Tag Archives: Edifice Complexes

Trademark City

Originally posted 2006-11-15 01:03:47. Republished by Blog Post Promoter

The Strategic Name Development blog reports that the naming rights to the New York Mets’ new baseball stadium have been sold to Citigroup. The stadium will be called “CitiField” and the privilege of that garish plug will cost Citigroup $20 million a year, or the cost of a grade-A free agent. The blog post has a great rundown on alternative “Citi” names that were considered, as well as a roundup of back-page and other learned reactions.

Trademark CityCitiGroup is itself a metropolis of trademark issues. The CitiGroup Center, which is right out the window of my office (over my shoulder in the picture), is a landmark building, i.e., a de facto trademark for the company on the New York skyline, of which it is one of the leading and tallest lights. In the picture below, taken from the east, you can see how its distinctive angles tower jauntily over the lovable rust-colored “lipstick”-shaped [former] LIKELIHOOD OF CONFUSION Building at 885 Third Avenue. But of course, buildings can’t really be trademarks, can they? If they can be, the CitiGroup Center is.

The building changed names, though, when the company did, so we old-timers still call it the Citicorp Center, just as the MetLife Building will always be the Pan Am Building and of course “Avenue of the Americas” always Sixth Avenue. Citicorp had just changed its own name from First National City Corporation, a successor to its original name of City Bank of New York, later National City Bank; and it has had its hands full for decades managing its “City” trademark identity. (The whole timeline is here if you’re that interested.)

As the SND Blog points out, “Citi” is as good a corporate name you’re going to get for a baseball stadium in New York, much less for a team with name roots as the Metropolitans and offspring in New York sports-team namesmanship such as the Jets*, the Nets** , and — yes, I found a link to confirm my recollection! — the defunct New Jersey Sets team of professional womens’ team tennis. Yes, you can close your eyes and pretend the name is really something as retro as “City Field.” And after all — talk about your generic and your descriptive would-be trademarks — around here when we say “the City” we don’t mean Hoboken.

But the whole idea of a sports stadium named after just another company with a skyscraper is so very un-New York and especially, as one of the blogs linked to in the SND blog notes, unthinkable regarding the ballparks / temples of sport myths — in particular, the fields where the Yankees, Cubs and Red Sox play. But of those three, only one, Yankee Stadium, is called after the team itself, the one with the most profound brand equity (not to mention equity equity) in the country, and perhaps the world. And yet they’re tearing down the House that Ruth Built (ah, Ruth – another trademark hyperlink in itself!), and supposedly anything could happen; heck, another season of carrying A-Rod and his paycheck five games into the playoffs and they could end up as the New York Yahoos! or Bronx eBays or something.

It’s the best we can make of a world where everything’s for sale, I suppose. It’s not as if there were anything special about Shea Stadium, either architecturally or as a name. Plus no one could really hit in that darned place. Anyway, that’s life in the big Citi.

* More name-and-geographical-designation confusion: Those are the “New York Jets,” who like the “New York Giants” play in “Giants Stadium” in New Jersey scant miles across the Hudson River but who once played under roar of the JFK Airport flightpath at Shea Stadium, the Mets’ outgoing home.

** Now of New Jersey too but who originally played in the New Jersey of New York.

The Sound of silence

Originally posted 2009-04-24 19:21:32. Republished by Blog Post Promoter

Michael Atkins is beside himself with intellectual-property-enforcement sounders-logofrustration about the use of an image of the Seattle Space Needle — a tall pointy building what they have there instead of skyscrapers — on the logo of some foreign-sport team called the Sounders:

Which of course brings me to trademark law. In particular, what’s up with the Sounders’ use of the Space Needle in its logo? As previously discussed, the Space Needle logo is a registered trademark owned by the Space Needle Corporation. The Space Needle Corporation owns two registered design marks (here and here). Just a few years ago, the company brought suit to enforce rights in its design marks against an onion ring maker that used an altered version of the Space Needle in a print ad (an onion ring replaced the Space Needle’s observation deck). Now it appears the company has licensed use of its design to the Sounders, doesn’t care about this use, or has stopped enforcing its rights.

488px-early_photo_of_seattle_space_needleFar be it from me to needle him over something like this, but I’m surprised Michael doesn’t sound out the possibility that The Space Needle Corporation doesn’t have any rights to license, care about or enforce in the image of its hamburger-on-stilts tower in the first place.

Buildings are not trademarks.  Registering two particular renderings of your building as a trademark doesn’t bootstrap the structure’s likeness into a trademark.  Neither does suing someone else and claiming it is one, unless you get a court to agree with you.

Which it shouldn’t!

Pro shutterbug’s guide to IP

Originally posted 2007-07-04 22:04:10. Republished by Blog Post Promoter

Here’s a good excerpt from a new book by copyright doyenne Nancy Wolff called The Professional Photographer’s Legal Handbook. It’s on a favorite topic of mine, namely intellectual property rights (supposed ones, that is) in buildings:

A three dimensional building will rarely serve as a trademark. An owner of a mark needs consistency to create a trademark. The building must be shown in the same angle on all brochures, advertising, marketing material, etc. Other museums or entities learning a lesson from Rock & Roll Hall of Fame may begin using the same image of their building consistently and over time build trademark rights. An example of the consistent use of a building as a trademark is the stylized illustration of the Transamerica pyramid as a logo for the insurance company. Use of the logo would constitute trademark infringement by a competitor, but showing the building in a skyline photo of San Francisco would not.

