®
Official Journal of the International Trademark Association
Dedicated to the Memory of Alvin Fross
The Lanham Act: Time for a Face-Lift?
Jerome Gilson and Anne Gilson LaLonde
Edifice Complex: Protecting Landmark Buildings
as Intellectual Property—
A Critique of Available Protections and a Proposal
Keri Christ
Functionality Challenges to Incontestable
Trademark Registrations Before and After the
Trademark Law Treaty Implementation Act
Keith M. Stolte
Interpreting the “Exceptional Cases” Provision of
Section 1117(a) of the Lanham Act: When an
Award of Attorney’s Fees Is Appropriate
Christopher P. Bussert
Victor’s Little Secret v. V Secret Catalogue, et al.:
Brief of Amicus Curiae The International Trademark
Association in Support of Respondents
Petitioners’ Brief on the Merits
Brief for Respondents
Vol. 92
September-October, 2002
No. 5
Vol. 92 TMR
1041
EDIFICE COMPLEX:
PROTECTING LANDMARK BUILDINGS
AS INTELLECTUAL PROPERTY—
A CRITIQUE OF AVAILABLE PROTECTIONS
AND A PROPOSAL
By Keri Christ *
I. INTRODUCTION
We shape our buildings; thereafter they shape us.1
Winston Churchill made this remark in a speech to the House
of Commons, which was meeting in 1943 in the House of Lords to
consider whether and how to rebuild the House of Commons,
which had been destroyed in World War II. Ultimately, it was
decided that the House of Commons should be rebuilt, exactly as it
had been, despite its limitations. Following the events of
September 11, 2001, Americans face the same question, now
keenly aware of the symbolic value of the World Trade Center and
how the Twin Towers shaped our lives. Landmark buildings and
public spaces occupy a unique place in the social, cultural,
economic and legal landscape. Skyscrapers and other forms of
landmark architecture are tangible representations of individual
and national character, history and culture. Architects and
historians have long observed the symbolic roles that landmarks
play and the various ways in which commercial corporations
employ landmark architecture for branding purposes.2
Nevertheless, the contours of the intangible property rights in
landmarks have not been fully defined, and current intellectual
* This article is based on the author’s practice while a senior associate at Milbank,
Tweed Hadley & McCloy, New York, New York, Associate Member of The International
Trademark Association. The author wishes to thank partners Peter Windley Herman, John
K. Halvey and Lawrence Lederman for their encouragement and support.
1. Winston Churchill, October 28, 1943, to the House of Commons (meeting in the
House of Lords) quoted in Time, September 12, 1960. See also http://www.winstonchurchill.
org (visited April 7, 2002).
2. See Dell Upton, Oxford History of Art—Architecture in the United States 216
(1998). See Brett Steele, “Brandspace™Design ®esearch and Product Placement,” in Archis
magazine Volume 1, 2001, devoted to architecture and branding, at 1. Steele states that “the
rise of modern architecture during the twentieth century was promulgated upon, and in
many cases directly derived from mass marketing, image making and product identity.” Id.
at 8. Steele is director of the AADRL Design and Research Lab at the Architectural
Association School of Architecture in London and is overseeing a study commissioned by
AOL-CNN Time Warner that poses the question of “how might a company . . . conceive of
architectural space as an extension of its core products—its own well-known media brands?”
1042
Vol. 92 TMR
property laws do not fully and adequately protect the unique,
symbolic aspects of landmarks.
Oddly enough, in the United States the intellectual property
rights in recently constructed architectural works are broader than
those for designated national and local landmark architecture. For
example, a new skyscraper building that is not yet a landmark is
entitled to more protection under the Copyright Act than famous
United States landmarks like the Chrysler Building and the
Empire State Building.3 This is because the Architectural Works
Protection Act of 19904 protects only those buildings constructed
after 1990.
Recently, the owners of landmark buildings have begun to
seek protection under trademark laws to gain control over the use
of the images of their buildings for advertising and trade purposes.
The assertion of control over the use of these icons, which many
consider to be part of the public domain, is controversial. In
evaluating the extent to which commercial exploitation of building
designs ought to be permitted or prevented without the
authorization of the owner of the landmark or its architect,5 the
unrestricted ability to comment upon and interpret these icons for
artistic or scholarly purposes and the desire of advertisers to use
landmarks in image advertising to embellish their commercial
speech are important concerns. Landmarks are desirable images
for their beauty6 and their ability to carry a “psychic load”7 of
positive associations that may complement or reinforce the image
3. The New York headquarters of luxury brand owner LVMH Möet Hennessy was
expressly designed to be a powerful symbol for the company and its style. The building is a
prism of sandblasted and transparent glass that has been described as folding in on itself,
like a woman crossing her leg, and personifies the elegance and sophistication of LVMH and
its brand Christian Dior, which occupies the street level space. See Paul Goldberger, Dior’s
New House, The New Yorker, January 31, 2000, at 88, 90.
4. 17 U.S.C. § 120.
5. See discussion infra of Cecere v. R. J. Reynolds Tobacco Co., 1998 WL 665334.
(S.D.N.Y. September 28, 1998), a case involving a residential building that brings this issue
“closer to home.” The owners and residents of a landmark building tried unsuccessfully to
prevent a tobacco company from using their building to promote a cigarette brand. A case
involving commercial buildings is Sherwood 48 Associates and Super Sign Co. v. Sony Corp.
of America, No. 02 CV 2746, (S.D.N.Y. August 2, 2002), in which Sony Corp. digitally
created a modified version of Times Square for its film Spider-Man, substituting a USA
Today advertising billboard for an actual Samsung billboard in the process. Three owners of
the Times Square buildings and their licensees whose advertisements were replaced were
unsuccessful in their suit for trademark and trade dress infringement, and false
endorsement and trespass. The court stated “As to plaintiff’s claim of confusion—as between
whom was any purchasing decision affected? . . . as to trade dress—these buildings
constantly change their advertisement dress.”
6. The Guggenheim Museum design, a registered trademark, was used with
permission in an advertisement for the Mercury Mountaineer utility vehicle under the copy
“Grace Lives Here.”
7. See 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition,
§ 2:37, at 2-67 to 2-68 (4th ed. 2002).
Vol. 92 TMR
1043
of the product or service being promoted in the consumer’s mind
and help to sell it. In the case of the Chrysler Building, for
example, these positive associations might be said to include the
spirit and innovation of automobile entrepreneur William
Chrysler, the jazz age, the soaring embodiment of the freedom and
opulence of New York, art deco style and the optimism of America
in the first half of the last century. Current United States laws do
not adequately address or reconcile the owner’s understandable
interest in controlling the use of the image and symbolic value of a
landmark building versus significant public and commercial needs
to use, reflect upon and respond to the built environment.
Several recent decisions in the United States utilizing First
Amendment rationales demonstrate that courts are reluctant to
extend trademark protection to landmark building owners that
would permit owners to prevent others from making twodimensional photographs of buildings, and even three-dimensional
replicas for commercial purposes. Several questions arise from
these decisions. Can a landmark serve as a conventional
trademark? What is the policy rationale behind the current lack of
copyright protection for existing landmarks? Is a right that is akin
to a right of publicity more appropriate for protection of
landmarks? If so, does a landmark’s capacity to simultaneously
identify and embody the image and personality of its owner, a
creator, and the place and culture in which it resides properly
qualify for such right of publicity protection?
Architecture is a public art form that interacts with the public
in a unique way. Landmarks create and enhance public spaces,
instill public pride, and account for significant tourism revenue.
Yet, despite the important civic and commercial roles landmarks
play, the tremendous investment made to create them, and the
social benefits reaped from their creation, United States
intellectual property laws do not explicitly protect landmarks from
being reproduced by others for advertising and trade purposes.
The protection available to landmarks under current copyright and
trademark laws is inadequate, perhaps because intangible rights
in landmarks in their use and function are more akin to rights of
publicity. Sui generis legislation granting landmarks explicit
rights of publicity would be beneficial in many respects. For
example, such legislation would provide an incentive for the
creation and conservation of public landmarks, which is in the
public interest. A scheme of protection would promote certainty
and predictability with respect to the scope of protection of
intangible property rights in landmarks, and generate a form of
compensation to the creators and guardians of designated
landmarks, as well as much-needed revenue for landmark
preservation, public education and further development of public
spaces. The social, cultural and historical importance of our built
1044
Vol. 92 TMR
environment mandates that laws be enacted that will begin to
shape the intangible rights in landmarks.
II. LANDMARK DEFINITIONS
Dictionary definitions of the term “landmark” highlight the
public roles that a landmark building plays as: “an object in the
landscape, which by its conspicuousness, serves as a guide in the
direction of one’s course,” “any conspicuous object which
characterizes a neighborhood or district,” an “object which marks
or is associated with some event or stage in a process”;8 and “a
structure of unusual historical, and usually aesthetic interest;
especially one that is officially designated and set aside for
preservation.”9 Typical legal definitions of the term similarly
define a “landmark” with reference to its historic or aesthetic
significance to the city, state or nation where it is located, and its
longstanding presence there.10
Many privately owned landmarks are publicly accessible, and
they anchor and define neighborhoods and other public spaces.11
Both public and private landmarks have been defined by state law
to include buildings, as well other structures, sites, artworks and
objects of real property, including interior architectural features12
interior landmarks,13 exterior architectural features,14 scenic
8. Oxford English Dictionary (2d ed. 1989). http://www.dictionary.oed.com.
9. Merriam-Webster’s Collegiate Dictionary 672 (9th ed.1990).
10. New York City, NY, Admin Code § 25-302(n) defines a landmark as “[a]ny
improvement, any part of which is thirty years old or older, which has a special character or
special historical or aesthetic interest or value as part of the development, heritage or
cultural characteristics of the city, state or nation.”
11. For example, in New York we refer to the neighborhood around the Flatiron
Building as the “Flatiron District” and Rockefeller Plaza is a public thoroughfare, although
it is privately owned.
12. New York City, NY, Admin Code § 25-302(l) defines “interior architectural feature”
as the “architectural style, design, general arrangement and components of an interior,
including but not limited to, the kind, color and texture of the building material and the
type and style of all windows, doors, lights, signs and other fixtures appurtenant to such
interior.”
13. New York City, NY, Admin Code § 25-302(m) defines an “interior landmark” as
“[a]n interior, or part thereof, any part of which is thirty years old or older, and which is
customarily open or accessible to the public, or to which the public is customarily invited,
and which has a special historical or aesthetic interest or value as part of the development,
heritage or cultural characteristics of the city, state or nation, and which has been
designated as an interior landmark pursuant to the provisions of this chapter.”
14. New York City, NY, Admin Code § 25-302(g) defines “exterior architectural feature”
as “[t]he architectural style, design, general arrangement and components of all of the outer
surfaces of [a building, structure, place, work of art or other object constituting a physical
betterment of real property or any part of such betterment], as distinguished from the
interior surfaces . . . including, but not limited to, the kind, color and texture of the building
material and the type and style of all windows, doors, lights, signs and other fixtures
appurtenant to such [building, structure, place, work of art or other object constituting a
physical betterment of real property or any part of such betterment].”
Vol. 92 TMR
1045
landmarks15 and landscape features.16 Thus, the concept of a
private exclusive right to use images of landmarks seems at first
glance to be at odds with the common conception of a “landmark”
as a form of public, rather than private, property.
This article uses the term “landmark” to refer specifically to
buildings having a special historical, aesthetic, educational or
cultural character, and that either (1) are used in connection with
a commercial enterprise, or (2) are closely connected or associated
in the public mind with a natural or juristic person, including any
city, state or nation, firm, corporation, institution, union,
association or other organization. Currently, to qualify for
protection under trademark, unfair competition or right of
publicity rationales, a landmark must be used in connection with a
business or associated with an individual or entity.17 A landmark
that is connected in the public’s mind with a particular entity,
nation or individual may be entitled to protection analogous to a
right of publicity under federal trademark law and under at least
one state’s law.18
“Cultural heritage objects” are those objects that express or
represent the cultural identity of a society in a particular period.19
In addition to being symbols of companies and institutions,
landmarks are arguably a type of “cultural heritage object”
associated with a specific city, state, nation and culture. The terms
“cultural built heritage” and “cultural capital” are used to refer to
parts of the built environment that a contemporary culture decides
has cultural value and merits special protection. The
conceptualization of landmarks as “cultural capital” meriting
special protection may assist in defining the competing interests
15. New York City, NY, Admin Code § 25-302(w) defines a “scenic landmark” as “[a]ny
landscape feature or aggregate of landscape features, any part of which is thirty years old or
older, which has or have a special character or special historical or aesthetic interest or
value as part of the development, heritage or cultural characteristics of the city, state or
nation and which has been designated a scenic landmark pursuant to the provisions of this
chapter.”
16. New York City, NY, Admin Code § 25-302(p) defines “landscape feature” as “[a]ny
grade, body of water, stream, rock, plant, shrub, tree, path, walkway, road, plaza, fountain,
sculpture or other form of natural or artificial landscaping.”
17. An example of a landmark used in connection with a commercial enterprise is the
New York Life Insurance building that is used to promote insurance services.
18. For example, the façade of New York’s landmark Metropolitan Opera House is
associated with the non-profit Metropolitan Opera Association, Inc.
19. See David Throsby, Seven Questions in the Economics of Cultural Heritage, in
Economic Perspectives on Cultural Heritage 15 (Michael Hutter & Ilde Rizzo eds., St.
Martin’s Press 1997) (citing F. Berkes & C. Folke, A Systems Perspective on the
Interrelations between Natural, Human-made and Cultural Capital, 5 Ecological Economics
1, 1-8 (1992)); Christian Koboldt, Optimizing the Use of Cultural Heritage, in Economic
Perspectives on Cultural Heritage, id. at 50, 51-53 (citing D.R. Vaughn, The Cultural
Heritage: An Approach to Analyzing Income and Employment Effects, 8 Journal of Cultural
Economics, 1 (1990)).
1046
Vol. 92 TMR
involved and the scope of publicity protection that should be
extended to landmarks.
III. ISSUES SURROUNDING USE AND
PROTECTION OF LANDMARKS
The inability to control the commercial use of a landmark’s
image may affect the landmark owner’s ability to maintain the
value of the landmark as real property. Many landmarks function
as commercial office buildings and substantial value lies in the
higher rents that their owners are able to command from tenants
who are willing to pay for the cachet of office space in a landmark
building.20 However, if the landmark image is associated in
commercial advertising with “ballet shoes, whiskey and
brassieres”21 the unique cachet of the building may be lost. Being
featured in films such as King Kong, Godzilla and An Affair to
Remember may increase the fame and notoriety of a landmark
building, encourage tourists to visit the building and even have a
beneficial effect on its value as a prestigious business address.
However, use of the building design in the merchandising for a
film without any compensation to the owner could be seen as a
form of free riding on another’s good will.
Even the use of a landmark building to promote consumer
products, without any affirmative suggestion of association or
sponsorship, may have a negative impact on the prestige and
reputation of the building and discourage certain potential
customers. Moreover, the use of the building as the trademark of a
company having no association with the building may lead to
consumer confusion and deception as to the company’s business
address or its connection with the building. It also may
compromise the building owner’s ability to attract tenants willing
to pay for the image and prestige of a building of which others
have free use. The use of the building on controversial goods and
services also may offend the public for whom the building has a
special meaning or status. As a result, landmark owners have
routinely objected to the unauthorized use of their building designs
for products and services, under the theory that such use threatens
the reputation of the landmark, seeks to free ride on the image and
20. As a recent Chrysler Building advertisement so aptly puts it, “Some Buildings
Speak for Themselves.”
21. Lowell C. Wadmond, Vice Chairman of the Board of the Metropolitan Opera
Association, Inc. Memorandum Re A. Int 4356, Pr. 4621 dated March 30, 1961, to John
Robert Brook Chairman of the Judiciary Committee of the New York State Assembly, and
letter dated March 30, 1961, to Governor Nelson A. Rockefeller.
