Previously on Antigenerictrademark.com (which in this context will fulfill a temporary literary role as a soap opera), we chronicled the drama that is the debate over protection of culturally significant buildings from the unfair “encroachment” of camera-wielding tourists. The plot unfolds something like this: buildings, as pieces of practical artwork, meticulously designed to evoke a visual aura, are seen by designers as sculptural works, to be protected by copyright against profiteering infringers who exploit the creativity of someone else. But the wrinkle in giving copyright protection to buildings is that a copyright, being a monopoly, would seem to rob society of its fullest enjoyment of the work (including tourists, photographers, and others); their motive may not be to exploit the design of the building itself but instead is a contribution of something original themselves, which happens to incorporate the visual representation of the building. The evil antagonist in all of this are the over-zealous rights holders who seek to contort the essence of copyright to extend to the protection of something beyond merely the design of the building: the symbolism of the building and its renowned. After all, who cares if you take photos of some obscure office park and use the pictures in your own soap opera drama?
The issue of association between certain symbols and a particular source is, of course, the essence of trademark law. The logic of protecting symbols used by an owner to allow consumers to identify the source of their goods and services is fairly straightforward: we protect the associations that consumers make when they see a symbol in the marketplace. It helps promote fair competition, but it is also a way to protect consumers and prevent purchase decisions based on misinformation (such as a counterfeit mark). The logic is that if a symbol is associated with one source, consumers will receive goods or services that meet the level of quality that have always been associated with that symbol.
Can any type of symbol function as a trademark? Certainly. After all, the statutory language is fairly broad in what a person can use to identify their wares: “any word, name, symbol, or device, or any combination thereof” just so long as the symbol actually identifies and distinguishes the goods. The words identify and distinguish go to the ability of consumers to associate a product with a source. What good is a symbol if it can’t identify the source of goods?
So trademarks have a commercial component to them that copyrights do not have. As the U.S. Supreme Court held in an old case from 1918: “there is no such thing as property in a trademark except as a right appurtenant to an established business or trade in connection with which the mark is employed” United Drug Co. v. Theodore Rectanus, Co., 248 U.S. 90, 97. This means that even if you are using a symbol to point to you as the source, it has to be used as a trademark in commerce. Ornamental (or call it, artistic) use as a design feature to appeal solely to the visual expectations of a consumer is insufficient to create a trademark. Yes, trademarks are legal rights that have selfishly linked themselves to the un-artistic aims of profiteering and business protection.
Understanding this, you might not be surprised to learn that the mere physical appearance of a building is not enough to serve as a trademark. It all depends on the use of that building as symbols for goods and services. Buildings can of course be commercial symbols, and not just in a colloquial sense. Just look at the following examples where buildings have been used as trademarks:
Transamerica Corp. (incorporating a silhouette of the Transamerica pyramid in San Francisco)
9/11 Museum and Ground Zero (incorporating the silhouette of the Twin Towers in N.Y.C.)
Citibank logo (the top logo is an image of the Citibank tower in N.Y.C. and the bottom logo incorporates this symbol)
Each of these logos makes the physical representation of a building a trademark for a particular type of good or service. In some cases (the Transamerica Corporation and Citibank), the specific building design has become exclusively associated with a specific company. Because the buildings are of such unique designs, you might say that the building are inherently distinctive. Moreover, they are used in commerce by each company to demarcate the specific goods of the company. For these reasons, the company can prevent others from using the symbols as indicators of source, meaning as trademarks. In other words, the companies could each stop somebody from taking a picture of the different buildings and using them as the logos for services that overlap (or nearly overlap) with those offered by the trademark owner.
But what about building designs that, while distinctive, are not used by some company as a trademark? This issue was addressed awhile back by the court in a case involving the Rock and Roll Hall of Fame and Museum. In that case, a professional photographer took a great picture of the museum at sunset and sold prints of the picture for $40 to $50. The poster also included the words ROCK N’ ROLL HALL OF FAME, CLEVELAND, OHIO. The Rock and Roll Hall of Fame argued that the picture of the building infringed on the museum’s trademark rights in the building. At issue in the lawsuit was whether the Rock and Roll Hall of Fame museum building itself was actually used as a trademark by the museum. True, the museum had taken many pictures of the building and sold its own posters, t-shirts, and other touristy types of keepsakes. However, the images of the building were always different (taken from different angles, for different events, and different shades of lighting highlighting different external features of the building). For these reasons, the building design itself was never used consistently and distinctly in such a way that they could make a commercial impression on a consumer. In other words, a consumer would have no reason to suspect that any goods bearing an image of the Rock and Roll Hall of Fame Museum came from the museum itself.
If you think about it, this decision makes a lot of sense. In the case of a landmark, millions of people may take pictures of the statue of liberty each year. Still millions more may take a picture of the New York City skyline from New Jersey. Some of these images may be reproduced in the form of a poster or mouse pad (how many of these have you seen in tourist traps in New York City?) The New York State Department of Economic Development won’t (or at least shouldn’t
, they have been rather zealous defenders of the “I ♥ NY” trademark) bring down the hammer on every reproduction of the skyline across every conceivable product. People suddenly wouldn’t “♥ NY” anymore, especially because they feel their intelligence has been insulted by the Department who apparently thinks a consumer can’t tell the difference between your typical tourist throw-away and an official product from the New York Economic Development authority. Just because an item embodies the New York City skyline doesn’t mean it all came from the New York Economic Development department (or even that it came from New York itself, as the logo for “Streets of New York”, a local hometown eatery in Phoenix, AZ of all places, shows below).
Apply this reasoning to any other landmark: the Eiffel Tower, Sears Tower in Chicago, or the Space Needle in Seattle. Simply taking a picture of the landmark and putting it on your own items is not going to be enough to raise the ire of the almighty trademark gods. Copying a silhouetted logo of the same landmark that is used by someone else as a trademark well, you could have problems.