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Eric Swetsky's legal column published in Marketing Magazine, February 1999
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Rock 'n Roll Legal Heaven
A legal case which shows the reach of trademark law
Where is rock 'n roll heaven? Some might answer--Cleveland, Ohio. At least that's where The Rock and Roll Hall of Fame hangs out. Perhaps believing that the Museum was too laid-back, the Museum commissioned the world-famous architect, I.M. Pei, to redesign the facility so that it would symbolize "the freedom, youthful energy, rebellion and movement of rock and roll music". In September 1995, Pei's creation opened to acclaim. Eye-catching features include a triangular facade of steel and glass, and a fusion of interdependent, odd shaped buildings overlooking Lake Erie.
In 1996, Charles Gentile, a professional photographer, began selling a poster featuring a sunset photograph he had taken of the Museum. Shortly after the Gentile poster hit the market, the Museum sued for trademark infringement basing its claim on an unregistered trademark in its building design. The Museum argued that Gentile's sale of the poster might confuse the public into believing that the poster was produced, or sponsored by, the Museum, when that was not so.
The case is not some quaint, curiosity over the travails of a famous museum, but has a more serious side to it. The importance of the case lies in this question--can a building, as a building, serve as a trademark. There is no doubt that designs of objects can be trademarks, and one need only point to the Coca-Cola bottle as a renowned example that highlights that principle.
However, the thing with the Coke bottle is that the Coca-Cola people use their bottle design to distinguish their cola beverage from the cola beverages sold by others. As the Appeal judge noted in the Rock and Roll Museum case, there was:
"no evidence...which documents or demonstrates public recognition of the Museum's building design as a trademark. Such evidence might be pivotal in this case, but is lacking."
The Appeal judge then commented on what he called the principal difficulty with the Museum's position:
"although the Museum has used drawings or pictures of its building design on various goods, it has not done so with any consistency ...consistent and repetitive use of a designation as an indication of source is ahallmark of a trademark."
The Rock and Roll Museum case therefore highlights two important background points of trademark law, and a third more pressing issue for advertising agencies. First, a trademark must distinguish one's goods and services from another. If it does not, the word, phrase, design or object does not constitute a trademark. For example, the words "Del Monte" will point to their goods as emanating from that vendor as opposed to another vendor.
Second, the case shows that trademarks must be used in a consistent way. The Rock and Roll Museum used different versions of its building on the goods that it merchandised. There is no law that prevents you from having more than one design of your trademark; however, unless at least one consistent version of the mark is used, the trademark may not be capable of gaining the recognition needed to distinguish the seller's goods or services from those of another.
What the case also highlights is that a building may well be capable of serving as a trademark. By way of background, a trademark case involving the use of the facade of the New York Stock Exchange building is presently before the New York courts. To be clear, not all buildings will constitute a valid trademark. However, as the above discussion shows, had the Museum used its building's design in a consistent way, they would have at least been able to get out of the starting gate by showing that there was a possible trademark present that was possibly capable of protection.
The repercussions to advertising agencies of this trademark issue are real--if you use a building as a backdrop in an advertisement, will you be infringing upon the building owner's trademark rights? Arguments may be available that you are not, but is it worth the risk? The upshot of the case is that you just may want to treat a building as you would a living, breathing human being, and obtain a release from the building's owner. Something to think about.
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