Vol. 92 TMR
1047
good will of the building, or infringes the owner’s trademark
rights.22
Protection of the private interests in landmarks may be seen
as encroaching upon the significant public interests in the use of
landmarks as cultural property. Increasingly, however, countries
outside the United States have taken steps to recognize and
protect intellectual property rights in cultural property,23 while in
the United States, owners of certain cultural property, such as
Native Americans, have had to seek refuge under the trademark
law in the absence of any special intellectual property protection
for cultural property.24
22. The Rock and Roll Hall of Fame Museum sought to protect its right to recoup its
investment in the museum design through use of the design as a trademark for
merchandise, and sued to prevent a photographer from selling a poster of the building. See
Rock and Roll Hall of Fame v. Gentile Productions, 134 F.3d. 749, 755 (6th Cir. 1998). The
New York Stock Exchange sued to prevent a casino from using its famous façade to promote
its gambling and casino services. See New York Stock Exchange, Inc. v. New York, New
York Hotel, LLC, 69 F. Supp. 2d 479, 484 (S.D.N.Y. 1999), aff’d in part and rev’d in part,
293 F.3d 550 (2d Cir. 2002). The Sea Pines golf course successfully sued the owners of a
“parody” golf course that copied its famous lighthouse hole. See Pebble Beach Co. v. Tour 18
I Ltd., 155 F.3d 526, 541 (5th Cir. 1998). The owners of the Saratoga race course took action
against sellers of souvenir merchandise featuring its grandstand. See New York Racing
Assoc., Inc. v. Perlmutter Publishing, Inc., 959 F. Supp. 578, 582 (N.D.N.Y. 1997). The
owners of the Chrysler Building in New York have objected to various unauthorized uses of
the overall building design, the spire design, and the art deco elevator design, including a
crude rendition of the building in a china pattern by Fish’s Eddy, a New York retailer of the
china pattern. Fish’s Eddy not only benefited from the free use of the landmark image, but
also received free national advertising and widespread publicity when the dispute was
reported to the press. See David D. Kirkpatrick, “No T-shirts! Landmark Buildings
Trademark Images,” Wall Street Journal, June 10, 1998, at B1; David W. Dunlap, A
Building as a Trademark, New York Times, October 24, 1999, § 11, at 1. See also, “The Dish
on the Chrysler Building,” New York Magazine, July 13, 1998, at 8. An opposition and
federal trademark infringement lawsuit were both filed to enforce trademark rights in the
Flatiron Building design against a Silicon Alley venture capital company that filed a
trademark application for the building’s distinctive cornice design, and subsequently agreed
to withdraw the application and license its use. See Newmark & Co. Real Estate, Inc. v.
Flatiron Partners, Opposition No. 114, 144, filed April 5, 1999, and Newmark & Co. Real
Estate Inc. v. Flatiron Partners, No. 99 Civ. 9315 (S.D.N.Y., filed August 30, 1999).
23. For example, Australia and New Zealand have implemented protection for the
symbols, products, know-how and practices that make up the collective heritage and culture
of their indigenous peoples. See Aboriginal and Torres Strait Islander Commission (ATSIC)
website http://www.atsic.gov.au/default_ie.asp (visited June 30, 2000). ATSIC, Australia’s
main Indigenous agency, has established an Indigenous Cultural and Intellectual Property
Task Force to implement recommendations from a 1997 report authored by Indigenous
lawyer Terri Janke of solicitors Michael Frankle & Co. entitled, “Our Culture, Our Future:
Report on Australian Indigenous Cultural and Intellectual Property Rights.” See also,
Bulun Bulun and Anor v. R&T Textiles Pty. Ltd. DG3 of 1996, Federal Court of Australia,
Northern Territory District Registry, discussing the inadequacies of statutory remedies
under the Copyright Act as a means of protecting works of communal ownership.
24. For example, in 1998, after the Zia Tribe of New Mexico unsuccessfully opposed the
trademark registration of its sacred sun symbol by a motorcycle tour company in Arizona,
Congress ordered the USPTO to study how the official insignia of Native American Tribes
might be better protected under trademark law. See Title III of Pub. L. No. 105-30. The Zia
symbol has been used on the state flag as well as on license plates and portable toilets. The
USPTO presented its report to Congress in November 1999, recommending that a
1048
Vol. 92 TMR
Although a cultural heritage object, such as a landmark, may
be considered to be “collectively” owned by the culture in which it
resides, there is often an individual or group who is its primary
caretaker, who acts as the custodian or guardian.25 In the United
States, this “public guardian” role is arguably dispensed through
various restrictions upon the use or potential for development of
landmarks and the significant maintenance and preservation
obligations that go along with ownership of buildings with
landmark status. Landmark owners in the United States are
compensated for carrying out these responsibilities through grants,
subsidies and tax exemptions. In addition to the public investment
in the physical maintenance of landmarks there is a corresponding
need to invest in the “communicative maintenance” of landmarks
as cultural heritage objects. The lack of any clearly defined rights
in the design or image of a landmark and unfettered commercial
use of landmarks for advertising and trade purposes may be
disruptive of this goal.26
The uniqueness of landmarks as cultural heritage objects that
are part of the “cultural commons” may explain, in part, the public
resistance to recognizing an owner’s rights to unilaterally restrict
the public use of landmarks.27 It may also underlie the United
States Congressional limitation of exclusive copyrights in
architecture built before 1990 in the United States Copyright Act
and the unwillingness of domestic and foreign courts to allow
landmark owners to control the reproduction and commercial
exploitation of landmarks under trademark law. Cultural heritage
regulation usually aims at removing objects of cultural heritage
from the commercial sphere and reserving them for purposes of
searchable database of the official insignia of Native American tribes be established to
assist the USPTO examining attorneys in making determinations of registrability and to
educate the public. See USPTO press release dated January 23, 2001, at
http://www.uspto.gov/web/offices/com/speeches/01-05.htm The Zia tribe’s attorney also
sought to have the symbol expressly protected through an amendment to trademark law
that would preclude registration of tribal symbols under § 2(a) of the Lanham Act.
25. See Bulun Bulun, supra n.23, which discusses the Yolngu aboriginal people of
Australia use of the term “Djungayi” to refer to the person responsible for safeguarding the
integrity of the tribal land and the body of knowledge, including artistic designs. This role
has been translated as “meaning manager.” See also Michael Hutter, Introduction to
Economic Perspectives on Cultural Heritage 8 & n.7 (Michael Hutter & Ilde Rizzo eds., St.
Martin’s Press 1997).
26. Regulation of the use of landmark images could also provide important data
regarding the public’s willingness to pay for the use of cultural heritage, how cultural
heritage objects are used and the ways in which they are recast and reinterpreted. See
Throsby, supra n.19, at 15-18.
27. See, e.g., Kirkpatrick, supra n.22; David W. Dunlap, What Next? A Fee for
Looking? New York Times, August 27, 1998, at F1; Dunlap, A Building as a Trademark,
supra n.22; David Usborne, New York Patents Skyline View, The Independent (London),
September 3, 1998, News Section at 15; David W. Dunlap, Who Owns N.Y. Skyline? Check
the Fine Print, International Herald Tribune (Neuilly-sur-Seine, France), September 1,
1998, Feature Section at 20.
Vol. 92 TMR
1049
contemplation, reflection and enjoyment.28 A right of publicity to
protect against unauthorized commercial exploitation of a
landmark’s image could be designed that would take this concern
into account, and limit undesirable restrictions upon the public’s
right to employ landmark images that might result from granting
full protections under copyright and trademark laws.29
IV. THE CURRENT PROTECTION SCHEME
A. International, National, State and
City Protection of Landmarks
United States landmarks are recognized and protected under
national, state and local laws, as well as international laws and
treaties. However, none of these laws or treaties expressly
addresses the right to control the use of the landmarks’ images or
designs. The grant of an exclusive right to control the commercial
use of landmark images is entirely consistent with the stated
purposes of such laws and treaties, which include (1) the
promotion of the use of landmarks for the education, pleasure and
welfare of the public, (2) the adoption of laws necessary for the
protection, conservation, presentation and rehabilitation of
cultural and natural heritage, and (3) the protection and
enhancement of landmarks as tourist attractions.
There are numerous laws and treaties granting landmarks
status and protection. For example, the UNESCO World Heritage
List is a list of sites of cultural and natural heritage, such as manmade and natural sites, monuments, architectural works, groups
of buildings, and sculpture that are of outstanding value from the
point of view of history, art or science.30 The inclusion of a site on
the World Heritage List requires the consent of the State in which
28. Hutter, Introduction to Economic Perspectives, 3, 8.
29. An opposing view is that laws are not needed to ensure the stability of cultural
heritage objects. One commentator questions whether the fact that people need stability in
the core meanings of cultural objects necessarily means that laws are needed to ensure that
stability: “[m]any cultural objects retain stable meanings even when they are unprotected.
Examples might be the Statue of Liberty, . . . Mount Rushmore, and the Eiffel Tower. The
Statue of Liberty has been recoded into hundreds of provocative images . . . yet [it] retains a
core set of meanings as a symbol of democracy, the promise of America, and the city of New
York. Despite some vulgar recodings, the Eiffel Tower remains an elegant symbol of Europe,
France, Paris, and romance.” Justin Hughes, “Recoding” Intellectual Property and
Overlooked Audience Interests, 77 Texas Law Review 923, 961 (1999).
30. The World Heritage list was established under terms of the Convention Concerning
the Protection of the World Cultural and Natural Heritage adopted in 1972 at the General
Conference of the United Nations Educational, Scientific and Cultural Organization
(UNESCO). There are 157 state parties to the Convention, each of which recognizes the
duty of ensuring identification, protection, conservation, presentation and transmission to
future generations of the cultural and natural heritage situated in its territory. See
UNESCO website at <http://www.unesco.org/whc/world_he.htm> (visited June, 2001).
1050
Vol. 92 TMR
it resides.31 There are currently 690 properties in 122 countries on
the World Heritage List. There are 20 World Heritage Sites in the
United States.32 Another list of protected properties is the National
Register of Historic Places,33 a list of United States properties
designated under The National Historic Preservation Act34 that
have achieved significance in United States history, architecture,
archeology, engineering, and culture within the past 50 years, and
which are of “exceptional importance,”35 and considered to be
worthy of preservation. Properties listed on the National Register
include districts, sites, buildings, structures and objects nominated
by governments, organizations, and individuals because of their
31. See UNESCO, Convention Concerning the Protection of the World Cultural and
Natural Heritage, November 16, 1972, art. 11, UNESCO Doc. 17/C/106, available at
<http://www.unesco.org/whc/world_he.htm>. Under Articles 5(a), 5(d), 16, 17 and 27, each
member endeavors to (1) take the appropriate legal, scientific, technical, administrative and
financial measures necessary for the identification, protection, conservation, presentation
and rehabilitation of the cultural and natural heritage situated on its territory; (2) integrate
the protection of that heritage into comprehensive planning programs; (3) make
contributions to the Word Heritage Fund every two years; (4) “consider or encourage the
establishment of national public and private foundations or associations whose purpose is to
invite donations for the protection of the cultural and natural heritage” and (5) endeavor by
all appropriate means, and in particular via educational and informational programs, to
strengthen appreciation and respect by their peoples of the cultural and natural heritage as
defined by the Convention.
32. See link to The World Heritage List at http://www.unesco.org/whc/world_he.htm>
(visited June, 2001). The list includes Independence Hall in Pennsylvania, the Statue of
Liberty in New York and Monticello and the University of Virginia, in the United States;
the Taj Mahal and the Churches of Goa in India; Chartres Cathedral, and the Palaces of
Versailles and Fontainebleau in France; the Leaning Tower of Pisa in Italy; Vatican City;
the Ashante Traditional Buildings in Ghana; the Bauhaus in Germany; the Maya Site of
Copan in Honduras; Buda Castle in Hungary; the City of Brasilia in Brazil; Borobudur
Temple compound in Indonesia; the Historic Monuments of Kyoto in Japan; the Old City of
Jerusalem and its Walls in Israel; Machu Picchu in Peru; the Kremlin and the Red Square
in the Russian Federation; the Great Wall of China; the Rock-hewn Churches of Lalibela in
Ethiopia; Blenheim Palace in the United Kingdom; and the Hué Monuments in Vietnam.
33. The National Register was created by the National Historic Preservation Act of
1966, 16 U.S.C. § 470, and is part of a national program “to coordinate and support public
and private efforts to identify, evaluate, and protect our historic and archeological
resources.” The National Register is administered by the National Park Service, which is
part of the United States Department of the Interior. See National Park Service, National
Register of Historic Places http://www.cr.nps.gov/nr/about.htm (visited June, 2001). There
are more than 70,000 listings that make up the National Register. National Register
properties are documented and evaluated according to uniform standards. A listing in the
National Register contributes to preserving historic properties in a number of ways,
including formal recognition that a property is of significance to the nation, the state, or a
community, as well as (1) consideration for federal or federally assisted projects; (2)
eligibility for federal tax benefits; and (3) qualification for federal assistance for historic
preservation.
34. National Historic Preservation Act of 1980, 16 U.S.C. § 470 et seq (1966), amended
1980 36 C.F.R. § 63 (NHPA). The NHPA offers little in the way of affirmative protections.
See Gregory A. Ashe, Reflecting the Best of Our Aspirations: Protecting Modern and PostModern Architecture, 15 Cardozo Arts & Entertainment Law Journal 69, 82-83 (Spring
1997).
35. See 36 C.F.R. § 60.4 (2000) (detailing eligibility criteria for exceptions).
Vol. 92 TMR
1051
significance to the United States, to a state, or to a community
within the United States. One organization dedicated to the
protection of historic buildings and provision of education and
advocacy with respect to historic preservation is the National
Trust for Historic Preservation (NHTP), a private, nonprofit
organization. The NHTP currently licenses rights to its collection
of historic buildings to generate revenue for preservation.36
The landmark preservation laws of New York City are typical
of those of individual states and municipalities. The primary
method of achieving the City’s goals is not by acquisitions of
historic properties, but rather by involving public entities in landuse decisions affecting these properties and providing services,
standards, controls, and incentives that will encourage
preservation by private owners and users.37 New York City has
articulated the purposes of its landmarks preservation law as
follows: to (a) effect and accomplish the protection, enhancement
and perpetuation of landmarks and landscape features and of
districts which represent or reflect elements of the city’s cultural,
social, economic, political and architectural history; (b) safeguard
the city’s historic, aesthetic and cultural heritage, as embodied and
reflected in such landmarks; (c) stabilize and improve property
values in such districts; (d) foster civic pride in the beauty and
noble accomplishments of the past; (e) protect and enhance the
city’s attractions to tourists and visitors and the support and
stimulus to business and industry thereby provided; (f) strengthen
the economy of the city; and (g) promote the use of historic
districts, landmarks, interior landmarks and scenic landmarks for
the education, pleasure and welfare of the people of the city.38
While the control or management of aspects of a landmark’s image
and status as a cultural object would seem to be consistent with
these purposes, issues involving the use of a landmark’s name,
likeness, or reputation are not explicitly addressed by the New
York City landmark preservation law, which covers some of the
most famous landmarks in the United States.
36. See the National Trust website (visited June 2001) <http://www.nthp.org/main/
abouttrust/licensing.htm>. The United States Congress chartered the National Trust in
1949. It has six regional offices and oversees twenty historic sites. The National Trust has
granted licenses to manufacturers of home furnishings, decorative arts and giftware to
reproduce objects from the collections of its historic house museums and to develop products
which are adaptations or inspirations based on architectural and decorative motifs within
its collections. The licensing program earns income to support the National Trust and its
mission to educate Americans about their cultural heritage and the benefits of historic
preservation.
37. Penn Central Transportation Co. v. New York City, 438 U.S. 104, 98 S. Ct. 2646
(1978).
38. New York City, NY, Admin Code §§ 25-301(b), -302(i), (n).
1052
Vol. 92 TMR
B. Inadequacy of Current Landmark Statutes
Landmark statutes generally provide owners with tax credits,
government funding, loans and grants for preservation. These
statutes also strictly regulate the construction, reconstruction,
alteration and demolition of landmarks.39 They do not grant
owners any right to regulate the use of a landmark for advertising
or trade purposes and offer little in the way of affirmative
protection. Yet such laws obligate a landmark owner to keep a
property in good repair, and subject violators to fines and
imprisonment.40
State landmark and historic preservation laws and regulations
are not preempted by the United States Copyright Act, which
expressly states that it does not annul or limit any rights or
remedies under common law or state law with respect to “state and
local landmarks, historic preservation, zoning, or building codes
relating to architectural works.”41 Accordingly, states may enact
legislation protecting certain intangible rights in landmarks. Such
legislation could be designed to encourage socially responsible use
and increased accountability in the deployment of landmark
images for advertising and trade purposes.42 It would also be
beneficial to enact legislation to clarify some of the ambiguities of
the Copyright Act’s provisions on architectural works,43 such as
further definition of the kinds of “two dimensional pictorial
representations” that are exempted from the Architectural Works
Protection Act of 1990; to grant an express, limited right
prohibiting unauthorized registration of landmarks as trademarks;
and to designate safe harbors for certain artistic representations of
landmarks.44
39. See generally National Historic Preservation Act of 1980, 16 U.S.C. § 470 et seq
(1966), amended 1980, 36 C.F.R. § 63.
