Tag Archives: MTA IP

Best of 2012: Cole Haan’s and the MTA’s subway trademark stories

First posted April 16, 2012.

I’ve been following the IP obsession of New York’s Metropolitan Transit Authority for a while now, including past efforts to maintain control over the use of the iconic subway-line symbols as trademarks.  I expressed particular skepticism that the MTA was in much of a position to complain about any unauthorized misuse of the marks once it had permitted and promoted that use in connection with “NYC Condom.”

Amazing to consider it, but that post was written (gulp) five years ago, almost to the day.

But half a decade later, the issue came up when I stepped into a Lexington Avenue train (the East Side line — of course) festooned exclusively with display ads for kind-of-fancy shoe maker Cole Haan, again integrating the famous letter-in-a-colored-circle logos to spell out all sorts of things — including, naturally:

That’s COLE HAAN, of course — spelled CQLE HAAN (with a “Q”) because there’s no “O” train. Read More…

Cole Haan’s and the MTA’s subway trademark stories

I’ve been following the IP obsession of New York’s Metropolitan Transit Authority for a while now, including past efforts to maintain control over the use of the iconic subway-line symbols as trademarks.  I expressed particular skepticism that the MTA was in much of a position to complain about any unauthorized misuse of the marks once it had permitted and promoted that use in connection with “NYC Condom.”

Amazing to consider it, but that post was written (gulp) five years ago, almost to the day.

But half a decade later, the issue came up when I stepped into a Lexington Avenue train (the East Side line — of course) festooned exclusively with display ads for kind-of-fancy shoe maker Cole Haan, again integrating the famous letter-in-a-colored-circle logos to spell out all sorts of things — including, naturally:

That’s COLE HAAN, of course — spelled CQLE HAAN (with a “Q”) because there’s no “O” train.

One ad using this element of what I learned is called the “Subways Stories” campaign is shown here in a screenshot from the Cole-Haan website (I can’t find it online now), borrowed from one of many fashion and advertising blogs that conveyed its appreciation of the campaign, including one that Cole Haan paid to run Subway Stories ads on.

This kind of campaign is what the ad agency that sells them, CBS Outdoor, calls a “brand train.”  It is meant to be interactive; “On Cole Haan’s Facebook page, fans can read and submit “Subway Stories” and images of the new collection,” which it is hoped (not too seriously) will look these professional ones.  The ads were placed throughout the MTA display ad empire — on station signs and everything else you can festoon with ads — as well as “brand trains.”

As the Luxury Daily blog reports, “Cole Haan used New York because it is a city that ‘never settles.’ The brand vows that as long as it moves, Cole Haan will move with it, according to various testimonies on its marketing.”  Which is fine for “Cqle Haan” — I mean, okay, New York is really the “City that never sleeps,” not “never settles,” but whatever.  For the MTA, however, a moving brand identity is less good.

First, as I said with respect to the condom ads, the MTA, which is the only possible claimant in the train symbols because it provides the services with which they are connected, “is not New York City.”  Even to the extent you wanted to argue, and it has been done,  that the MTA and “the City of New York” — i.e., the municipal entity — are interchangeable (or something), the Cole Haan campaign is not about city services.  It’s about the concept of “New York City.”  So the MTA is at the very least a partner in the dilution of its own alleged trademarks, twice in five years running ad campaigns by which consumers are bidden to associate the respective letters, not to specific train lines, but with “New York City.”

It would also be hard to make an argument that this arrangement, if indeed it is part of a license that actually addresses the use of any MTA trademarks — none of the ads I’ve seen contains a trademark claim or disclaimer — is a merchandising-type license, which would encompass use on unrelated goods under the language of the Lanham Act, as amended, that includes products or services  affiliated, connected, sponsored, associated with or approved by the mark owner.  Here the Cole Haan ads are the authorized use; the logos are not being placed on other products or services.  And the ads are not for uptown, downtown or even crosstown subway service.  They’re Cole Haan ads for Cole Haan products utilizing the MTA logos.