Nancy Wolff gets it! And if I were a professional photographer (and sometimes I wish I were), I’d get her book.


Pure evil

Originally posted 2008-02-25 23:03:50. Republished by Blog Post Promoter

And it doesn’t even exactly involve the Red Sox:

Various buildings overlook Wrigley Field, home of the Chicago Cubs. Entities unrelated to the Cubs operate businesses on those buidlings’ rooftops, charging admission and selling food and drink during Cubs games. The Cubs have sued some of these businesses for, among other things, falsely suggesting endorsement by the Cubs

Not surprising. MLB is one of the worst abusers of the IP laws, by the way. More here. And here. Incidentally, it’s unquestionably also one of the biggest victims of infringement.

But our mothers all taught us that two wrongs don’t make a right, right?

Manchester Cathedral, you’re driving me crazy

Originally posted 2007-06-14 11:42:55. Republished by Blog Post Promoter

Manchester Cathedral, Winchester Cathedral – same thing. We’ve written in the past — well, not us, there is only just me here; sorry — about the dubious concept of trademark rights in building exteriors. Now Bill Patry writes about a proposed copyright lawsuit by the Church of England, which does not object to violence against Jews, who have it coming to them, but gets the vapors over virtual gunfights being depicted in its magnificent hallowed (and hollow) halls:

Manchester Cathedral

Various UK sources ran stories yesterday about the Church of England’s pique over Sony’s Playstation 3 alleged replication of the interior of the Manchester Cathedral as a dropback in a gunfight in the game “Resistance: The Fall of Man. (HT to Bruce C. in the frozen north). Andrew Mills has a fantastic, very detailed piece on the story, here, including a YouTube link to the sequence in question.

The Church of England has threatened to sue Sony after the Japanese company used Manchester Cathedral as the backdrop to the gunfight in the PlayStation 3 game Resistance: The Fall of Man.

It could have a case, lawyers say.

In general, [however], the outside of a well-known building is not considered to be protected under the law, Tom Frederikse, an intellectual property specialist with Clintons, the law firm, said.

Patry points out that under Section 120(a) of the Copyright Act, U.S. law, which does protect copyright in archtectural works, nonetheless explicitly permits “the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.” He notes that the question of whether the interior of a building could be “ordinary visible from a public space” is one he had not considered, and he’s considered a lot. Of course the building is publicly accessible, as he points out, but it seems a bit churlish to reward the building’s owner for making its space accessible by deeming that space itself “public” and thereby denuding him of rights he otherwise would have.

Well, that’s American law, anyway. Manchester Cathedral is in another country; regarding UK law on this topic, one British lawyer quoted by Patry explained,

“If a computer game developer is copying a landmark there generally isn’t a problem,” Mr Frederikse said. “But if a developer were to use details from inside a new building they will run into real trouble if they don’t have permission.”

This is not a new building. The Manchester Cathedral is built on foundations that were in place about a century before Columbus’ voyage. Even Disney doesn’t get copyright for that long. Yet.

UPDATE:  On a related issue — iconic buildings, intellectual property, and, of course onion rings — you want to super-size that?

Trademarks mean something different up there, I guess

Originally posted 2007-01-29 17:00:27. Republished by Blog Post Promoter

Can a building be a trademark? Can a photo of a building be a trademark? Can a drawing based on a photo of a building be a trademark? I’d be inclined to answer no, no, maybe.

Well, when the Supreme Court of your local country says it is, the answer is yes, it seems. One more reason to be glad we’re Americans (not “North Americans”), I guess. As the offending blogger, TheCourt.ca, put it, “one takedown message from the Supreme Court of Canada is… interesting; two would be unfortunate.” Yes, it would be — in more ways than two!

Hat tip to Library Boy.

Edifice of absurdity

Originally posted 2007-11-09 12:27:39. Republished by Blog Post Promoter

Via Boing Boing ArchitectureChicago reports that the Marina City Towers condominium association is claiming “common law copyright” on the landmark Chicago buildings’ “name or image.” As blogger Lynn Becker asks,

What kind of idiot do you have to be to actually insert the phrase “under Federal and Illinois law,” when copyrights are a federal protection, and have nothing to do with state law? Then there’s the inconvenient fact the condo owners only own the top 40 floors of each 60-story tower. Exactly how can they claim to own a copyright to “Marina Towers” when the first 20 stories of the towers, and the other structures of the commercial complex, are owned by someone else? And then there’s the matter of exclusivity. Upon a quick Googlecheck, here are just a few of the other “Marina Towers” throughout the world.

Well, Lynn, that’s just the upper towers of it. We’ve discussed building trademarks — copyrights almost certainly don’t even come into this, regardless of what the condo association says, though that is not to say they never can — at some length on this blog in the past (also here). But the image of a building cannot be protected by copyright, and no one can stop another person from describing the Marina City towers as the Marina City towers — certainly not under copyright or trademark law.