40. See New York City, NY, Admin Code §§ 25-311, -317(b).
41. Architectural Works Protection Act § 705; 17 U.S.C. § 301(b)(4).
42. See Throsby, supra n.19, at 13, 18-21. Throsby discusses the need for government
intervention and policies, including the definition and enforcement of property rights to
remedy a perceived “market failure” in the cultural heritage area, citing Preserving the
Built Heritage: Tools for Implementation (J.M. Schuster & J. de Monchaux eds., University
Press of New England 1997). See also Michael Madow, Private Ownership of Public Image:
Popular Culture and Publicity Rights, 81 California Law Review 127, 202 (1993) for a
discussion of the consumer protection argument that publicity rights may foster restraint
and social responsibility in the deployment of powerful celebrity images in “image
advertising” which does not involve deception or misrepresentation. Social benefits that
might be gained by the creation and definition of intangible rights in landmarks, include a
source of revenue to finance maintenance, preservation, development and public education
efforts with respect to cultural property.
43. See infra Part IV.C.2. for detailed discussion of the Architectural Works Protection
Act of 1990.
44. At least one commentator has advocated that Congress carve out a safe harbor for
certain artistic representations of landmarks in public places in the Lanham Act. See Lee B.
Vol. 92 TMR
1053
C. Intellectual Property Protection For Landmarks
1. Protection Under United States Trademark,
Trade Dress and Unfair Competition Law
a. Trademark Definitions
In the United States, a trademark is defined as any word,
name symbol or device used to identify and distinguish goods or
services, including a unique product or service, from those
manufactured, sold or rendered by others, and to indicate the
source of those goods and services, even if that source is
unknown.45 The recognition of the role that ephemeral, dynamic
and evanescent sensations play in brand awareness has led to the
expansion of the definition of what constitutes a mark to include
certain types of sensory marks, such as colors, scents and sounds,46
as well as product packaging and product configuration, and the
combination of any of these things, also referred to as “trade
dress.”47 Landmarks may be a type of sensory mark requiring
special regulation and registration procedures.
Trademark registrations have been sought and in many
instances obtained for landmarks used in connection with various
goods and services, including movie theaters,48 museums and
historic houses,49 sports stadiums,50 commercial real estate,51
banking services,52 insurance underwriting and financial analysis
Burgunder, Commercial Photographs of Famous Buildings: The Sixth Circuit Fails to Make
the Hall of Fame, 89 TMR 791 (1999).
45. 15 U.S.C. § 1127.
46. Sensory marks are referred to in Trademark Manual of Examining Procedure
(TMEP) §§ 807.03(b), 808.01, although the term is not defined in the Lanham Act or in the
TMEP.
47. See 15 U.S.C. § 1127 (2000); Qualitex Co. v. Jacobson Products Co., 514 U.S. 159,
172-73 (1995).
48. Mann’s Chinese Theater, Trademark Exam. Dep’t of the United States Pat. & Tm.
Office, July 27, 1999, Reg. No. 2,263,968.
49. Rock & Roll Hall of Fame, Cleveland, Ohio, Trademark Exam. Dep’t of the United
States Pat. & Tm. Office, November 11, 1997, Reg. No. 2,112,793; Frank Lloyd Wright,
Fallingwater, Pa. (July 15, 1997, Reg. No. 2,079,356); Tennessee Aquarium (April 23, 1996,
Reg. No. 1,970,427); Monticello, Thomas Jefferson Memorial Foundation (April 18, 2000,
Reg. No. 2,342,042); Biltmore Estate, Asheville, N.C. (January 28, 1992, Reg. No.
1,673,704), Mercer House, Savannah, Georgia, (July 22, 1997, Reg. No. 2,080,950).
50. Yankee Stadium, Trademark Exam. Dep’t of the United States Pat. & Tm. Office,
filed June 17, 1998 (façade, Serial No. 75/505,795; aerial view, Serial No. 75/505,796).
51. Chrysler Building, New York City, Trademark Exam. Dep’t of the United States
Pat. & Tm. Office, registered November 20, 1979, Reg. No. 1,126,888; 30 Rockefeller Plaza
(filed Sept. 18, 1998, Serial No. 75/555,242, abandoned August 6, 2001); Wrigley Building,
Chicago (registered February 11, 1997, Reg. No. 2,037,110); Empire State Building
(registered February 27, 2001, Reg. No. 2,430,828).
52. Citicorp Building, New York City, Trademark Exam. Dep’t of the United States
Pat. & Tm. Office, August 7, 1984, Reg. No. 1,289,338.
1054
Vol. 92 TMR
and consulting services,53 securities exchange and stock market
services,54 retail stores,55 vineyards,56 libraries,57 universities,58
laboratories.59 Famous landmark buildings in New York and other
landmarks throughout the world have been registered or applied
for by their owners as trademarks.60
53. Transamerica Corporation, San Francisco, Trademark Exam. Dep’t of the United
States Pat. & Tm. Office, January 10, 1995, Reg. No. 1,872,759; December 20, 1994, Reg.
No. 1,868,077; October 11, 1994, Reg. No. 1,857,878. New York Life Insurance Company,
New York City (registered February 13, 2001, Reg. No. 2,428,100).
54. New York Stock Exchange, Trademark Exam. Dep’t of the United States Pat. &
Tm. Office, March 30, 1993, Reg. No. 1,761,655.
55. Bergdorf Goodman building and plaza, Reg. No. 866012, registered March 11, 1969,
Harrod’s in stylized form underneath a two dimensional representation of the facade of the
building, Serial Nos. 76/135392 and135395, filed September 26, 2000.
56. Robert Mondavi Winery, Oakville, California, Trademark Exam. Dep’t of the
United States Pat. & Tm. Office, August 6, 1985, Reg. No. 1,353,179. Biltmore Estate,
Trademark Exam. Dep’t of the United States Pat. & Tm. Office, December 11, 1990, US
Reg. No. 1,627,491. Chateau Latour, Societe Civile Du Vignoble De Chateau Latour Civil
Company France Pauillac, Gironde, France, Trademark Exam. Dep’t of the United States
Pat. & Tm. Office, January 12, 1965, Reg. No. 0783329.
57. National Library of Medicine of the United States Dep’t of Health & Human
Services, Bethesda, Md., Trademark Exam. Dep’t of the United States Pat. & Tm. Office,
October 14, 1997, Reg. No. 2,104,832.
58. Duke University, Durham, N.C., Trademark Exam. Dep’t of the United States Pat.
& Tm. Office, November 10, 1992, Reg. No. 1,731,046; University of Pittsburgh, Pittsburgh,
Pa. (October 27, 1992, Reg. No. 1,727,485).
59. United States Department of Energy, Fermi Lab, Trademark Exam. Dep’t of the
United States Pat. & Tm. Office, July 5, 1994, Reg. No. 1,843,145. See website
<http//www.energy.gov> with description of other distinctive buildings on campus.
60. In the United States, landmarks registered or applied for as trademarks include:
the Citicorp building, (supra n.52); the Chrysler building, (supra n.51); Yankee Stadium
(supra n.50); 30 Rockefeller Plaza (supra n.51); the Empire State Building (supra n.51); the
Channel Gardens, Trademark Exam. Dep’t of the United States Pat. & Tm. Office (filed
July 9, 1998, Serial No. 75/516356); the Guggenheim Museum, Trademark Exam. Dep’t of
the United States Pat. & Tm. Office, June 20, 2000, Reg. Nos. 2,360,432 (covering exterior
design) and 2,360,431 (covering interior design) both registrations are for jewelry and
watches; Metropolitan Opera House, Trademark Exam. Dep’t of the United States Pat. &
Tm. Office, May 12, 1987, Reg. No. 1,439,555 (covering the two-dimensional depiction of the
façade of the opera house with respect to “entertainment services, namely performances of
dramatic, musical, dramatico-musical, choreographic and other artistic works”). Outside the
United States, landmark/trademarks include: Community Trademark Registration 636,431
for Blenheim Palace, (three-dimensional mark) filed by His Grace the 11th Duke of
Marlborough in Classes 16, 30, 32, 41 and 42; Chatsworth House, Derbyshire, home of the
Duke of Devonshire, United Kingdom, Reg. No. 2,136,464 registered by The Chatsworth
Settlement in Classes 29 and 30; “La Previsora” Insurance Company building and
clocktower, Caracas, Venezuela, Reg. No. 20852-1992 in Class 35 (three-dimensional mark).
The author wishes to thank Ricardo Fischer, President of the Latin American trademark
search engine Demarcas.com for providing the Venezuelan information.
Vol. 92 TMR
1055
b. Technical Trademark Requirements
for Registration of a Landmark
(1) Ownership of the Landmark Not Required
Ownership of a landmark is not a prerequisite for trademark
rights.61 Many famous landmarks have been adopted for use as the
trademarks of entities having no connection to the landmark or its
city or country of origin.62 However, under the United States
Lanham Act, registrations issued to non-owners may be cancelled
under Section 2(a), even if they have become incontestable, if the
trademark (1) falsely suggests a connection with an institution or
company uniquely associated with the landmark, or (2) falsely
suggests a connection with a landmark that can be characterized
as a national symbol.63
(2) Trademark Format
Determining the appropriate form the landmark design should
take as a trademark to maximize protection, and conforming the
use to conventional trademark law and practice is challenging.
Existing case law suggests that for a landmark to be protected and
enforced as a trademark it always must be presented to the public
in the same format.64 The disparate use of several different
61. See Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 542-43 (5th Cir. 1998).
62. Many trademarks consisting or comprised of two-dimensional representations of
famous architectural monuments and landmarks have been registered in Germany,
including the Brandenburg Gate, Kyffhäuser monument, Chrysler Building, Eiffel Tower,
Taj Mahal, Leaning Tower of Pisa, Statue of Liberty and Great Wall of China. In the United
States, the Eiffel Tower is the subject of over 50 federal registrations, and has been assigned
its own design code—070907—which may be used to search the design. The Eiffel Tower has
also been used to brand a Las Vegas casino called “Paris Las Vegas” (United States Reg. No.
2432163, registered February 27, 2001). The casino features a 50 story replica of the Eiffel
Tower as well as reproductions of the Arc de Triomphe, the Paris Opera House, the Paris
train station and the Louvre art gallery. The casino’s ad agency, Temerlin McClain, of
Irving, TX, produced a television advertisement showing the tower being shipped to Las
Vegas on a barge. The commercial ran from July 1999 through November 1999 on national
cable networks and was complemented by a print campaign. Through an 800 telephone
number tracking system, the casino determined that the spot was responsible for 85% of the
reservations made during the time it ran.
Source: http://www.hotelinteractive.com/news/articleView.asp?articleID=423 (visited
June 2001). According to a casino representative, the casino received “lots of cooperation
from the French government.” Source: http://www.lasvegassun.com/sunbin/stories/paris/
1999/aug/ 05/509141546.html (visited June 2001). The half-scale replica of the Eiffel Tower
was built with plans obtained from the French government. Source: http://www.
frankscoblete.com/h-articles/Vegas2/F19991018152017941.html (visited June 2001).
63. See 15 U.S.C. §§ 1052(a), 1064(3) (2000).
64. See Anthony L. Fletcher, Buildings as Trademarks, 69 TMR 229, 231 (May-June
1979). See also Rock and Roll Hall of Fame v. Gentile Productions, 134 F.3d. 749, 755 (6th
Cir. 1998), in which the Sixth Circuit stated that “[c]onsistent and repetitive use of a
designation as an indicator of source is the hallmark of a trademark” and questioned
whether the landmark museum functioned as a trademark given the museum’s irregular
use of its building design. The court noted that the museum had not used its version of the
1056
Vol. 92 TMR
perspectives of a landmark may fail to create a consistent distinct
commercial impression as an indicator of a single source of origin
or sponsorship. At least one court has refused to protect a building
design as a trademark because it was not presented in a uniform
and consistent format from one perspective, despite being a threedimensional object readily recognizable from many perspectives.65
However, it may not be always commercially advantageous to
depict the landmark in the same way and from the same vantage
point. It also may be difficult to depict fully, or for that matter
protect fully, all of the features or aspects of a three-dimensional
landmark building through the use and registration of a single
two-dimensional mark, and multiple registrations may be required
to do so.
A landmark owner may choose to adopt a two-dimensional or
three-dimensional image of the building in the form of a stylized
logo, or an actual schematic drawing of the building as its
trademark format. United States courts favor the use of a stylized
logo depicting the landmark, presumably because the use of a
discrete two-dimensional image clearly signals to the public that
the landmark is being used as a trademark. A drawing of a
landmark may be more readily recognized as a trademark because
it has a symbolic content that an actual image of the landmark
itself does not have. In contrast, photographic images depicting the
landmark in use that are presented in advertisements may be
found to depict the product or service itself, rather than a symbol
of that service.66
(3) Specimens of Use
To establish trademark rights, the landmark must be used on
or in connection with the promotion and sale of goods and services,
or displayed on materials used in offering the goods or services for
sale, rather than merely as a landmark per se.67 In this regard, the
use of photographs and slides of the landmark in the materials
used in rendering the service or providing goods supports
building shape with any consistency, and that the museum’s disparate uses of several
different perspectives of its building design did not create a consistent and distinct
commercial impression as an indicator of a single source of origin or sponsorship. See id. at
754.
65. See Rock and Roll Hall of Fame, id. at 755 (citing Estate of Presley v. Russen, 513
F. Supp. 1339, 1363-64 (D.N.J. 1981) (fact that one image of Presley was used consistently
as mark did not support position that all images served trademark function); Pirone v.
MacMillan, Inc., 894 F.2d 579, 583 (2d Cir. 1990) (trademark consisting of a pictorial
representation of one image of Babe Ruth did not cover all photos of Ruth, and not every
photograph served a source-indicating function)).
66. See Fotomat Corp. v. Photo Drive-Thru, Inc., 425 F. Supp. 693, 697 (D.N.J. 1977).
67. See In re Griffs of America, Inc., 157 U.S.P.Q. 592, 592-93 (T.T.A.B. 1968); TMEP
§ 1301.02(c) (the three-dimensional configuration of a building is registrable only if it is
used in such a way that it is or could be perceived as a mark).
Vol. 92 TMR
1057
trademark use.68 A unique building design can constitute a valid
service mark or trademark if used properly in ancillary
materials.69 For example, if the landmark is a commercial building,
the landmark might appear on awnings, visitor passes, mats and
building personnel uniforms.
One commentator has argued that requiring advertisements
or other pictures of a building as specimens is unnecessary, as
there would not seem to be any reason to design distinctive
building designs other than to distinguish the goods or services
therein provided and to advertise them to the public.70 Canada
appears to have adopted this view in a recent amendment to its
trademark law, which does not require any proof of secondary
meaning for three-dimensional marks “that are created for the
purpose of distinguishing goods or services, but that are not
articles that would normally be the subject of trade (i.e., sold,
leased or otherwise distributed in the marketplace). . . .”71
(4) Method and Manner of Use
Landmarks may be protected as trademarks if the image of
the landmark is used to identify and distinguish goods or services.
It may be easier to establish trademark rights in building designs
when the building is used by itself, without any accompanying
words or symbols. It remains an open issue whether the use of
signage or descriptive words in connection with a building design
compromises or extinguishes the landmark’s distinctiveness as a
trademark, in much the same way as a word mark that is used to
describe or name a product may undermine its distinctiveness, or
whether such use bolsters the distinctiveness of the building as a
68. See In re City of Anaheim, 185 U.S.P.Q. 244, 245 (T.T.A.B. 1974) (use on printed
matter advertising not required; photographs of structure used in promoting services
sufficient).