Anyway, as I argue here, “sponsorship” or “affiliation” still requires some plausible connection between the mark and the product — if it doesn’t, such use renders trademark rights meaningless except as rights in gross. Under American law, of course, such “rights” as applied to supposed trademarks aren’t rights at all.

So, fine.  I think this is a creative, fun and — obviously — buzz-making ad campaign that benefits Cole Haan and the MTA.  The latter not only generates ad revenue, but also develops a funky and stylish brand association both on the Cole Haan side and with respect to the more realistic association of the MTA symbols in general with, in fact, the Big Apple itself, separate and apart from their utilitarian functions as subway-line identifiers.  If the sacrifice is the MTA’s ability to enforce its putative trademark claims against others who want to make that association, that seems worthwhile.  At this point the MTA train symbols are, more than ever, hard to see as protectible trademarks.

It would be a shame, of course, if the MTA ignored all this and used its budget-free legal department, or that of the City of New York, to prevent less-well-funded enterprises from using the symbols anyway.  But for a municipality that is busy telling us what we can eat, what hungry people can eat and all the other fine-grained thing we need Mike Bloomberg’s advice about — why, who could imagine spending taxpayer dollars on who slaps an A, B or C on cap or t-shirt?

But if you see something, say something — I’d like to know.  Just click: 

Contact Ron Coleman

Best of 2010: If you see something… it’s probably “trademarked”

First published on May 12, 2010.

If You See Something, Say Something

See me, squeal me

A while ago, while obsessing about New York’s Metropolitan Transportation Authority and its obsession with turning what might have once merely been viewed as functional municipal signage or insignia into “IP ,” I made fun of the MTA’s trademark application (since approved) for IF YOU SEE SOMETHING, SAY SOMETHING.

So in light of last week’s Times Square bomb-thingy, who’s laughing now?  Not the New York Times, in an article about the phrase’s elevation to “iconic,” including an interview with sloganeer extraordinaire Allen Kay:

“The model that I had in my head was ‘Loose Lips Sink Ships,’ ” Mr. Kay said. “I wasn’t born [yet] during World War II, but I sure knew the phrase and so did everybody else.”

“In this case,” he added, “I thought it was ironic because we want just the opposite. We want people to talk. I wanted to come up with something that would carry like that. That would be infectious.”

In 2002, the transportation agency saw a need for a security-awareness campaign to encourage customers to report suspicious activity or unattended packages, and they turned to Mr. Kay, who still had the phrase on his index card. By January 2003, the slogan was on posters and placards in subway cars, buses and trains.

It has since become a global phenomenon — the homeland security equivalent of the “Just Do It” Nike advertisement — and has appeared in public transportation systems in Oregon, Texas, Florida, Australia and Canada, among others. Locally, the phrase captured, with six simple words and one comma, the security consciousness and dread of the times, the “I ♥ NY” of post-9/11 New York City.

The transportation authority received a trademark on the slogan from the United States Patent and Trademark Office, though unauthorized uses appear to outnumber authorized ones.

That’ll happen with plain old ways to say things in English–once called “phrases” or “sentences,” not “trademarks.”

Did you know, by the way, that you can “receive a trademark” from the PTO?  I didn’t.  I thought they only registered trademarks, which are otherwise earned by use that rises to the level of establishing a secondary meaning!  Silly me.

So the end of that distinction, manifested of course by the common use of “trademark” as a verb, is now official, for it is no longer recognized among reporters or their diligent, triple-checking editorial phalanxes at the Newspaper of Record.  This says it all about what “trademarking” has become, unfortunately; as to “journalism,” well, what do I know?

