Clever slogan, yes. Trademark, no.

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.” Amex sues him first — goodbye contingency fee. And he never had a trademark: He had an idea, says the Second Circuit:

[T]he title of a song might identify that song in the marketplace, but the musical composition itself would not perform that function; thus, while the title may be protectable by trademark, the composition would not be. EMI Catalogue P’ship, 228 F.3d at 63. Further, a mark that does not perform the role of identifying a source is not a trademark. See id. at 64.

Notably, the same mark that performs this source-identifying role in one set of hands may constitute the creative work itself in another. Such distinction often is appropriate when an advertising agency licenses a slogan to a client for the client’s use in marketing a product. In this scenario, the slogan is part of the advertising agency’s creative work, but it may become a source identifier when used by the client. . . .

In the present case, construing all the facts in Goetz’s favor, the only reasonable conclusion that can be drawn is that My Life, My Card was a component of Goetz’s business proposal to the credit card companies rather than a mark designating the origin of any goods or services he offered to them.

According to Goetz, he believed that the phrase My Life, My Card would “perfectly embody what card consumers sought.” Yet, for the obvious reason that Goetz did not sell credit cards, he never displayed the slogan to card consumers. Instead, he offered the slogan as a complement to the card personalization concept and software he proposed to sell and, in this respect, his claim is no better than that of an advertising agency that offers its clients a marketing concept to enhance their sales.

A good lawyer making an aggressive claim to capture rent from a big company? Depending on the fee arrangement, either no – fee – unless – you – recover, or mighty expensive.

A Circuit Court that understands trademark law and smells a shakedown? Priceless.

UPDATE:  Excellent treatment of trademarks in slogans here.