69. See Photo Drive-Thru, 425 F. Supp. at 697 (reproductions of mark displayed on film
boxes, merchandising bags, coupons, refund vouchers, business envelopes, customer service
requests, point of sale ads, repair orders, reports of loss, refund logs and letterhead);
Fotomat Corp. v. Cochran, 437 F. Supp. 1231, 1237 (D. Kan. 1977) (building design
displayed on processing bags, film boxes, flash cube boxes, merchandising bags, processing
envelopes, delivery trucks, letterhead, business cards, checks, invoices, purchase orders,
coupons, fliers and the like).
70. See Fletcher, Buildings as Trademarks, supra n.64, at 232. Fletcher contends that
since business is rendered inside the building, arguably it is being used in connection with
the sale of services, and that a building can act as a container for services. He goes on to
state that it is anomalous to claim that pictures of the building may be used as a trade or
service mark, but that the building per se may not. Fletcher also questions the current
USPTO registration practice of focusing on use of the building in advertising, rather than on
the use of the buildings themselves.
71. See Canadian Intellectual Property Office, Practice Notice, “Three-Dimensional
Marking” (December 6, 2000). The author wishes to thank Frank Mulock of Gowling,
Strathy & Henderson, of Ottawa, Ontario, Canada for this information.
1058
Vol. 92 TMR
trademark.72 A United States appellate court has held that a
registered logo consisting of the particular architecture of a
landmark building and the name of the landmark may qualify as
“inherently distinctive.”73
In the United States, the Trademark Trial and Appeal Board
(TTAB) has refused registration of a three-dimensional
configuration of a building as a service mark because the building
was not used in the promotion and sale of services, but merely as a
building that housed services.74 Thus, the use of a building design
on marketing and sales materials, such as menus, letterhead, and
advertisements is critical to obtaining registration.75 Even if the
building is featured in advertising, however, it may be refused
registration if the ads do not feature the building design per se,
but instead show the building with signage bearing the name of
the business it contains.76 An arbitrary and distinctive landmark
may be granted registration, but it cannot be enforced in the
absence of evidence that the public recognizes it and associates it
with the owner’s services.77
(5) Functionality
The landmark may have certain functional features that
preclude protection as a trademark. For example, zoning laws
define the shapes of many skyscrapers, and certain features of
landmarks may be dictated by weather and energy conservation
requirements, or by the purposes for which they are used, for
72. See New York Stock Exchange, Inc. v. New York, New York Hotel, LLC, 69 F.
Supp. 2d 479, 489-90 (S.D.N.Y. 1999), aff’d in part and rev’d in part 293 F.3d 550 (2d Cir.
2002) (according to the lower court, “[t]he combination of a classical façade that is regularly
used for buildings containing public spaces and the words ‘NEW YORK STOCK
EXCHANGE’ as part of the façade does not require a person to exercise imagination to
realize that the building houses a stock exchange. The façade therefore is not
‘distinctive’. . .”); In re Master Kleens of America, Inc., 171 U.S.P.Q. 438, 439 (T.T.A.B.
1971); In re Lean-To Barbecue, Inc., 172 U.S.P.Q. 151, 153 (T.T.A.B. 1971). But cf. New
York Stock Exchange, Inc. v. New York, New York Hotel, LLC, 293 F.3d 550, 557 (2d Cir.
2002) (“‘A mark is arbitrary . . . if there is no logical relationship whatsoever between the
mark and the product on which it is used.’ This principle seems applicable to NYSE’s
architectural logo. A stock exchange can be housed in any of a variety of buildings, and the
use of a combination of particular architecture with the New York Stock Exchange name
might be found by a trier of fact to be rather arbitrary.”).
73. New York Stock Exchange, Inc. v. New York, New York Hotel, LLC, 293 F.3d 550,
557 (2d Cir. 2002).
74. See In re Griffs of America, Inc., 157 U.S.P.Q. 592 (T.T.A.B. 1968).
75. Cf. In re Master Kleens, 171 U.S.P.Q. at 439.
76. See id. and Lean-To Barbecue, 172 U.S.P.Q. at 153; cf. Rock and Roll Hall of Fame,
134 F.3d at 756, in which the Sixth Circuit states that whether use of building design in a
photograph is fair use will turn on whether consumers perceive the words ROCK AND
ROLL HALL OF FAME as a label for Gentile’s photograph or as an indicator of the origin or
sponsorship of the Museum.
77. See Rock and Roll Hall of Fame, 134 F.3d at 754; Pebble Beach Co. v. Tour 18 I
Ltd., 155 F.3d 526, 541 (5th Cir. 1998).
Vol. 92 TMR
1059
example, as the design of a greenhouse follows its function.78 Thus,
depending upon how the landmark is used, a realistic depiction of
its design may be considered merely ornamental,79 and a picture or
drawing of it may not be considered fanciful if it could be perceived
by the consumer as ornamentation.80
(6) Distinctiveness
The fancifulness of the building design can be undermined by
its status as a landmark, and a picture of the building on a product
could be perceived as ornamentation rather than as an identifier of
source.81 Thus, an inconsistency can arise because using the
building’s visage to create good will may at the same time
undermine its distinctiveness. The combination of a building’s
name with particular architectural features may constitute an
arbitrary and distinctive mark.82
(c) Cases Granting Protection Under
Trademark Protection/Unfair Competition Principles
A line of cases in the United States enforces property rights in
landmark images on unfair competition and misappropriation
grounds where the plaintiff demonstrates a pecuniary interest in
the landmark, consisting of the publicity value of the landmark
resulting from the investment of significant time, effort and
money.
(1) Madison Square Garden Corporation83
In this case, the court enjoined the use of film scenes that gave
the false impression of being the hockey rink and interior of
Madison Square Garden arena. The court concluded that the
78. For example, the shape and orientation of the distinctive Citicorp Building in New
York, a registered trademark, was dictated in part by the functional considerations relating
to the use of solar panels which were originally intended to be used on the building. See
Gregory B. Hancks, Copyright Protection for Architectural Design: A Conceptual and
Practical Criticism, 71 Washington Law Review 177, 195 (1996) (citing Mary E. Osman, The
1979 AIA Honor Awards, AIA Journal 164, 172-73 (Mid-May 1979)). See Louis Altman,
Intellectual Property Law and the Construction Industry, Part II, 71 JPTOS 600 (1989).
79. But see WSM Inc. v. Tennessee Sales Co., 709 F.2d 1084, 1087 (6th Cir. 1983) for
the proposition that a designation may serve both source-identifying and ornamental
purposes.
80. See Rock and Roll Hall of Fame, 134 F.3d at 754.
81. Id. at 754 (the Rock and Roll Hall of Fame Museum). Compare Fotomat Corp. v.
Cochran, 437 F. Supp. 1231, 1238 (D. Kan. 1977) (Fotomat kiosk itself was distinctive and
fanciful, and serves as an attention-getting and recall device for customers).
82. New York Stock Exchange, Inc. v. New York, New York Hotel, LLC, 293 F.3d 550,
557 (2d Cir. 2002).
83. Madison Square Garden Corp. v. Universal Pictures, 255 A.D. 459, 464, 7 N.Y.S.2d
845, 850 (App. Div., 1 Dep’t 1938).
1060
Vol. 92 TMR
commercially valuable good will and property rights in licensing
the use of genuine photographs taken in the arena, which were
built up through the expenditure of large sums of money, and of
effort and skill in the management of its enterprise, were entitled
to protection, even though the scenes appeared in a fictional
motion picture and were arguably immune under the First
Amendment. The court’s response was that if the defendants
wanted to give “authentic realism” and add attraction to their film
by incorporating images of hockey matches in the arena, they
should have secured the permission of the owner. The court
concluded that just because the film was fictional, defendants
should not be permitted to violate and appropriate the valuable
property rights in the Madison Square Garden arena.84
(2) New York World’s Fair85
In New York World’s Fair, the court held that the Fair had the
right to control illustrations, photographs and reproductions of the
buildings, exhibits, pavilions and scenes of the Fair, including the
Trylon and Perisphere buildings that were a major attraction, in
postcards and albums. The non-profit corporation presenting the
Fair had to raise money to plan, organize, manage and supervise
the Fair, and restore and improve the fairgrounds after the Fair
was over.86 Not only was the Fair’s licensing program an integral
part of its revenue-raising activity to cover these expenses, but it
was also necessary to ensure that the publicity that the Fair
received would not demean the Fair or the purpose for which it
was created.87 The court emphasized the limited scope of the rights
being granted, i.e., “protection for a brief two-year period to the
valuable property rights of the spectacular and unique educational
effort of a nonprofit organization.”88
(3) Pebble Beach89
In Pebble Beach, the Sea Pines lighthouse, the main feature of
the “signature hole” of a prestigious golf course, was reproduced
without authorization and used on another golf course consisting
of replica holes from 16 famous golf courses. The Sea Pines
lighthouse was constructed in 1970 and designed to guarantee
exposure on television during professional tournaments. Although
84. See id. at 466-67, 7 N.Y.S.2d at 852-53.
85. New York World’s Fair 1964-1965 Corp. v. Colourpicture Publishers, Inc., 141
U.S.P.Q. 939 (N.Y. Sup. Ct. 1964).
86. Id. at 939.
87. Id. at 942.
88. Id.
89. See Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526 (5th Cir. 1998).
Vol. 92 TMR
1061
the lighthouse was emphasized in Sea Pines’ advertising and
promotions for the golf course, it was not the subject of any
copyright, patent or trademark registration. The court rejected the
defendant’s “nominative fair use” argument that its product was
“replica golf courses” and that there was a need to be able to copy
famous golf holes in order to deliver the product. The court stated,
“[t]he logical extension of this argument would practically
obliterate trademark protection for product design because a
defendant could always argue that its innovative product is a
widget that provides a replica of the most popular or most
prestigious widget on the market.”90
Interestingly, the court cited advertising and publicity rights
cases involving prominent or eye-catching uses of trademarks91
that were decided on conventional trademark infringement
grounds. Other courts have found that the prominent use of the
image of a mark on a product may rise to the level of “use as a
trademark” sufficient to find infringement.92 All of these cases held
that the misuse of the attention-getting capacity of a mark was
actionable as trademark infringement, but it is unclear whether
what was actually being protected was a trademark right or a
right of publicity.
d. Cases Denying Protection Under
Trademark/Unfair Competition Theory
On First Amendment grounds, trademark rights are not likely
to be enforced against commercial merchandise that may be
characterized as artistic expression or commentary. For example,
one United States court has recognized that there are some artistic
works that are of a hybrid nature that combine artistic expression
90. Id. at 538-39. The defendant used the lighthouse to provide the same services as
the plaintiff, and the fact that the golf course was a collection of “replica holes” was a
distinction without a difference. The court also held that Tour 18 used the replica lighthouse
design in more than a merely nominative sense, finding that Tour 18’s prominent and
widespread depiction of the replica lighthouse in advertisements and promotional materials,
including mailers, scorecards, yardage guides, signage, and menus, mostly without any
disclaimers as to affiliation or endorsement, implied that it had obtained the permission or
consent of Sea Pines. The court held the suggestion of permission, implied approval or
endorsement to be a kind of confusion prohibited by the Lanham Act.
91. See Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947 (7th Cir. 1992)
(Seventh Circuit enjoined the use of the words THIRST AID as an “attention getting”
symbol for defendant’s GATORADE product); Lindy Pen Co. v. Bic Pen Corp., 725 F.2d
1240, 1248 (9th Cir. 1984) (held that “prominent placement” of a mark on a product
qualified as trademark use); Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d 934, 937-38
(10th Cir. 1983) (same); Elvis Presley Enterprises, Inc. v. Capece, 141 F.3d 188 (5th Cir.
1998) (court issued an unqualified injunction against the use of THE VELVET ELVIS for a
sixties theme nightclub on trademark infringement grounds).
92. See, e.g., Coca-Cola v. Gemini Rising, 346 F. Supp. 1183 (E.D.N.Y. 1972) (a poster
prominently depicting a Coke bottle was held to infringe the trademark).
1062
Vol. 92 TMR
and commercial promotion, such as the titles of books and films.93
In this instance, the court held that the Lanham Act should be
narrowly construed to apply only where the public interest in
avoiding consumer confusion outweighs the public interest in free
expression, and reasoned that the more artistically relevant the
reference is to the underlying work the stronger the public interest
in free expression. Courts that have subsequently faced the task of
discerning the boundary between an artistic work and ordinary
commercial merchandise have more often than not allowed the use
of both realistic and artistic depictions of landmarks in connection
with commercial merchandise. The assertion of trademark rights
has been unavailing in those cases involving artistic depictions of
landmarks. The First Amendment right to free expression has
been used to defend the commercial use of landmarks in posters,94
to embellish t-shirts, mugs and pens,95 and it could even be used to
defend the use of a landmark on merchandise used to promote a
film in which the landmark is prominently featured.96
(1) New York Racing97
In New York Racing Association, paintings of the Saratoga
Race Course and grandstand that were reproduced on t-shirts and
mugs were found to be non-infringing on the ground that the
defendant’s depiction of the race course served the artistically
relevant purpose of describing and accurately depicting the race
course. The lower court found that artist’s rights to utilize a
trademark in an artistic work outweighed the need to enjoin the
use to avoid consumer confusion.98 On appeal, the court found no
logical distinction between the reproduction of the image in
paintings and their subsequent commercial reproduction on tshirts, since the average consumer would realize that the t-shirts
displayed reproductions of original paintings and their titles, while
93. See Rogers v. Grimaldi, 875 F.2d 994, 999-1000 (2d Cir. 1989) (Ginger Rogers
unsuccessfully challenged the film “Ginger & Fred” on grounds that it violated her privacy
and publicity rights, and that the title created the false impression that the film was
sponsored or endorsed by her or associated with her under Lanham Act Section 1052(a)).
94. See Rock and Roll Hall of Fame, 134 F.3d at 756.
95. See New York Racing Assoc., Inc. v. Perlmutter Publishing, Inc., 959 F. Supp. 578
(N.D.N.Y. 1997).
96. See Leicester v. Warner Bros., 232 F.3d 1212 (9th Cir. 2000), aff’g 47 U.S.P.Q.2d
1501 (C.D. Cal. 1998). In 1998, Sony Pictures released the film Godzilla and used the
Chrysler Building prominently in its merchandising program for the film. The Chrysler
Building and its spire appeared on tablecloths, stickers, backpacks, rugs, watches and other
goods along with the words “Chrysler Crawler.” Sony did not seek a license for these uses
from the owner of the Chrysler Building trademark.
97. See New York Racing Assoc., Inc. v. Perlmutter Publishing, Inc., 959 F. Supp. 578
(N.D.N.Y. 1997) (citing Rogers, supra n.93). The court expressly limited its application of
the First Amendment to the facts and circumstances of the case.
98. Id. at 583.
Vol. 92 TMR
1063
the tags and the shirts displayed the correct source.99 The case
shows that an owner of a publicly accessible property may not be
able to prevent another’s “artistic” yet commercial use of the
recognition value of the property that the owner has developed.
Another party may use the owner’s property as an “attentiongetting symbol” to sell products and services, even if the owner has
previously used its mark on promotional goods. The outcome of a
trademark infringement action under these circumstances is likely
to be entirely unpredictable.
(2) Rock and Roll Hall of Fame100
Another United States court decision utilized a right of
publicity framework to analyze cases involving the commercial use
of a landmark and to define the alleged trademark rights in the
landmark. In Rock and Roll Hall of Fame and Museum, the
Museum sought to enjoin the sale of a photograph of its building
that was mass-produced in the form of a poster. The Museum,
which was dubbed an “instant landmark” when it opened in 1995,
was designed by world-renowned architect I.M. Pei at a cost of $92
million. To capitalize on its investment, the Museum sought to
protect the design as a trademark. It received registrations for
several schematic designs of the building from the USPTO,101
developed a stylized logo based on the design,102 affixed these
marks to a wide variety of items, and sold $15 to $20 million
dollars worth of souvenir merchandise annually.103 The lower court
enjoined the sale of the poster based on the Museum’s trademark
rights in the building, but the appellate court found the rights
asserted by the museum to be analogous to rights of publicity,
stating “this case is similar to those in which a party has claimed
trademark rights in a famous person’s likeness.”104
99. Id. Saratoga Race Course did not submit any evidence that the images of Saratoga
Race Course served primarily as an indicator of source, or were likely or intended to serve
as a source-indicator. Therefore, the court found that Saratoga Race Course did not possess
any trade dress rights in the images of the race course that it reproduced on souvenir
merchandise. The court distinguished the Saratoga Race Course from plaintiff’s
hypothetical involving the reproduction of Giants stadium on a t-shirt, on the ground that
the Giants’ mark was “more prominent and ubiquitous” than the Saratoga Race Course
mark.
