Despite the impression you might get around here, being a big company doesn’t mean you have to always be wrong — or even always be the pursuer — in an IP dispute. Take, for instance, this situation, as described by the opinion handed down last week by the Second Circuit Court of Appeals:
Many might associate the phrase MY LIFE. MY CARD. with advertisements for the American Express credit card featuring celebrity cardholders like Robert De Niro and Tiger Woods. But before American Express Co. (American Express) made the phrase famous, Stephen Goetz, the president of Gardner Design Group, LLC (Goetz), used a virtually identical slogan in a sales pitch to credit card companies. Goetz’s idea was to personalize credit cards by reproducing photographs selected by cardholders on the face of their cards. In search of clients, Goetz sent proposals to various credit card companies, including American Express, containing a description of his concept and the catchphrase My Life, My Card.
In response to American Express’s MY LIFE. MY CARD. campaign, Goetz demanded the company cease and desist using the slogan. American Express responded by commencing the instant declaratory judgment action in the United States District Court for the Southern District of New York before Judge Lewis A. Kaplan seeking a declaration that it had not misappropriated the slogan and that Goetz lacked a viable claim for infringement. In a judgment entered on February 24, 2006 the district judge granted summary judgment to American Express and dismissed Goetz’s counterclaims for misappropriation and trademark infringement.
So Goetz, this poor zhlub, goes from credit card company to credit card company with his idea. They mostly tell him to get lost. Certainly American Express does. But the calendar pages turn and… there’s his phrase! They aren’t using it the way he had in mind, but doggone it, using it they are!
And he’s thinking he’s just found some pin money. He may do better in a lawsuit, even after paying what would at best be a contingency fee, than the deal he would have swung. His Slogan. Their Money.
Unfortunately, the charge does not, as they say, “go through.” Read More…