There’s more: Read More…

New York’s MTA Has an IP Obsession

Originally posted 2005-11-06 11:21:34. Republished by Blog Post Promoter

If You See Something, Say Something
The New York Sun reports that New York’s Metropolitan Transit Authority has filed to register the phrase “If You See Something, Say Something” — its “watch out for presents from the religion of peace” campaign on the New York public transit system — as a trademark. It’s serial number 78696607 on TEAS, the trademark registration database, filed August 19th.  Says the paper:

The move has surprised officials at many transit agencies, who had assumed the phrase, which is now used in various iterations as part of transit security programs from San Francisco to Sydney, Australia, was an industry version of a free download.

It surprised them, but it didn’t surprise LIKELIHOOD OF CONFUSION readers, who for months now have known about the MTA’s obsession with trademarks and copyrights! Others have noticed, too. Someone at the agency — could it be that unfriendly C-and-D-meister Lester Freundlich, who’s also the attorney of record on this application? — has identifed IP as a possible licensing profit center.

Look, no question they need the money, and IP exploitation could offer a great return on us turnstile jockies. Why, the rat I saw scurrying across the tracks of the E train last week at what should be the MTA’s showpiece station — Times Square — was so large that it’s scandalous that it didn’t have the MTA logo smartly emblazoned on its side. No way any two-legged denizens of subterranean Gotham would get away with that.  And we don’t. Priorities!!

UPDATE:  They got it.

Taking the IP Train

Originally posted 2005-06-09 14:53:00. Republished by Blog Post Promoter

The New York Times reported (yes, reg. req.) last week that New York’s Metropolitan Transit Authority is scrambling to enforce trademark rights in its wide array of iconography, including the famous alphanumeric train symbols known to all New Yorkers.

MTA Subway Train Symbols

Evidently powered by the MTA’s burgeoning licensing program, it’s not a bad idea. No question but that these and the many other powerful symbols used by the transit system are excellent communicators of source, quality and all those other trademarky things. The New York transit system, especially the subway, is an entire subculture unto itself. In other words, don’t be surprised if there’s some pushback on this new, and somewhat belated, attempt to kind of privatize, or revenue-ize, a world that generations of people think of as “everybody’s” property.

Of course, the libertarians remind us constantly, and accurately, that when something is everyone’s property, it is ultimately treated like no one’s property at all — which “everyone” ends up paying for. Still and all, there is an interesting trademark policy issue in here somewhere. It’s one thing to say that services aren’t free and that even when, as in the case of the MTA, they succesfully address significant externalities, their costs should not be unduly disconnected from users. But it’s another thing to say that, however revenue-starved, a public institution (in the broad sense of the word) such as the MTA should restrict the public, much less the bloggy, enjoyment of a public iconography such as the train number symbols and the image of the classic subway token.

In other words, if you get a C&D letter from the MTA, give me call, won’t you?

If you see something… it’s probably “trademarked”


If You See Something, Say Something

See me, squeal me

A while ago, while obsessing about New York’s Metropolitan Transportation Authority and its obsession with turning what might have once merely been viewed as functional municipal signage or insignia into “IP ,” I made fun of the MTA’s trademark application (since approved) for IF YOU SEE SOMETHING, SAY SOMETHING.

So in light of last week’s Times Square bomb-thingy, who’s laughing now?  Not the New York Times, in an article about the phrase’s elevation to “iconic,” including an interview with sloganeer extraordinaire Allen Kay:

“The model that I had in my head was ‘Loose Lips Sink Ships,’ ” Mr. Kay said. “I wasn’t born [yet] during World War II, but I sure knew the phrase and so did everybody else.”

“In this case,” he added, “I thought it was ironic because we want just the opposite. We want people to talk. I wanted to come up with something that would carry like that. That would be infectious.”

In 2002, the transportation agency saw a need for a security-awareness campaign to encourage customers to report suspicious activity or unattended packages, and they turned to Mr. Kay, who still had the phrase on his index card. By January 2003, the slogan was on posters and placards in subway cars, buses and trains.