100. 134 F.3d 749 (6th Cir. 1998).
101. Trademark Exam. Dep’t of the United States Pat. & Tm. Office, Reg. Nos. 2,112,793
and 2,116,698, covering the museum design.
102. Rock and Roll Hall of Fame, stylized logo design, Trademark Exam. Dep’t of the
United States Pat. & Tm. Office, filed March 30, 1999, Serial No. 75/670,851, abandoned
April 5, 2000.
103. 134 F.3d at 757.
104. Id. at 755, citing Pirone v. MacMillan Inc., 894 F.2d 579, 583 (2d Cir. 1990); Estate
of Presley v. Russen, 513 F. Supp. 1339, 1363-64 (D.N.J. 1981) for the proposition that not
all images of the landmark could be protected as a trademark or service mark. See also,
1064
Vol. 92 TMR
The appellate court vacated the injunction without any
analysis of whether the defendant’s use was likely to cause
confusion or deception because the museum had not demonstrated
that the building functioned as a trademark. The court remanded
the case, questioning whether a “public landmark” could be
considered a trademark in the first place:
[W]hen we view the photograph in Gentile’s poster, we do not
readily recognize the design of the Museum’s building as an
indicator of source or sponsorship. What we see, rather, is a
photograph of an accessible, well-known, public landmark.
Stated somewhat differently, in Gentile’s poster, the
Museum’s building strikes us not as a separate and distinct
mark on the good, but, rather as the good itself.105
The court recognized that the Museum had invoked trademark
rights to protect a right of publicity in its building, and cited prior
cases that delimit and draw distinctions between rights of
publicity and trademark rights.106 These cases suggest that only
when a trademark’s traditional function of source-indication is
appropriated will a court extend protection on trademark
infringement grounds. Other uses, for example, of a mark’s
publicity value, are outside the scope of trademark infringement
protection.
On remand, the lower court granted summary judgment to the
defendant with only a passing discussion of whether the landmark
building functioned as a trademark, appearing to rely upon the
appellate court’s determination that it did not. Despite the fact
that over 70 percent of the respondents in the plaintiff’s survey
believed that the Museum’s permission or authorization was
required to produce the poster, the lower court found that plaintiff
had again failed to establish a valid and protectible trademark,
and that the survey evidence merely showed that the respondents
Weinstein Lubin & Co. v. Marks, 109 Cal. 529 (1895), a decision rendered over one hundred
years before the Hall of Fame decision, in which a New York court also compared the
copying of architecture to the appropriation of a man’s identity stating that “it may well be
said that defendant, by duplicating plaintiff’s building with its peculiar architecture and
entering the same line of business right next door to defendant dressed himself in plaintiff’s
garments” and “having so dressed himself with a fraudulent intent, equity will exert itself
to reach the fraud in some way.” Rather than stealing his competitor’s trade name, the court
found that the defendant had assumed “a disguise of a different character.” This “disguise”
is the intangible right of publicity or the commercial attention-getting value of the
architecture.
105. Id. at 754 (emphasis in original).
106. Estate of Presley v. Russen, 513 F. Supp. 1339 (D.N.J. 1981) (the fact that one
image of Elvis Presley was used consistently as a mark did not support the position that all
images served a trademark function); Pirone v. MacMillan Inc., 894 F.2d 579 (2d Cir. 1990)
(with respect to the unauthorized use of baseball player Babe Ruth’s photo on massproduced calendars, the court held that trademark rights in one pictorial representation of
Babe Ruth could not be extended to enjoin the use of any and all photos of Ruth because
“not every photograph serves a source-indicating function”).
Vol. 92 TMR
1065
recognized the building as a landmark, and not as a protected
trademark or as an indicator of source.107
It is unclear why the significant promotional use of the
building design and the public’s belief that the trademark owner’s
approval or permission was required was sufficient to establish a
likelihood of confusion for the Pebble Beach court, but not for the
Hall of Fame court. Perhaps the nature of the buildings affected
the outcomes: Pebble Beach involved a lighthouse structure
adopted as a trademark by a privately owned enterprise that was
not open to the public, while the Hall of Fame involved a
“landmark” building freely accessible to the public.
(3) New York Stock Exchange108
In 1997, the New York Stock Exchange (NYSE) filed an action
for trademark infringement and dilution of its registered
trademark façade against New York, New York Hotel & Casino, of
Las Vegas. The Casino produced a replica of the distinctive façade
of the NYSE and placed it on its gambling floor. The Casino used
photos of the replica façade in press kits and advertising, but did
not use the façade on any merchandise. The Casino argued that its
use of the replica façade was not a trademark use, but merely a
representation of a New York City building.109 The lower court
stated that “this would be an interesting issue if the Casino did not
use the mark NEW YORK NEW YORK SLOT EXCHANGE
prominently on the replica façade in place of NEW YORK STOCK
EXCHANGE” and that “[w]ith the name change, however, the use
of the façade was not merely descriptive.”110 The lower court ruled
that the Casino was entitled to summary judgment, finding that
the satiric context of the use minimized the likelihood of confusion
given that “[t]he theme of the Casino is New York, and it consists
of slightly or whimsically modified versions of famous New York
landmarks.”111
The lower court found that the Casino’s theme depended upon
an association with the original to be successful, and accepted the
argument that was rejected in Pebble Beach, namely that the
defendant’s “product” was a replica of the original, and that it
needed to use the landmark to deliver its product. In discussing
107. See 71 F. Supp. 2d 755, 761-63 (N.D. Ohio 1999).
108. See New York Stock Exchange, Inc. v. New York, New York Hotel, LLC, 69 F.
Supp. 2d 479, 489-90 (S.D.N.Y. 1999), aff’d in part and rev’d in part 293 F.3d 550 (2d Cir.
2002). The Casino, following a popular trend to create city-themed environments, created a
“New York City” theme casino, which features replicas of New York landmarks such as the
Chrysler Building, Empire State Building, Statue of Liberty and the Ellis Island
immigration station.
109. See id. at 484.
110. Id.
111. Id. at 485.
1066
Vol. 92 TMR
whether the Casino adopted its mark to capitalize on NYSE’s
reputation, the lower court found that the Casino benefited from
the fame of the New York City landmarks, but that it did not
benefit from any confusion, deception or suggestion of sponsorship
or endorsement.
Unlike the court in Rock and Roll Hall of Fame, which
questioned the existence of valid trademark rights in the landmark
building, the lower court in NYSE held that the NYSE façade was
a valid trademark, but was not inherently distinctive.112 The lower
court found that the unique combination of a classical façade with
columns and bas relief figures on a pediment was not distinctive,
given that it requires no imagination to realize that the building
houses a stock exchange. The lower court concluded that NYSE’s
classical façade lacked distinctiveness because a similar design is
regularly used for buildings containing public spaces, such as
courts and museums, and the words below the façade’s pediment
identify it as the NEW YORK STOCK EXCHANGE.113
On appeal, the lower court’s reasoning was found to be
flawed.114 The appellate court concluded that the proper issue for
consideration was whether there was any logical relationship
between the mark, in this instance the building, and the product
for which it is used, namely, the business of the NYSE.
Accordingly, because a stock exchange can be housed in any of a
variety of buildings, the appellate court concluded that the
combination of this particular architecture with the NYSE name
might be found to be arbitrary by a trier of fact. The case was
remanded for further proceedings.115
Although the dismissal of the trademark infringement claims
was affirmed, the appellate court held that an issue of fact existed
as to whether the NYSE’s architectural façade was an inherently
distinctive mark for purposes of dilution.116 The appellate court
also held that the Casino’s humorous use of the NYSE marks to
draw an analogy between its activities and those of the NYSE
might be found to be injurious to NYSE’s reputation.117
112. See id. at 489.
113. See id. Cf. Lean-To and Master Kleens cases, supra n.72, which deny trademark
protection to building designs used together with signage.
114. New York, Stock Exchange, Inc. v. New York, New York Hotel, LLC, 293 F.3d 550,
557 (2d Cir. 2002).
115. Id.
116. Id.
117. Id. at 558. According to the lower court, the real grievance in the action was
dilution of NYSE’s reputation by tarnishment and blurring, not trademark infringement.
However, the court found that the Casino’s association between investing and gambling did
not constitute actionable dilution of NYSE’s trademarks by tarnishment. In the lower
court’s opinion, the NYSE architectural façade mark was not entitled to protection under
the federal antidilution statute because it was not inherently distinctive. 69 F. Supp. 2d at
491, 492-93. The lower court’s reasoning is at odds with the plain language of the
Vol. 92 TMR
1067
(e) Unreported Cases Brought under
Trademark/Unfair Competition Theories
Finally, there are three interesting cases that did not result in
published decisions but bear mentioning because their fact
patterns illustrate issues surrounding the scope of protection that
should be afforded to landmark buildings used for commercial
purposes and those used for private or residential purposes. While
a landmark building owner may be able to assert trademark rights
successfully to prevent the use of a commercial building in
advertising, it is difficult for the owner of a residential landmark
building to even formulate a cause of action to prevent the
unauthorized use in advertising of a residential building that
happens to be visible from a commercially desirable public place.
(1) The Flatiron Building
Newmark Real Estate Company, Inc., an owner and managing
agent of the Flatiron Building in New York, applied for
registration of the Flatiron Building design as a trademark in
1998. In 1999, a trademark application for a logo consisting of the
distinctive cornice of the Flatiron Building owned by Flatiron
Partners, a leading Silicon Alley venture capital firm, was
published and opposed by Newmark. Flatiron Partners apparently
adopted the building design as a mark because of its association
with the Flatiron district in Manhattan where many new
electronic commerce companies have been located. Flatiron
Partners used the Flatiron building’s landmark design on its
business cards, Internet website, greeting cards and
correspondence labels. Flatiron Partners refused to obtain a
license and Newmark filed suit for trademark infringement in the
Southern District of New York.118 During the litigation, the
defendant took the position that the Flatiron Building was “a
landmark not a trademark. It doesn’t designate the source of any
goods or services—it is merely a pretty building.” The case was
settled soon after the complaint was filed, with Flatiron Partners
taking a license to use what it described as the “powerful, powerful
antidilution statute, which states that a court may consider factors such as the degree of the
acquired distinctiveness of the mark, and the duration and extent of the use of the mark. 15
U.S.C. § 1125(c)(1). There would appear to be no reason for these factors to exist if marks
that have acquired distinctiveness are prima facie ineligible for dilution protection. Another
anomalous consequence of this reasoning is that it undermines the primary aim of the
Federal Trademark Dilution Act, which is to create a uniform antidilution law and
consistent judicial decisions. In this case, the appellate court allowed the dilution by
tarnishment claim under New York law because the acquired/inherent distinction is not
made in the New York statute, while at the same time dismissing the claim under the
Federal Trademark Dilution Act. 293 F.3d at 558.
118. See Newmark & Co. Real Estate Inc. v. Flatiron Partners, No. 99 Civ. 9315
(S.D.N.Y., filed August 30, 1999).
1068
Vol. 92 TMR
image” of the Flatiron Building to promote its venture capital
business.119
(2) Cecere v. R.J. Reynolds Tobacco120
Cecere involved the unauthorized use of a residential
landmark building as the backdrop for an R.J. Reynolds cigarette
print advertisement. The plaintiff’s landmark building had a
sidewall that was suitable for use as a commercial advertising
space, but it had never been used for that purpose. The defendant
took a photograph of the building and superimposed a tobacco
advertisement on the sidewall. The plaintiff alleged that the
defendant’s advertisement violated New York’s Civil Rights Law
Sections 50-51, which prohibits the unauthorized use of an
individual’s name or likeness for advertising purposes, and
constituted false and misleading advertising under the Lanham
Act.
In an unpublished decision, the federal district court
dismissed the false and misleading advertising claims, and
declined to exercise jurisdiction over the state law right of privacy,
misappropriation, conversion and false advertising claims.121 The
court held that the plaintiff was not entitled to rely upon the
“purely dignitary, non-commercial harm that might arise from
being associated with defendants or the defendants’ products” and
rejected plaintiff’s argument that the value of its advertising space
would be adversely affected as “no more than an unsupported
subjective belief.”122
The facts of this case illustrate that private dwellings are not
expressly considered an aspect of “name or likeness,” and are not
elements of persona currently protected under state right of
publicity or privacy statutes. Accordingly, it appears that the
owner of a landmark building used as a private residence lacks
any express right to prevent the commercial use of the home and
119. Duffus, R.L., Flatiron Grip: Who Owns The Rights To Use An Iconic Building In A
Company Logo? New York Magazine, September 29, 1999, at 17, and Dunlap, A Building as
a Trademark, supra n.22.
120. Cecere v. R. J. Reynolds Tobacco Co., 1998 WL 665334 (S.D.N.Y. September 28,
1998).
121. Id. The defendant’s counsel argued that “although courts have expanded the
concept of a mark to include the attributes of a celebrity’s personality that have never been
exploited in connection with a product or service, there is no basis for a similar expansion of
the concept of a mark to include the landmark home in which plaintiff’s reside.” The
defendants also argued that plaintiff had not established the celebrity status and the viable
economic interest protectible under the Lanham Act, stating that “the plaintiff’s here cannot
state a claim any more than could the owners of the famous Frank Lloyd Wright designed
home for use of a picture of their home in an advertisement. It is the home (and the
architect) which are famous not the occupants.” Defendants’ Memorandum of Law in
Support of Motion to Dismiss, Satterlee Stephens Burke & Burke LLP, pp. *7-8.
122. Id. at *5.
Vol. 92 TMR
1069
the exploitation of the advertising or publicity value of the
appearance and location of the home, and may not even be entitled
to object to the undesirable use or representation of the home in
advertising.
(3) The Biltmore Company123
The Biltmore House, the largest private residence in the
United States and a national historic landmark, filed a lawsuit for
trademark infringement, unfair competition and dilution by
tarnishment against Marvel Comics, which prominently featured
the façade of The Biltmore House in advertisements for its X-Men
comic books. The Biltmore House façade is a registered trademark
used in connection with exhibitions, historic house tours and
wines.124 The house has appeared in many films, commercials, and
other media for which the Biltmore Company routinely receives
royalties and fees. Biltmore Company demanded that Marvel
negotiate a license for its planned use of the Biltmore House
façade in its X-Men comic books, but Marvel refused to do so.
Following the filing of the lawsuit, Marvel ceased its use and the
lawsuit was dismissed. The Biltmore and Flatiron Building cases
illustrate the tactical use of lawsuits as leverage in licensing
disputes to compel licensing, given the lack of express legal
protection of the publicity value of landmarks.
f. Product Design Protection for Landmarks
The total image and overall visual appearance of the interior
and décor of restaurants may be protectible as trade dress.125
Recently, even a bedroom furniture suite design consisting of a
“high gloss polyester finish, classical elements, including a marble
finish, fluted columns, arches and entablatures” and a billiard hall
décor consisting of the size and placement of pool tables, color
123. The Biltmore Company and Biltmore Estate Reproductions, Inc. v. Marvel
Enterprises, Inc., Civ. A. No. 1:01 CV179-C, filed August 1, 2001, in the Western District of
North Carolina, Asheville Division, dismissed January 15, 2002.
124. Trademark Exam. Dep’t of the United States Pat. & Tm. Office, December 11, 1990,
US Reg. No. 1,627,491 for “still and sparkling wines” and Trademark Exam. Dep’t of the
United States Pat. & Tm. Office, January 28, 1992, US Reg. No. 1,673,704 for “providing
educational exhibitions and conducting visits to an historic house and gardens and to a
winery.”
125. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112 S. Ct. 753, 765, 120 L.
Ed. 2d 615 (1992); Fuddruckers, Inc. v. Doc’s B.R. Other, Inc., 826 F.3d 837 (9th Cir. 1987);
Prufrock Ltd. v. Lasater, 781 F.2d 129 (8th Cir. 1986); T.G.I. Friday’s Inc. v. International
Restaurant Group, Inc., 569 F.2d 895 (5th Cir. 1978); McDonald’s Corp. v. Moore, 363 F.2d
435 (5th Cir. 1966) (per curiam); White Tower Systems, Inc. v. White Castle Systems of
Eating Houses Corp., 90 F.2d 67 (6th Cir. 1937), cert. denied 302 U.S. 720 (1937); Morton v.
