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.
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.
In just a month, the city gave away five million of its new subway-themed condoms, officials said yesterday. Lest you read past that number unimpressed, consider that that was about two condoms for every man living in the city — more than the city distributed in all of 2003.
This condom was the first designed just for the city, in a wrapper with lettering mimicking the logos of subway lines. First released on Valentine’s Day, the new condom exceeded all expectations, with five million sent out by mid-March.
“I think the key thing is this branding effort,” said Adam Karpati, the assistant city health commissioner in charge of H.I.V. and AIDS programs. “It’s our own brand, it’s a New York City-specific thing, and people really respond.”
I can’t think of a much better case of naked licensing, can you?
“It’s our own brand, it’s a New York City-specific thing, and people really respond.” Really? First of all, is the MTA the same thing as the City of New York’s Department of Health and Mental Hygiene? Of course not. It’s not “our own brand” — press reports acknowledge that this was a licensing agreement. The MTA is not New York City (much less that department!). Thus the first cut — what possible quality control — the sine qua non of legitimate trademark licensing — can the MTA possibly exercise over this product?
Indeed this is an inherent problem when a licensor attempts to extend its good will to areas utterly unrelated to the products and services it is associated with. Read my earlier “reconsideration” above as to why the MTA train symbols were, after all, good trademarks:
[T]hese 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.
From subway cars to condoms? Calling Dr. Freud!
No, sometimes a subway car is just a subway car. What the MTA could have been thinking here will almost certainly come out in discovery in some future case where the MTA tries to enforce its possibly now-impotent rights to the subway symbols against some t-shirt or hat manufacturer who has a good lawyer. Unless they can argue that the MTA is already associated in the public mind with crass promotion of widespread promiscuity, they will wish they’d kept the wraps on this one.