It has since become a global phenomenon — the homeland security equivalent of the “Just Do It” Nike advertisement — and has appeared in public transportation systems in Oregon, Texas, Florida, Australia and Canada, among others. Locally, the phrase captured, with six simple words and one comma, the security consciousness and dread of the times, the “I ♥ NY” of post-9/11 New York City.

The transportation authority received a trademark on the slogan from the United States Patent and Trademark Office, though unauthorized uses appear to outnumber authorized ones.

That’ll happen with plain old ways to say things in English–once called “phrases” or “sentences,” not “trademarks.”

Did you know, by the way, that you can “receive a trademark” from the PTO?  I didn’t.  I thought they only registered trademarks, which are otherwise earned by use that rises to the level of establishing a secondary meaning!  Silly me.

So the end of that distinction, manifested of course by the common use of “trademark” as a verb, is now official, for it is no longer recognized among reporters or their diligent, triple-checking editorial phalanxes at the Newspaper of Record.  This says it all about what “trademarking” has become, unfortunately; as to “journalism,” well, what do I know?

There’s more: Read More…

Trademarks — and Copyrights — in the Public Interest?

Originally posted 2005-09-26 18:31:09. Republished by Blog Post Promoter

Wired News reports:

Transit officials in New York and San Francisco have launched a copyright crackdown on a website offering free downloadable subway maps designed to be viewed on the iPod. . . .

More than 9,000 people downloaded the map, which was viewable on either an iPod or an iPod nano, before Bright received a Sept. 14 letter from Lester Freundlich, a senior associate counsel at New York’s Metropolitan Transit Authority, saying that Bright had infringed the MTA’s copyright and that he needed a license to post the map and to authorize others to download it.

Not very freundlich of Lester, was it?

“I removed it promptly,” said Bright, a design director at Nerve.com. “I’m very aware that they are copyright violations, but I’m not trying to make money or do anything malicious. I’m not in this to piss people off.”

Last week Bright received a similar cease-and-desist letter from officials with Bay Area Rapid Transit, or BART, demanding that Bright remove a map of the San Francisco rail system.

I blogged about this topic in general — the assertion of intellectual property rights in arguably public goods such as train-line symbols — in June. My conclusion then:

It’s one thing to say that services aren’t free and that even when, as in the case of the MTA, they succesfully address significant externalities, their costs should not be unduly disconnected from users. But it’s another thing to say that, however revenue-starved, a public institution (in the broad sense of the word) such as the MTA should restrict the public, much less the bloggy, enjoyment of a public iconography such as the train number symbols and the image of the classic subway token.

In other words, if you get a C&D letter from the MTA, give me call, won’t you?

The issue here is not quite the same. It is narrower, and deals only with the copyright in the maps. But in a broader sense, it is the same: Should these public authorities, ostensibly in the business of helping people get around, be more interested in rent seeking than in … helping people get around?

I don’t think so.

UPDATE: Excellent legal analysis, as usual, by Patry.

BUT WAIT, THERE’S MORE:  How did the MTA’s ad department let this past the boys in legal?!

Light at the end of the tunnel

StationStops reports that the MTA has backed off at least part of its obnoxious “IP enforcement program” and undone some of the damage the agency caused between the company and Apple:

Finally, 2 weeks after MTA sent a priority request to re-instate StationStops for iPhone, Apple has finally put our application back for sale in the iTunes app store.

StationStops for iPhone – (iTunes Link)

My battle with MTA over the app lasted 2 months, and cost me approximately $2500 in legal fees and lost sales royalties, as well as occupying pretty much all of my work time with legal, political, and media action for 2 months.

Gosh, I wonder if anyone at MTA will feel any of the consequences for this.

Not really.

MTA’s way or the highway

I’ve been watching these guys at the MTA and their IP enforcement program for a while now.  Once was for a client, who, regrettably, didn’t want to fight.

  • I first picked up on this over four years ago, when I wrote,

The New York Times reported (yes, reg. req.) last week that New York’s Metropolitan Transit Authority is scrambling to enforce trademark rights in its wide array of iconography, including the famous alphanumeric train symbols known to all New Yorkers. . . .