Rank America, Inc. 812 F. Supp. 1062 (C.D. Cal. 1993); House of Hunan Inc. v. Hunan at
Pavilion, 227 U.S.P.Q. 803 (D.C. D.C. 1985); Warehouse Restaurant, Inc. v. Customs House
Restaurant, Inc. 217 U.S.P.Q. 411 (N.D. Cal. 1982).
1070
Vol. 92 TMR
combinations and lighting, floor coverings and wall treatments,
and millwork, have been held to be protectible as trade dress.126
Increasingly, companies have claimed trademark rights in product
designs and some have even been successful in protecting features
for which they have previously received a patent.127
In 1992, the Supreme Court held in Two Pesos, Inc. v. Taco
Cabana, Inc.128 that the décor of a Mexican restaurant was
protectible as trade dress because it was both source-identifying,
or “distinctive,” and non-functional.129 More recently, the Court
held that an unregistered “product design” can never be inherently
distinctive because consumer predisposition to equate product
design with source does not exist.130 The Court also identified, in
dictum, yet another possible category of trade dress that is akin to
product packaging, and which it referred to as a “tertium quid”
(i.e., something, indefinite or left undefined, related in some way to
two definite or known things, but distinct from both.)131 Landmark
buildings could fall into this “tertium quid” category. Landmarks
could be considered more akin to the exterior counterpart to
restaurant décor, which the Court concluded constitutes “product
packaging” rather than “product design.”132 Because the definition
and protection of trade dress is an evolving area of trademark law,
it is unlikely at this juncture to provide adequate protection for
landmarks as trademarks.
126. Ashley Furniture Industries v. Sangiacomo N.A. Ltd., 187 F.3d 363, 367 (4th Cir.
1999); Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252 (9th Cir. 2001).
127. See Mark A. Lemley, The Modern Lanham Act and the Death of Common Sense,
108 Yale Law Journal 1687, 1701 (May 1999) (citing Rock and Roll Hall of Fame and
Museum v. Gentile Prods., 134 F.3d 749, 753 and citing cases in which companies have
successfully claimed trademark rights in various product configurations, some of which are
patented).
128. 505 U.S. 763, 112 S. Ct. 753, 765, 120 L. Ed. 2d 615 (1992).
129. The Court held that trade dress may be considered “distinctive” if it is either: (1)
inherently distinctive (i.e., its intrinsic nature serves to identify products or services as
coming from a specific source) or (2) has acquired distinctiveness through secondary
meaning (come through use to be uniquely associated with a specific source), but not both.
See id. at 770-72, 112 S. Ct. at 2757-59, 120 L. Ed. 2d at 624.
130. Wal-Mart v. Samara Bros., Inc., 120 S. Ct. 1339 (2000). In analyzing whether
Samara’s design for a line of children’s clothing was protectible trade dress, the Supreme
Court clarified that a party claiming “product design” trade dress protection under Section
43(a) of the Lanham Act for an unregistered product design must always demonstrate that
the design has acquired meaning as an indication of source to consumers. “Product
packaging,” on the other hand, which is more immediately perceptible as signifying source,
may be protected without such proof of acquired meaning as a mark. Id. at 1344.
131. Id. at 1345. See http://www.oed.com for definition of tertium quid (visited June
2001).
132. Id.
Vol. 92 TMR
1071
2. Protection Under Copyright Law
a. Works Built Prior to 1990
Statutory copyright protection for constructed architecture is a
relatively recent development in the United States. Prior to 1990,
architecture was not protected by copyright under United States
law because buildings were considered to be useful articles,133 and
any of the features of a building, other than sculptural features
that are independent works of art, could be copied for purposes of
commercial use, from drawings, photographs or observation of the
structure itself.134 Most courts had held that the copyright owner
could not, without the benefit of a design patent, prevent the
unauthorized copying or reproduction of the overall structure,
unless it was copied from the copyrighted architectural plans.135
In contrast, prior to 1990, the copyright laws of other
countries protected constructed architectural works from
unauthorized two and three-dimensional reproduction for
commercial gain.136 For example, the reproduction of private
and public architecture in individual photographs,137 posters,138
on book covers139 and postcards,140 and in commercial photo133. 17 U.S.C. § 101.
134. Hancks, supra n.78, at 177.
135. See Demetriades v. Kaufmann, 680 F. Supp. 658, 664 (S.D.N.Y. 1988) (citing Muller
v. Triborough Bridge Authority, 43 F. Supp. 298, 300 (S.D.N.Y. 1942); Krahmer v. Luing,
182 U.S.P.Q. 494, 495 (N. J. Super CT. Ch. Div 1974); Wallace v. Helm, 161 U.S.P.Q. 121,
123 (Cal. Sup. Ct. 1969); Imperial Home Corp. v. Lamont, 458 F.2d 895, 899 (5th Cir.
1972)).
136. See The Register of Copyrights, United States Copyright Office, Library of
Congress, Report on Works of Architecture, at 157-93 (1989) [hereinafter Copyright Office
Report] (survey of foreign copyright laws on architecture); see also Natalie Wargo,
Copyright Protection for Architecture and the Berne Convention, 65 New York University
Law Review 403, 414 n.66 (1990) (collecting surveys and citing Copyright Office Report as
most recent survey, but pointing out discrepancies between Copyright Report’s summary
and other reports of country laws).
137. See Jane C. Ginsburg, Copyright in the 101st Congress: Commentary on the Visual
Artists Rights Act and the Architectural Works Protection Act of 1990, 14 Columbia-VLA
Journal of Law & the Arts 477, 496 n.74 (1991) (citing CA Paris, 4e ch, June 19, 1979, 109
Revenue International du Droit d’Auteur 208 (1981) (photo which focused on individual
house)).
138. See Wargo, supra n.136, at 432 n.168 (citing TGI Paris, September 27, 1976, 93
RIDA 160, 162-63 (1977) (artist’s poster of chateau did not infringe copyright but violated
owner’s civil property rights)).
139. See Ginsburg, supra n.137, at 496 n.74 (citing TGI Paris, May 19, 1988, 32 C du DA
12 (1981) (photograph of pavilion in science park appearing without attribution or consent
on cover of book jacket infringed architect’s copyright)).
140. See Wargo, supra n.136, at 432 n.168 (citing CC Belgium, April 14, 1955, 9 RIDA
98, 99 (postcards of American soldier war memorial infringed architect’s copyright); T Civ
Seine, France, February 15, 1952, 72 GP 164 (1952) (copyright in house infringed by making
and selling of postcards)). Wargo explains that in France the Syndicat National des Editeurs
des Vues measures postcards to determine whether they are a general view or focus on a
particular building, and therefore violate copyright. See Wargo, supra n.136, at 432, n.167.
1072
Vol. 92 TMR
graphs141 has historically been prohibited in countries such as
France, Belgium, Morocco and Iceland.
b. Works Built After 1990
Following the United States’ accession to the Berne
Convention in 1988, and pursuant to a study conducted by the
Copyright Office,142 the Copyright Act of 1976 was amended to
comport with the Berne Convention requirement that member
nations extend copyright protection to constructed “architectural
works.” The amendments were entitled “The Architectural Works
Protection Act of 1990” (AWPA).143 The AWPA made “architectural
works” a separate category of copyrightable subject matter which
was defined to include the design of a building itself, as embodied
in any tangible medium of expression, including plans and
drawings, and design elements.144
Under the AWPA, a landmark building owner has no rights in
the design unless the architect has assigned the copyright to the
owner.145 A landmark building is theoretically protectible under
two categories of copyrightable subject matter, namely as a
“pictorial, graphic and sculptural work”146 (including models,
architectural plans and sculptural features existing independently
of the utilitarian aspects of the building) and as an “architectural
141. See id. at 432 n.168 (citing CA Rabat, Morocco, December 12, 1955, 12 RIDA 129,
131-132 (1956) (commercial photo of important public building infringed architect’s
copyright)).
142. See generally Copyright Office Report, supra n.136.
143. Act of December 1, 1990, Pub. L. No. 101-650, § 701, 104 Stat. 5089, 5133 (codified
at 17 U.S.C. §§ 101, 102(a)(8)).
144. See 17 U.S.C. § 102(a)(8). 17 U.S.C. § 101 defines an “architectural work” as “the
design of a building as embodied in any tangible medium of expression, including a building,
architectural plans, or drawings. The work includes the overall form as well as the
arrangement and composition of spaces and elements in the design, but does not include
individual standard features.” Monuments, interior designs and landscape architecture
have long been protected as “pictorial, graphic and sculptural works” to the extent that the
pictorial, graphic and sculptural features can be identified separately from, and are capable
of existing independently of, the utilitarian aspects of the design, under 17 U.S.C. § 101. See
Note, Melissa Mathis, Function, Nonfunction and Monumental Works of Architecture: An
Interpretative Lens in Copyright Law, 22 Cardozo Law Review 595 (2001).
145. 17 U.S.C. § 201.
146. 17 U.S.C. § 101, defines “pictorial, graphic, and sculptural works” to include “twodimensional and three-dimensional works of fine, graphic, and applied art, photographs,
prints and art reproductions, maps, globes, charts, diagrams, models, and technical
drawings, including architectural plans. Such works . . . include works of artistic
craftsmanship insofar as their form but not their mechanical or utilitarian aspects are
concerned.” The design of a “useful article,” as defined in the Act, is “considered a pictorial,
graphic, or sculptural work only if, and only to the extent that, such design incorporates
pictorial, graphic, or sculptural features that can be identified separately from, and are
capable of existing independently of, the utilitarian aspects of the article.” Id.
Vol. 92 TMR
1073
work” (including the design as embodied in a building,147 and the
architectural plans or drawings).148
The AWPA was tested in Andrew Leicester v. Warner
Brothers,149 in which the court held that architectural works that
are “conceptually separable” from a building are not entitled to full
copyright protection as sculptural works, and are subject to the
AWPA’s exemption from infringement suits of two-dimensional
pictorial representations of the work.150 In this case, an artist
designed a set of towers for a Los Angeles office building to fulfill
the developer’s obligation under local law to provide for a public
artwork on the building site. The owner of the building then
licensed the towers for use in the Batman Forever movie. In
connection with the movie, a small-scale three-dimensional model
of the towers was made, and photographic and artistic
reproductions of the towers were placed on commercial
merchandise to promote the movie.
The appellate court affirmed the lower court’s holding that the
towers were not entitled to protection as both a sculptural and an
architectural work. Even though the towers were intended to serve
as “public art,” the lower court held that the towers were not
“sculptural works” but “architectural works” because they
functioned as part of the streetwall. The majority of the appellate
court agreed and affirmed the lower court’s conclusion that the
Congressional intent of the AWPA was that “an author of a
pictorial, graphic or sculptural work who is not the same person as
the holder of the copyright in the architectural work does not have
separate protection for [the work] as a sculptural work.”151 Judge
Fisher of the appellate court wrote a lengthy dissent stating that
147. “Building” includes houses, office buildings, and nonhabitable structures such as
churches, pergolas, gazebos and garden pavilions. H.R. Rep. 101-735, 101st Cong., 2d Sess.
(1990), p. 22, reprinted in 1990 U.S.C.C.A.N. 6953, pps. 48-49. Additional protection for
“other three-dimensional structures” was deleted from the bill. Id.
148. There is some controversy over whether dual protection is available. A footnote in
the legislative history states that “monumental non-functional works of architecture
currently protected as sculptural works are now to be protected exclusively as architectural
works.” See H.R. Rep. No. 735, 101st Cong., 2d Sess., at 20-21. However, the difference
between a non-functional work of architecture and a sculptural work is not elucidated.
There is also controversy as to whether there is a typographical error in the legislative
history, which should actually state that “monumental non-functional works of architecture
currently protected as sculptural works are not to be protected exclusively as architectural
works.” William F. Patry, Copyright Law and Practice 33 (1994) (Cum. Supp. 2000). See
also Ginsburg, supra n.137, at 495 n.72. See Leicester v. Warner Bros., 232 F.3d 1212 (9th
Cir. 2000), aff’g 47 U.S.P.Q.2d 1501, 1508 (C.D. Cal. 1998) (commenting on difference of
opinion between commentators Nimmer and Patry).
149. Leicester v. Warner Bros., 232 F.3d 1212 (9th Cir. 2000), aff’g 47 U.S.P.Q.2d 1501,
1508 (C.D. Cal. 1998).
150. See Leicester, 47 U.S.P.Q.2d at 1508 (citing Congressional report on 1990
amendments at n.43 which states that “[m]onumental, non-functional works of architecture
. . . will now be protected exclusively under Section 102(a)(8)”) .
151. Id.
1074
Vol. 92 TMR
he believed that the finding that the towers were part of an
architectural work did not necessarily preclude a concurrent
finding that they could also be considered conceptually separable
from the building, for example, as part of the sculpture. Judge
Fisher believed that the lower court had erred in concluding that
the AWPA completely eliminated separate copyright protection for
pictorial, graphic and sculptural works that are part of
architectural works.152
In addition, the three-dimensional replica of the towers was
held to be non-infringing, since a valid sub-license had been
obtained from the building owner. The two-dimensional copies of
the towers used in promotional items such as comic books, posters
and t-shirts, were also held to be non-infringing “two-dimensional
pictorial representations” under the AWPA. The ruling with
respect to the two-dimensional commercial merchandise is difficult
to square with concepts of fair use and the legislative history of the
AWPA, which mentions tourist photos of landmarks as the type of
non-infringing two-dimensional works that the provision covers.153
c. Inadequacy of Protection
The AWPA has limited retroactivity and does not provide
copyright protection to any building constructed before
December 1, 1990,154 technically excluding all of this country’s
existing landmark buildings. The rationale for the vastly different
rights accorded to more recent architectural designs as opposed to
older designs is not clear from the legislative history of the Act.
General legislative reluctance to grant retroactive protection, as
well as the fact that architecture, unlike other forms of
copyrightable subject matter, is habitable, may have been
motivating factors. The concern that there would be an onslaught
of disruptive litigation may also have led to a determination that
prospective protection was preferable.
The AWPA contains a limitation of the landmark building
owner’s rights that is consistent with the copyright laws of several
other countries but that is not properly defined and has far
reaching cultural policy implications. It denies a landmark
building owner “the right to prevent the making, distributing, or
public display of pictures, paintings, photographs, or other
pictorial representations of the work, if the building in which the
152. 232 F.3d at 1225-36 (Fisher, J., dissenting).
153. H.R. Rep. No. 735, 101st Cong., 2d Sess., 12, 20-22.
154. 37 C.F.R. § 202.11(1)-(3) excludes from registration structures other than buildings,
standard features and pre-December 1, 1990 building designs “where the plans or drawings
of the building were published before December 1, 1990, or the buildings were constructed
or otherwise published before December 1, 1990. A building design that is unconstructed
but embodied in unpublished plans or drawings is protected, but this protection expires
December 31, 2002 if the building remains unconstructed.”
Vol. 92 TMR
1075
work is embodied is located in or ordinarily visible from a public
place.”155 The right to control unauthorized two-dimensional
reproductions of architecture was discussed at meetings held by
the World Intellectual Property Organization and UNESCO, and it
was concluded that:
[t]he reproduction of the external image of a work of
architecture by means of photography, painting, sculpture,
drawing or similar methods should not require the
authorization of an author if it is done for private purposes, or
even if it is done for commercial purposes where the work of
architecture stands in a public street, road, square or other
place normally accessible to the public.156
There are, however, some Berne countries that do grant exclusive
rights against two-dimensional reproductions when the building is
the primary, rather than the incidental, subject of the
representation and the representation is made for commercial
gain.157
The AWPA’s articulation of the scope of exclusive rights in
architectural works is ambiguous and problematic. The Act suffers
from a failure to define its terms, an incomprehensible distinction
between the protection of pre- and post-1990 architecture and the
exemption of two-dimensional, but not three-dimensional,
reproductions. One of the first courts to interpret the AWPA
commented that the Congressional history “gives some guidance
but does not provide definitive answers [as to] the scope of the . . .
