face of demand letters by
large corporate building owners requiring that creators of images supply
property releases or clear the usage rights. In many cases this simply
results in another type of work being chosen for the job. No own wants to risk
legal action or having to pull an advertisement after it's been created. Few
creators can afford to be caught in a lawsuit over usage rights.
The Liability Bandwagon
Licensing is a grant of a limited right to use a trademark, copyright, or, with
publicity rights, one's name, likeness, or portrait. Licensing has grown into a
multibillion-dollar industry in this country. Trademarks and logos are splashed
on everything -- bags, hats, jackets, jeans, shoes, sunglasses and T-shirts
--so that many Americans look like walking advertisements.
The right of celebrities to control the exploitation of their name, likeness,
and even voice extends well beyond their death. Now the owners of buildings
have jumped on the licensing bandwagon. The owner of the Chrysler Building, for
example, has demanded that Fishs Eddy, a Manhattan tableware store, cease
selling a line of "212" dishes, claiming that the illustration on the tableware
violates its trademark of the Chrysler Building. (The dishes contain
illustrations of iconic buildings from the jazz age, including the renown
Chrysler spire.) The New York Stock Exchange, alleging trademark violation has
sued a casino in Las Vegas for building a model of its facade on their gambling
floor.
This craze to control the "exploitation" of property is not limited to New
York. The artist Karen Nangle, known for her drawings of historic buildings in
Savannah, Georgia, has received demands from the current owner of the city's
Mercer/Williams House to cease distributing her cards of the house based on an
alleged trademark violation. What is next? Will all recognizable property be
off limits? What about your ordinary seaside cottage, barn, or suburban home?
How did we get to this point? Legally, there is very little, if any, basis for
preventing artists, illustrators, photographers, or even souvenir makers from
creating, reproducing, and distributing their interpretation of a building.
Posters, postcards, and replicas of the Chrysler Building have been created for
years without anyone raising so much as an eyebrow.
While copyright protection was extended to buildings a few years ago when the
United States became a member of the international Berne Convention, this
protection is essentially limited to constructing look-alike versions of a
building or nearly identical building. The act specifically provides that the
owner of the copyright to a building which is located in or visible from a
public place cannot prevent third parties from taking or distributing
photographs of the building.
The copyright laws are not the answer to building owners' efforts to control
any photographic or illustrative reproduction of their property. If copyright
is not the answer, what about rights of publicity and privacy? These are the
laws, by either state statute or case law, that prohibit the use of a person's
name or likeness for commercial use. But these laws only protect people, not
property. They were originally based on an area of tort law which evolved to
prevent injury to one's feelings or reputation, such as preventing the
disclosure of private facts about an individual. But a building has no feelings
or reputation which can be injured. Therefore, publicity rights are of no
assistance to building owners in their effort to control exploitation of their
property.
Trademarking a Building?
This leaves only the law of trademark for building owners to rely on. But the
law of trademark is not a perfect fit. Trademarks are indicators, through
design, words, or symbols, of the source of goods or services. If your baseball
cap has a swoosh, you assume that Nike manufactured the hat and you can rely on
its reputation for craftsmanship. Trademarks do not have to be registered in
the United States, but there are some legal advantages. And if you continue to
use a trademark, the rights can last forever, unlike copyright and patents that
offer a limited period of protection. However, if you purchase "212" china from
Fishs Eddy, with illustrations of the Brooklyn Bridge, Grand Central Station,
the Empire State Building as well as the Chrysler Building, would you assume
that the Chrysler Building was the source of the plate? Not likely. But this is
exactly the argument the lawyers for the owners of the Chrysler Building are
making.
Some buildings have distinctive structures or markings that you associate with
a particular business. McDonald's is known for its golden arches. Howard
Johnson's roofs are always orange. These are proper trademark designations.
But the Chrysler Company does not own the Chrysler Building. A real estate
company does. Surely people don't gaze up at the stainless steel spire and
immediately think of Tishman Speyer Properties. Different businesses work on
the many floors. The building as a structure does not represent any particular
good or service. It simply represents what it is: a landmark skyscraper
representative of the art deco period of architecture.
The law in the area of building protection is very sparse. The only case I am
aware of that prevented the commercial exploitation of a photograph of a
structure is a unique case involving the 1964 New York's World Fair. This case,
decided the same year, has never been followed by other courts. The case
involved the still-standing Unisphere on the World's Fair grounds in Queens,
New York. The facts are unusual, making this an example of the legal expression
"bad facts make bad law." The defendant's request for an exclusive license to
publish postcards, albums, and other items using the World's Fair buildings was
denied. Despite that, the defendant went ahead anyway, and the World's Fair
sued and won, despite strong dissent. No legal grounds were given, except that
the court took "judicial notice that the New York World's Fair is universally
acclaimed as one on the world's greatest shows in 1964-1965. In our opinion a
photograph of a unique building, structure or object situated within the
World's Fair grounds, to which an admission fee is charged, is a photograph of
a show in which the plaintiff has a property right." This narrow ruling would
not apply to buildings that are freely visible to the public.
In a more recent case the owners of the Rock and Roll Hall of Fame Museum
brought a case against a photographer, Charles Gentile, who had created a
poster of the museum against a vibrant sunset. Under the poster the words "Rock
and Roll Hall of Fame, Cleveland" appeared. The museum alleged trademark and
unfair competition violations in its complaint, asserting that the building was
a symbol of the rock and roll movement and likened the building to the
protected shape of a coke bottle. The museum initially won a preliminary
injunction, but the decision was ultimately overturned. The appeals court
stated that the museum was unlikely to succeed at trial on its claims and
returned the case to the trial court. The appeals court found that the museum
did not use the building as a symbol or indicator of goods, a requirement of
trademark protection. The use of the name "Rock and Roll Hall of Fame" as a
mere description was likely judged to be fair use.
This ruling makes logical sense. To register a trademark, you must provide the
Trademark Office with specimens of the mark. What is the mark in a building?
What is actually deposited? A drawing of the building from a certain angle?
Almost any illustrator or photographer can depict a building in an unique way.
There are multiple viewpoints and angles from which to view any
three-dimensional property. And what goods or service does the building
represent? It is not like the golden arches where you can rightly assume
hamburgers and french fries are sold.
As yet there is no follow-up decision on the Rock and Roll Hall of Fame case
that provides further guidance. It is clear that owners of landmark buildings
are going to continue to use trademark and any other laws to attempt to
restrict the reproduction of their buildings. No one wants to be left out of
the licensing bandwagon. How the courts will apply the law of trademarks to
building is still in the offing. How this affects creators and publishers of
images in the future is significant. Already publishers are avoiding the
skylines of Dallas, Disneyland, and Las Vegas. The Graphic Artists Guild is
currently working on an action plan to address this issue. Hopefully, the
skylines of our cities and other landmarks will continue to be the subject of
art and design.
Ms Wolff can be contacted at The Law Offices of Nancy E. Wolff,
147 W. 80th Street, New York, NY 10024, Telephone: 212-787-1640, Email: newolff@aol.com.
She is also Of Counsel to The Weinberg Legal Group, a new media, intellectual property
firm in Phoenix, Arizonia.