I am not admitted in Illinois, though I went to law school there — can someone tell me if there is some legal surprise the rest of us are not aware of in the Land of Lincoln?

UPDATE:  “Common law copyright”?  Don’t laugh so fast!

MORE from ArchitectureChicago.  And here is a discussion of the concept of “freedom of panorama.”

Copyright’s absolute liability?

Michael Ratoza of U.S. IP LAW reports (via @BeelJDPhD) on a case that issues a somewhat stunning ruling for those of us, such as LIKELIHOOD OF CONFUSION®, who have never really thought about the question of common-law indemnification for copyright infringement — or, worse, who have thought about it a little and assumed it must exist.


see more Lolcats and funny pictures

It doesn’t.  Maybe.

The story:  A builder was sued for copyright infringement for selling a house constructed on plans it had purchased from a third party but which, it turned out, had in fact been copied, without permission, from another set of plans which happened to have been protected by copyright owned by a competing developer.

In attempting to defend itself, the builder brought indemnification claims against the seller of the counterfeit plans. He argued that the seller committed fraud and misrepresentation in selling plans that the seller knew were wrongfully copied. The court dismissed the indemnification claims because there is no right of indemnity for copyright infringement.

The court pointed out that there is no indemnity right included in the Copyright Act, and that the Copyright Act preempts conflicting state law. As such, state indemnity law does not apply. In any event, it is federal common law, not state common law, that applies in a copyright proceeding. Federal common law is very limited and does not include the right of indemnity for violation of federal law.

Outside of the building context, this case raises anew the obvious problem faced by the buyer of goods that turn out to be counterfeit. How can the innocent buyer of counterfeit goods protect itself from liability when the seller fails to disclose that the sold goods were wrongfully copied?

And sellers usually will fail to disclose that sort of thing, after all.   Maybe.

I found this language a little odd:

The court pointed out that there is no indemnity right included in the Copyright Act, and that the Copyright Act preempts conflicting state law. As such, state indemnity law does not apply.

Well, wait.  If there is no indemnity right, there is nothing to preempt, is there, unless the Copyright Act explivity forbids indemnification (which it does not)?  It turns out, in fact, that I’m not the only one who sees it this way:

Unlike claims of contribution, courts have upheld state law claims for indemnification, arising out of state common law or statute. In Foley v. Luster,249 F.3d 1281 (11th Cir. 2001), the Eleventh Circuit upheld against a preemption argument, a state common law claim to indemnification. As with contribution claims in copyright cases, the right of indemnification was asserted as a cross-claim. After the plaintiffs settled , the cross-claim went forward, with a jury finding indemnification was required. A post-trial motion to dismiss on the ground of preemption was filed and denied. The Eleventh Circuit affirmed the denial, holding that the extra element test for preemption did not apply, allegedly, because indemnification “does not concern the rights of a copyright holder. Rather, it concerns the allocation of responsibility between copyright infringers.”  But that is true of contribution too, the right to which has been held preempted. . . .

This does not mean, however, that the right to indemnification for paying infringement damages is preempted. It is my opinion, such a right is not preempted because the right or remedy is not equivalent to any granted under the Copyright Act and does not arise under the Copyright Act: once payment is made to the copyright owner, the federal interest in extinguished.

That’s not just any opinion out there, disagreeing with the Eleventh Circuit’s rationale but agreeing with its holding — it’s Bill Patry‘s.

So, the case I first thought Michael was writing about was KBL Corp. v. Arnouts, 2009 WL 302060 (S.D.N.Y. 2009), from February of this year (opinion here).  Interestingly, the court there disagrees with Patry’s link between contribution and indemnifiction, citing Conrad v. Beck-Turek, Ltd., Inc., 891 F.Supp. 962, 966 (S.D.N.Y.1995), and after dispensing of the contribution argument analyzes the indemnifcation on its own merits.  But its rationale in denying indemnification is based on a peculiarity of New York indemnification law:

The defendants argue that the plaintiff has failed to state a claim for indemnification, because indemnification may only be implied under common law where the party seeking indemnification was without fault, and the plaintiff was not without fault in the conduct that led to its losses in the Betz litigations.

The parties do not dispute that the right to indemnification would be available to the plaintiff if it could meet the requirements for indemnification under New York State common law. Because the validity of this assumption does not affect the outcome of the case, the Court analyzes whether the plaintiff can state a claim for indemnification pursuant to the requirements of state law.  However, it should be noted at the outset that courts holding that a state law right to contribution is unavailable in connection with a federal statutory scheme that does not itself provide for contribution, often apply the same analysis to state law claims for indemnification in connection with a federal statute that does not itself provide for indemnification. . . . In this case, the plaintiff cannot establish that it was without fault with respect to the underlying injuries to Betz. According to the allegations in its own Complaint, the plaintiff knew that the plans at issue in both Betz lawsuits originated from designs that belonged to Betz, even before it gave the plans to the defendants for modification and approval.

That’s the “maybe” I meant before — sometimes, bad guys do disclose their bad acts. So, it’s like this, I guess: Read More…