‘architectural work’ coverage.”158 Almost ten years after the
enactment of the AWPA, there are few reported cases that cast
light on the subject.159
The terms used by the AWPA to describe the limitations on
the scope of copyrights in architectural works are not defined. For
example, the meaning of the term “pictorial representations” is not
defined, but rather is illustrated by reference to various items such
as pictures, paintings and posters, which seem to represent twodimensional works of artistic expression. What public policy is
served by treating architectural works “ordinarily visible from a
public place” differently from sculptural works, which are
protected against unauthorized pictorial representations as
155. 17 U.S.C. § 120(a); see also 17 U.S.C. § 106. This same restriction is present in the
laws of the Netherlands, Australia, Poland, Austria and Argentina. See Wargo, supra n.136,
at 432-33 & n.169.
156. Ginsburg, supra n.137, 496 & n.75 (citing Principle WA 7, 22 Copyright 401, 411
(December 1986)).
157. See Wargo, supra n.136, at 431-32 nn.163, 168 (citing the laws of Belgium, Morocco,
Iceland and France). For representative French case law, see Ginsburg, supra n.137, at 496
n.74.
158. See Leicester, 47 U.S.P.Q.2d at 1507.
159. See Hunt v. Pasternack, 192 F.3d 877 (6th Cir. 1999).
1076
Vol. 92 TMR
“pictorial, graphic and sculptural works,” even though they are set
in a public place? As copyright law scholar Jane Ginsburg so aptly
puts it, “[t]here is no apparent reason a Frank Lloyd Wright
should not retain control over posters, post cards and T-shirts
depicting the Guggenheim Museum, while an Alexander Calder
may control, or receive compensation for, equivalent exploitations
of his outdoor stabiles.”160
Congress decided to create an exemption of two-dimensional
pictorial representations of buildings ordinarily visible from a
public place in Section 120(a) of the AWPA rather than leave the
courts to make ad hoc determinations under the fair use provisions
of Section 107 of the Copyright Act.161 The legislative history
mentions that architecture is a public art form, that tourists take
home photos and posters of prominent works of architecture as
souvenirs, and that scholarly books rely upon the ability to take
photographs of architectural works. In recognition of the
longstanding and customary practice of making “two-dimensional
pictorial representations” of architecture for souvenir purposes,
Congress apparently created the exemption based on the
assumption that it would have minimal commercial impact upon
the copyright owner’s then-existing market for exploitation of
rights in architectural works. However, in our “age of mechanical
reproduction” this ill-defined exemption has far reaching
implications for architectural designs specifically created to be
leveraged in the marketplace, such as that of the Rock and Roll
Hall of Fame Museum, which was unable to prevent the sale of
unlicensed posters of its design. The exemption also legislates a
cultural policy that was not fully debated. However, it is
questionable whether exceedingly commercial “two-dimensional
pictorial representations” may still find protection under the
Section 120(a) exemption of the AWPA if their use falls beyond the
parameters of “fair use” identified in Section 107.
The AWPA does not address whether two-dimensional
commercial reproductions are permissible, or make reference to
the fair use provisions of Section 107. While the “making,
distributing, or public display” of “pictorial representations” of an
architectural work is permissible under the AWPA, does it follow
that the unauthorized sale or other commercial exploitation of
“pictorial representations” should be permitted? Although it seems
reasonable to exempt non-commercial two-dimensional representations of publicly visible buildings in forms that convey
“expression or comment,” this protection merely parallels that of
the fair use doctrine in Section 107. Equally incongruous is the
exemption of two-dimensional pictorial representations under the
160. Ginsburg, supra n.137, at 495.
161. H.R. Rep. 101-735, 101st Cong., 2d Sess. (1990), p. 22, reprinted in 1990
U.S.C.C.A.N. 6953, pp. 48-49.
Vol. 92 TMR
1077
AWPA, while offering protection against three-dimensional
reproductions. As Professor Ginsburg so succinctly puts it:
[w]hy should the architect’s copyright entitlement to
compensation for and control over reproductions and
derivative exploitations of her work reach such threedimensional exploitations as pencil sharpeners in the form of
miniature Chrysler Buildings, or tiny United States Capitol
buildings in liquid-filled plastic bubbles which, when shaken,
give the illusion of falling snow, yet not extend to unlicensed
posters, T-shirts, lunch boxes, shower curtains, etc.?162
3. Protection Under Patent Law
Patent protection for a landmark building is possible.163 New,
original and ornamental buildings or parts of a building are
considered articles of manufacture for which a patent may be
obtained. Patent protection is available for structures such as
mausoleums,164 grandstands,165 prefabricated and transportable
buildings,166 roof structures,167 service stations168 and restaurant
designs.169 Design patents for buildings have been successfully
enforced against infringements.170 On the other hand, the very
limited duration and scope of design patent protection make it a
less desirable alternative form of protection. Patent rights would
expire before the typical 25-30 years it takes for a building to be
eligible for landmark designation, so that protection would be lost
well before the owner would be in a position to capitalize on the
building’s fame and popularity.
V. THE RIGHT OF PUBLICITY ANALOGY
As illustrated above, trademark and unfair competition laws
are unwieldy and unreliable means, both theoretically and
practically, to protect the unique property rights inherent in
landmarks. Copyright protection is unavailable for landmark
buildings, and presently ill-defined for those buildings that fall
162. Ginsburg, supra n.137, at 495.
163. See generally 35 U.S.C. §§ 171-73; 37 C.F.R. § 1.151-52.
164. See International Mausoleum Co. v. Sievert, 213 F. 225, 229 (6th Cir. 1914); see
also United States Patent No. 5,899,045. D226, 624, D266, 622; D353679.
165. See In re Hadden, 20 F.2d 275, 276 (D.C. Cir. 1927).
166. See United States Patent Nos. D424, 207, 6,038,824.
167. See Riter-Conley Mfg. v. Aiken, 203 F. 699, 705 (3d Cir. 1913).
168. United States Design Patent Nos. D317,047; D349,349; D316,903; D301,169;
D300,662; D281,427; D276,371; D276, 370; D374, 576.
169. See Design Patent No. D417, 915; Patent No. 5,921,036.
170. See Pure Oil Co. v. Ruthsatz, 27 F. Supp. 688, 690 (W.D. Mich. 1939) (citing White
Tower System v. White Castle System, 90 F.2d 67 (6th Cir. 1937)).
1078
Vol. 92 TMR
within the AWPA, as currently constituted. If landmark buildings
function as attention-getting symbols with commercial publicity
value more commonly than as source-identifying trademarks
associated with goods and services, then it follows that rather than
granting protection against competitive uses or uses resulting in a
“likelihood of confusion,” landmarks should be protected in the
same way that a personal identity is protected against
unauthorized commercial use as a quasi-right of privacy or
publicity.
The symbolic value of landmarks is recognized by advertisers
and other companies that use them for commercial and trade
purposes and the consumers who are moved by their image and
shape, history and connotations. Advertisers count on the ready
recognition of landmarks and their value as signifiers to attract an
audience and attention to a product or service and create an
association between the landmark and product to assist in
promotion and sales. If the landmark owner has created, used or
paid for this iconic value, this asset should arguably be protected
from unauthorized commercial exploitation.
Several commentators have elaborated upon the similarities
between trademarks and elements of persona or identity, which
are protected by a so-called “right of publicity” under state law.171
One important difference between a right of publicity and a
trademark right is that, at least theoretically, a mark has no
legally recognized existence separate and apart from its use by a
particular source in connection with a product or service. Yet even
this difference is eroding. Famous marks are sought after by
consumers for their own intrinsic utility as objects that project
aspects of the consumer’s identity, and not because the consumer
believes the product originated with or was sponsored by the entity
that the name or emblem signifies. As one court observed, in the
United States, “we commonly identify ourselves by displaying
emblems and expressing allegiances. Our jewelry, clothing and
cars are emblazoned with the organizations we belong to, the
schools we attend, the landmarks we have visited, the sports
171. Ellen P. Winner, Right of Identity: Right of Publicity and Protection for a
Trademark’s Persona, 71 TMR 193 (1981). According to Winner, trademarks and publicity
rights are similar in that both (1) are property rights that identify and distinguish a product
or service for the consumer, (2) represent and embody the recognition value and good will of
a source (3) are capable of transferring their recognition value and good will to a product or
service (4) are used to sponsor or endorse a product or service (5) rely upon ongoing
maintenance of certain standards with respect to the nature and quality of the product or
service for which they are used, in order to preserve and enhance the signification value or
reputation of the source (6) are vulnerable to over-use which tends to lessen their
distinctiveness, or their capacity to evoke and connote certain positive meanings and
identify a particular source and (7) wish to derive their economic benefit from the
investment of time, effort and money, and (8) have a need to prevent others from reaping
unjust rewards by appropriation of the recognition factor and advertising value of the
persona or the good will of the mark.
Vol. 92 TMR
1079
teams we support and the beverages we imbibe.”172 We
communicate with each other through our associations and
references to people as well as inanimate objects, and like the
inhabitants of the Isle of Laputa in Jonathan Swift’s Gulliver’s
Travels,173 we carry around bundles of objects for display and
artificial converse in a universal language of signs, symbols, logos
and emblems.
In general, when trademark and unfair competition laws are
utilized to protect the “merchandising value” of a mark, the result
is inconsistent decisions and remedies that are “cloaked in the
rhetoric of confusion” and which “[rest] on little more than
intuition and prejudice.”174 Trademark law may skew results in
cases involving landmarks whose name or identity has been
appropriated since “the likelihood of confusion may well depend in
part upon the character of the institution identified by the name or
mark. Perhaps we may assume more readily that a commercial,
rather than an educational or other non-profit entity, is actively
participating in the exploitation of its identity.”175
Also questionable is the absolute monopoly which results from
protecting merchandising rights as trademarks. A mark owner
obtains
an exclusive right to the merchandising value of its symbols
despite the absence of any judicial or legislative analysis of the
social or moral utility of the resulting monopoly. The outcome
rests instead on the often fortuitous circumstance that a
particular consumer population is prone to inaccurate
assumptions. Confusion may give good cause for relief, but a
remedy that excludes others from the market on that rationale
alone can only ensure inequity and forestall a direct
assessment of the wisdom of a merchandising monopoly.176
Protecting landmarks under trademark or copyright laws also
forestalls a thoughtful analysis of the boundaries of that monopoly.
Given the nature of landmarks as cultural objects, the boundaries
of any right of publicity granted to a custodian of a landmark need
to be clearly defined and weighed against the public interest in
landmarks and rational cultural policy.
172. International Order of Jobs Daughter’s v. Lindeberg & Co., 633 F.2d 912, 919 (9th
Cir. 1980), cert. denied, 452 U.S. 941 (1981).
173. Jonathan Swift, Gulliver’s Travels 231 (Penguin English Library 1967).
174. Robert C. DeNicola, Institutional Publicity Rights: An Analysis of the
Merchandising of Famous Trade Symbols, 62 North Carolina Law Review 603, 614 (1984).
175. Id. at 611.
176. Id. at 613.
1080
Vol. 92 TMR
A. Historical Overview
The term “right of publicity” was first used in the United
States in 1953 by New York Judge Jerome Frank who viewed it as
another name for a pecuniary right in gross that could be asserted
against the unauthorized use of the publicity value of a man or a
building.177 In support of this right, Judge Frank cited the Madison
Square Garden case in which the owners of the Garden
successfully asserted rights against the unauthorized use of
images of their landmark property in a film.178 Subsequently,
however, the right of publicity developed with reference to the
publicity value of people and not inanimate objects.179 In a 1954
article, Melvin T. Nimmer defined “publicity value” as the
commercial worth of a person’s name and picture when used for
advertising or commercial purposes.180
In 1960, Prosser defined the tort of “appropriation” as the
taking of the “commercial value of identity” or the “exclusive right
of an individual to a species of trade name, his own, and a kind of
trademark in his likeness.”181 Prosser articulated two types of
possible injury with respect to these publicity rights: (1) “loss of
dignity” injuries that involve loss of self-respect and dignity
through being made a public spectacle, and (2) “commercial
injuries” that involve forcing persons against their will to help
someone sell a product, which is a form of “involuntary advertising
publicity.”182 These injuries are not unknown to landmark owners
whose buildings have been used without permission to sell many
products and services.
Perhaps one reason for the refusal to date to extend publicity
rights to inanimate objects is that the theoretical basis for
177. Haelan Laboratories v. Topps Chewing Gum Inc., 202 F.2d 866 (2d Cir. 1953).
Frank wrote that, “a man has a right in the publicity value of his photograph, i.e., the right
to grant the exclusive privilege of publishing his picture, and that such a right may be
granted in gross, without an accompanying transfer of a business or of anything else.
Whether it be labeled a property right is immaterial; for here as often elsewhere the tag
‘property’ simply symbolizes the fact that the courts enforce a claim which has pecuniary
worth.”
178. Id. at 868.
179. Nimmer, The Right of Publicity, 19 Law and Contemp. Probs. 203, 216 (1954) (“the
right of each person to control and profit from the publicity value which he has created or
purchased”); Douglass v. Hustler Magazine Inc., 769 F.2d 1128, 1138 (7th Cir. 1985)
(Posner, J.) (“the right to prevent others from using one’s name or picture for commercial
purposes without consent”); J. Thomas McCarthy, The Rights of Publicity and Privacy vii
(1992) (“the inherent right of every human being to control commercial use of his or her
identity”).
180. Nimmer, id.
181. Prosser, Privacy 48 Cal. L. Rev 383 (1960) defining the torts of intrusion,
disclosure, false light and appropriation of identity.
182. McCarthy, supra n.179, § 1.5 D, n.37, § 3.2, citing Factors Etc. v. Pro Arts, 579 F.2d
215, 220 (2d Cir. 1978).
Vol. 92 TMR
1081
recognizing an invasion of a right of privacy is to prevent injury to
feelings and reputation. According to McCarthy, because an
interest in personal dignity and autonomy underlies rights of
publicity, this necessarily limits the application of the right to
natural persons.183 The Restatement of the Law of Unfair
Competition184 also limits the right of publicity to real persons, and
excludes corporations and other juridical persons from protection.
On the other hand, Nimmer recognized that rights of publicity
could properly attach not only to a person or firm, but also to the
owners of animals and inanimate objects.185 As discussed below, it
is arguable that this view has been adopted in Lanham Act
Sections 2(a) and 2(c).
There is an increasing recognition that protection of the
economic underpinnings of the right of publicity is at least as
important as protection of personal privacy and dignity. In the
only United States Supreme Court case to deal with the right of
publicity,186 the Court stated that the right of publicity interest
was “closely analogous to the goals of the patent and copyright
law, focusing on the right of the individual to reap the rewards of
his endeavors and having little to do with protecting feeling or
reputation.”187 According to the Court, the state-created right of
publicity provided an economic incentive to make the investment
necessary to produce a work of interest to the public, and that the
strongest case for the right of publicity was the appropriation of
the very means by which reputation was acquired in the first
place.
According to Nimmer, right of publicity protection for people
and firms was necessary because trademark law inadequately
protected appropriations of an individual’s “publicity value.”
Trademark infringement required proof of confused association,
and the use of a person’s identity to call attention to an
advertisement did not clearly imply an endorsement or approval,
which was a necessary element of trademark infringement.
Nimmer argued that “the publicity value of a person or firm may
be profitably appropriated and exploited without the necessity of
any implication that such person or firm is connected with the
exploitation undertaken by the appropriation.”188 However, the
unauthorized use of another’s trademark as an “attention-getting”
183. Id., Ch. 28.
184. Restatement (Third) of Unfair Competition § 46 cmt. 6 (1995).
185. Nimmer, supra n.179, at 212.
186. Zacchini v. Scripps Howard Broadcasting Co., 433 U.S. 564 (1977).
187. Id. at 573.
188. Nimmer, supra n.179, at 212.
1082
Vol. 92 TMR
device in advertising has been held to be outside the bounds of fair
use.189
Arguments justifying the right of publicity for natural beings
are equally applicable to landmark owners that attempt to prevent
the use of landmark images for advertising and commercial
purposes. For example, courts were initially resistant to
celebrities’ attempts to seek redress for unauthorized use of their
names and likenesses and injuries to their “rights of privacy.”