Still and all, there is an interesting trademark policy issue in here somewhere. It’s one thing to say that services aren’t free and that even when, as in the case of the MTA, they succesfully address significant externalities, their costs should not be unduly disconnected from users. But it’s another thing to say that, however revenue-starved, a public institution (in the broad sense of the word) such as the MTA should restrict the public, much less the bloggy, enjoyment of a public iconography such as the train number symbols and the image of the classic subway token.

  • A few months later I reported on a “crackdown” by the MTA on unauthorized distribution of copyright-protected maps of the subway, and cited Bill Patry, who said, in a similar vein:

There is no statutory bar to protection for original subway maps, therefore. There should, though, be a common sense bar but that, like common decency, is apparently lacking.

  • Later in 2005 I saw the MTA’s overreaching finally exceed the breaking point, when it tried to register trademark rights in this original phrase (they were succesful, too).If you see something say something

 

What, really, is the point?  It’s just your (my) tax money at work.

  • In 2006 I noted a story reporting that — unlike a lot of other copyright, trademark and right-of-publicity owners who have not made a peep — the MTA made those masters of confusion, “Jews for Jesus,” stop using the transit symbols in their underground evangelizing, though in reality, they probably didn’t have to.
  • Then, most recently, I “covered” an item — involving official New York City family planning devices bearing a “subway theme,” regarding which I suggested, somewhat tongue in

cheek, that this would seem to undermine any secondary meaning connecting the subway route symbols and subway routes at all.

This suddenly came to my attention again, when, three weeks ago, the following comment appeared on that two year old post: Read More…

That’s a wrap

Forget about the IP rights in those MTA symbols — you can probably use them however you want, now. (Remember to read my disclaimer on the right, though!)

Almost two years ago I expressed my skepticism about the (New York) Metropolitan Transportation Authority’s aggressive IP enforcement program focusing on the iconic train symbols of the New York City subway system. It’s a short piece so I am going to reprint in whole here:

Taking the IP Train

The New York Times reported (yes, reg. req.) last week that New York’s Metropolitan Transit Authority is scrambling to enforce trademark rights in its wide array of iconography, including the famous alphanumeric train symbols known to all New Yorkers.

subway123

Evidently powered by the MTA’s burgeoning licensing program, it’s not a bad idea. No question but that these and the many other powerful symbols used by the transit system are excellent communicators of source, quality and all those other trademarky things. The New York transit system, especially the subway, is an entire subculture unto itself. In other words, don’t be surprised if there’s some pushback on this new, and somewhat belated, attempt to kind of privatize, or revenue-ize, a world that generations of people think of as “everybody’s” property. Of course, the libertarians remind us constantly, and accurately, that when something is everyone’s property, it is ultimately treated like no one’s property at all — which “everyone” ends up paying for. Still and all, there is an interesting trademark policy issue in here somewhere. It’s one thing to say that services aren’t free and that even when, as in the case of the MTA, they succesfully address significant externalities, their costs should not be unduly disconnected from users. But it’s another thing to say that, however revenue-starved, a public institution (in the broad sense of the word) such as the MTA should restrict the public, much less the bloggy, enjoyment of a public iconography such as the train number symbols and the image of the classic subway token.

In other words, if you get a C&D letter from the MTA, give me call, won’t you?

I did get a call, kind of. I also had a chance to reconsider the issue, and decided that — absent the establishment by Congress of some sort of “public trust trademark” amendment to the Lanham Act — these symbols are about as good a source indicator for a service as you can ask for. A D train goes on the D route on the D schedule. The E train, the F, the 1 the 2 and the 3 — completely arbitrary, yet packed with trademark goodwill. Very enforceable! That doesn’t mean there can’t be fair use, etc. — but prima facie, these would seem to be very good trademarks that designate very specific services boasting particular qualities.

Not any more.

NYC Condoms

Read More…