Celebrities had no expectation of privacy, as they were not
“private” people,190 and there was a legitimate public interest in
the activities of those who had voluntarily or otherwise become
public figures. A separate line of case law then developed in which
public figures were seen to have a right to be free from commercial
exploitation at the hands of another.191 Similarly, the status of
landmark architecture as “public works” and part of “cultural
commons” should not justify a refusal to recognize and protect
their publicity rights. When landmark owners began to assert
trademark rights in their buildings, which are widely considered to
be part of the public domain, they encountered the same resistance
as the public figures who first asserted privacy rights. There was
strong public resistance to the mere suggestion that restrictions be
placed upon the public use of landmarks. Newspaper articles
reporting landmark trademark disputes carried headlines such as
“New York Patents Skyline View”192 and “What Next—A Fee for
Looking?’193 which reflected the public confusion and dismay at the
prospect of any such restrictions.
The economic rationale enunciated by the United States
Supreme Court in support of the right of publicity in natural
beings is equally applicable to landmarks. The grant of a right of
publicity in landmark designs could provide an additional
economic incentive to create and develop buildings that are of
interest to the public and enhance quality of life, and assist in the
preservation of significant public spaces. One distinction, however,
between granting an individual a right of publicity and extending
such a right to a landmark rests in the unique relationship
between the landmark creator or owner, and the landmark itself.
189. Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 953-54 (7th Cir. 1992)
(held the use of the words THIRST AID in advertising as an “attention-getting symbol” not
to be a “fair use”); Abdul-Jabbar v. General Motors Corp.,75 F.3d 139 (9th Cir. 1996) (held
that use of a basketball star’s name in advertisements comparing car performance to the
basketball star’s performance not a “nominative fair use”).
190. O’Brien v. Pabst Sales Co., 124 F.2d 167 (5th Cir. 1941) held that O’Brien, a
football player, had no cause of action against Pabst for using his photo in its beer calendar,
despite the fact that he was a spokesperson for organization against drinking.
191. Booth v. Curtis Pub Co., 15 A.D.2d 343, 351 (N.Y. Sup. Ct. 1962).
192. David Usborne, New York Patents Skyline View, The Independent (London),
September 3, 1998, News Section at 15.
193. Dunlap, What Next? A Fee for Looking? supra n.27.
Vol. 92 TMR
1083
Arguably, the creator or owner of the landmark, who would reap
the economic benefits of a right of publicity, is merely the
caretaker or transient tenant of the landmark, which will likely
exist beyond such proprietorship. Creating an unfettered right in
the caretaker might result in tarnishing uses antithetical to the
public interest in the landmark. One solution is that a
representative of the public interest, such as a state attorney
general, could be designated to safeguard the public status of the
landmark as cultural property. In any event, the scope of any
grant of right of publicity protection should be circumscribed to
take into account the interest of public and private stakeholders in
the landmark.
B. Right of Publicity Laws
Applicable to Landmarks
1. New York General Business Law Section 397
In 1961, New York enacted Section 397 of the General
Business Law194 granting certain non-profit organizations
exclusive rights to use their identities for advertising and trade
purposes. The law prohibits the unauthorized commercial use of
the name, symbol or other identification of any non-profit
organization which is organized exclusively for “religious,
benevolent, humane, charitable, educational, hospital, patriotic,
fraternal, veterans purposes or to promote the study or the
advancement of the arts or sciences or to sustain, encourage or
promote the musical or performing arts or to inform or educate the
consumer by publishing and disseminating the results of tests and
evaluations of goods and services.” The rights granted to non-profit
organizations have been said to be similar to rights of privacy195
but distinct from rights of publicity afforded to individuals under
New York law.196
New York’s non-profit right of publicity statute allows the use
of the name or symbol of a non-profit’s identity solely for purposes
of historical reference, to describe a geographical location, and uses
other than as a trademark or trade name or for purposes of trade
identification. New York courts have denied recovery in cases
194. N.Y. C.L.S. Gen. Bus. § 397 (1999).
195. Consumers Union of U.S. v. General Signal Corp., 724 F.2d 1044, 1054 (2d Cir.
1983). The Second Circuit in dictum stated that the purpose of Section 397 is to protect the
right of privacy.
196. See 1961 New York State Legislative Annual, p. 72-74; Sections 50 and 51 of the
New York Civil Rights Law. Trademark scholar Professor J. Thomas McCarthy believes
that Section 397 bears little resemblance to the right of publicity and bears none of the
hallmarks of the right of publicity that rests on protection of an individual’s persona, dignity
and autonomy, See McCarthy, supra n.179, at §§ 4.8 [B][1] at p. 4-41 and 6.9[E] at p. 6-69.
1084
Vol. 92 TMR
involving uses which are satirical,197 artistic198 or informative,199
notwithstanding that the use is embodied in a commercial
medium. It is a misdemeanor to violate the statute, and the nonprofit organization may bring an equitable action for injunction
and damages in the New York State Supreme Court to prevent any
actual or threatened violation.
This law has an interesting history, illustrative of the issues
surrounding the protection of landmarks under a right of publicity
theory. According to a memorandum submitted by the New York
Metropolitan Opera Association, the bill was “designed to fit an
existing gap in the law” and the necessity for remedial legislation
was recognized in a case as far back as 1912.200 In that case, a
college was unable to prevent a candy manufacturer from using its
name, pennant, college seal and college yell to advertise, promote
and package chocolates. The court acknowledged the fact that
while the college was a venerable public corporate institution, it
had no legally cognizable reputation or character that could be
assailed, and the court was powerless to create a right unknown to
common law and not provided by statute.201
The Metropolitan Opera Association argued that there was a
pressing need for the bill based on its own experience pursuing
“costly and time consuming litigations” to prevent the use of the
Metropolitan name which had been “linked in commercial
advertising with such diverse products as ballet shoes, whiskey
and brassieres in an effort to identify the product with or
otherwise connote approval of the product by the Metropolitan.”202
The bill was criticized by the Association of the Bar of the City of
New York (ABCNY), which argued that that there should be no
general protection afforded by law against the unauthorized
commercial use of the name and good will of a non-profit
organization in the absence of some element of public deception.
ABCNY queried “whether non-profit organizations should be
197. University of Notre Dame Du Lac v. Twentieth Century-Fox Film Corp., 22 A.D.2d
452, 256 N.Y.S.2d 301 (N.Y. App. Div. 1st Dep’t 1965), aff’d 15 N.Y.2d 940, 259 N.Y.S.2d
832, 207 N.E.2d 508 (1965) (film satirizing University of Notre Dame activities in college
football); Girl Scouts of U.S. v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1235
(S.D.N.Y. 1969).
198. Simeonov v. Tiegs, 602 N.Y.S.2d 1014 (Civ. 1993).
199. Consumers Union v. US General Signal Corp., 724 F.2d 1044 (2d Cir. 1983).
200. Vassar College v. Loose-Wiles Biscuit Co., 197 F. 982, 994 (W.D. Mo. 1912).
201. Id. at 988.
202. Lowell C. Wadmond, Vice Chairman of the Board of the Metropolitan Opera
Association, Inc. Memorandum Re A. Int 4356, Pr. 4621 dated March 30, 1961, to John
Robert Brook Chairman of the Judiciary Committee of the New York State Assembly, and
letter dated March 30, 1961, to Governor Nelson A. Rockefeller. The Zia tribe of New Mexico
has echoed these words in calling for statutory protection for its sacred Zia symbol claiming
that it has been used for everything from public toilets and motorcycles to the state flag.
“Battle Over Pueblo Sign,” NY Times, January 13, 2000, F1.
Vol. 92 TMR
1085
afforded the special and quite broad statutory protection which the
bill seeks to bestow upon them.”203
While The Metropolitan Opera Association may invoke Section
397 to prevent the depiction of its landmark Opera House, a forprofit corporation seeking to enjoin the unauthorized, and even
tarnishing, use of its building may not be accorded the same “right
of privacy” protection under New York state law where First
Amendment concerns are implicated.204 A New York corporation’s
lawsuit on grounds of tarnishment, objecting to the use of
photographs of its bar and grill in a humorous article in National
Lampoon magazine entitled “The Loquacious Rapist,” was
dismissed. In its analysis, the court considered the purpose for
which the building was used to undermine the credibility of the
tarnishment claim, stating that it is “difficult to appreciate how
the corporate sensibilities of the plaintiff have been wounded.
Saloons have traditionally not been habitats of Nobel Prize
winners or even Rhodes scholars.”205
Non-profit institutions that have attempted to use the statute
to prevent uses of their name and reputation for purposes of
criticism, commentary and satire have even been unsuccessful.206
As cultural objects, landmarks are perhaps more likely to be used
for purposes of criticism, satire and other forms of commentary.
Based on their landmark status and fame it would seem that New
York courts are likely to find a landmark’s reputation subject to
tarnishment only in exceptional cases.
203. The Association of the Bar of the City of New York, Bulletin No. 7, March 27, 1961,
Memos. Nos. 84 to 105, pp. 393-460.
204. See Merle v. Sociological Research Film Corporation, 166 App. Div. 376, 152 N.Y.S.
829 (N.Y. Sup. Ct. 1915) (portrayal of plaintiff’s factory on which his firm name clearly
appeared in a motion picture dealing with white slave traffic) cited in Sarat Lahiri v. Daily
Mirror, 162 Misc. 776, 779, 295 N.Y.S. 382, 385 (N.Y. Sup. Ct. 1937).
205. Dauer & Fittipaldi, Inc. v. Twenty First Century Communications, Inc. et al. 43
A.D.2d 178, 349 N.Y.S.2d 736 (N.Y. Sup. Ct. 1973).
206. Girl Scouts of U.S. v. Personality Posters Mfg. Co., 304 F. Supp. 1228, 1235
(S.D.N.Y. 1969) (use of image of pregnant Girl Scout in posters). The Girl Scouts brought a
suit under Section 397 to enjoin the use of a poster showing a pregnant Girl Scout with their
slogan BE PREPARED. The Girl Scouts are also protected by a federal law, 36 U.S.C. § 36,
which grants it the sole and exclusive right to use its uniform, emblems, badges, marks and
phrases to carry out its purposes. The court found that the purpose of the statute was to
bestow honor upon the organization, and not to protect it absolutely from the lampooning
use of its name, motto and insignia and that no damages could be demonstrated because the
reputation of the plaintiff was “secure against the wry assault of the defendant.” Id. at 123536. In Consumers Union of U.S. v. General Signal Corp., 724 F.2d 1044, 1054 (2d Cir. 1983),
the court concluded that the reputation of the Consumers Union for impartiality and
independence from industry did not face “imminent collapse” due to the use of excerpts from
its evaluations of vacuum cleaners in advertisements. University of Notre Dame Du Lac v.
Twentieth Century-Fox Film Corp., 22 A.D.2d 452, 256 N.Y.S.2d 301 (N.Y. App. Div. 1st
Dep’t 1965), aff’d 15 N.Y.2d 940, 259 N.Y.S.2d 832, 207 N.E.2d 508 (1965) (Notre Dame
University was also not permitted to enjoin the use of its name and image in a book and
motion picture film which satirized the college football activities of the university).
1086
Vol. 92 TMR
Another New York statute may provide relief to New York
landmark owners seeking redress for the unauthorized use of their
landmark’s name or address. New York General Business Law
Section 133207 prohibits the use of names or addresses with intent
to deceive, and the intentional use of any address or designation of
location in the community for advertising, trade or other purposes
which may deceive or mislead the public as to the true address or
location of such person, firm or corporation. Violation of the statute
is a misdemeanor. The law became effective September 1, 1967.
Unauthorized use of a landmark building, which arguably could be
considered an “address,” may violate this law.
2. Institutional Right of Publicity in
Lanham Act Sections 2(a) and 2(b)
A landmark’s publicity right is theoretically protected against
false association under Section 2(a) of the Lanham Act, which
precludes the registration of any mark that consists of the name,
portrait or other matter that falsely suggests a connection with a
person or institution and national symbols or insignia. A “person”
is defined in the Lanham Act to include institutions as well as
commercial corporations, and Section 2(a) has been held to apply
to commercial corporations208 and to prohibit registration of a
mark which falsely suggests a connection with a commercial
corporation.209 Section 2(a) also prohibits the registration of any
mark that may disparage or falsely suggest a connection with
persons or institutions or bring them into contempt or disrepute.210
Thus it may be said that Section 2(a) confers a type of publicity
right protection.
As the United States Federal Circuit explained in University
of Notre Dame Du Lac v. J.C. Gourmet Food Imports Co.,211
Section 2(a) embraces the concepts of the right of privacy and
publicity and was designed to protect the name of an institution
which was not a technical trademark or trade name. Since Section
45 of the Lanham Act defines a “person” to include juridical
entities such as firms, corporations, and organizations capable of
suing and being sued in a court of law, as well as states and
instrumentalities of states, these entities may challenge the
registration of the landmarks which symbolize them or their
businesses under Section 2(a).212
207. N.Y. C.L.S. Gen. Bus. § 133 (1999).
208. Moorehouse Manufacturing Corp. v. J. Strickland & Co., 407 F.2d 881 (C.C.P.A.
1969).
209. Popular Merchandise Co. v. “21” Club, Inc., 343 F.2d 1011 (C.C.P.A. 1965).
210. 15 U.S.C. § 1052(a).
211. 703 F.2d 1372 (Fed. Cir. 1983).
212. 15 U.S.C. § 1127
Vol. 92 TMR
1087
Section 2(a) requires proof of a likelihood of “identification”
rather than a likelihood of “confusion.”213 To succeed in a
cancellation or opposition proceeding based on a false association
claim under Section 2(a), the contested mark must point uniquely
and unmistakably to the identity and persona of the “person” or
“institution.”214 The TTAB has interpreted this standard to require
a showing that the mark is the same, or a close approximation of,
the identity of an institution, the institution is not connected with
the goods or services performed by the applicant, and that the
fame or reputation of the institution is of such a nature that a
connection with such person or institution would be presumed
when applicant’s mark is used on its goods or services.215 In
addition, the institution must assert the claim,216 or the USPTO
may do so and refuse registration during examination.217
In the Notre Dame case,218 Notre Dame University opposed
the registration of a European cheese importer’s mark that
consisted of the words NOTRE DAME and a representation of
Notre Dame Cathedral on the ground that the mark falsely
suggested a connection with the University as “an institution”
under Section 2(a). The Federal Circuit characterized the rights
granted under Section 2(a) as a federal right of publicity, but
affirmed the TTAB’s decision dismissing the opposition because
the University failed to demonstrate that NOTRE DAME was
unmistakably associated with the University and pointed uniquely
to it, or that the applicant intended to identify the University. In
fact, the applicant claimed that he had selected the mark following
his visit to the Cathedral of Notre Dame in Paris and this was
borne out by the fact that a representation of the cathedral formed
part of the mark.
The University argued unsuccessfully that a lesser burden of
proof should be required to show a false association or connection
with an institution under Section 2(a). The Federal Circuit found
that Section 2(a) was intended to preclude registration of a mark
which conflicted with another’s rights, even though not founded on
the familiar test of likelihood of confusion219 and that the drafters
were concerned with protecting the name of an individual or an
213. Notre Dame, 703 F.2d at 1375-76.
214. Heroes Inc. v. The Boomer Esiason Hero’s Foundation, Inc., 43 U.S.P.Q.2d 1193
(D.C.D.C. 1997); Notre Dame, 22 A.D.2d 452.
215. In re Cotter & Co., 228 U.S.P.Q. 202 (T.T.A.B. 1985); Buffett v. Chi-Chi’s, Inc., 226
U.S.P.Q. 428 (T.T.A.B. 1985).
216. Heroes Inc., 43 U.S.P.Q.2d at 1197.
217. Id. at 1198, n.4, citing In re Cotter & Co., 228 U.S.P.Q. 202 (T.T.A.B. 1985); In re
Brumberger Co., 200 U.S.P.Q. 475 (T.T.A.B. 1978).
218. University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 703 F.2d 1372,
1376 (Fed. Cir. 1983).
219. Id. at 1375.
1088
Vol. 92 TMR
institution which was not a “technical trademark” or trade name
upon which an objection could be made under Section 2(d) of the
Lanham Act.220 Nevertheless, the Federal Circuit stated that a
“name cannot be protected in gross under [Section] 2(a) . . . if the
University is to prevail on a basis not predicated on likelihood of
confusion, it is necessary for the University to establish another
legally cognizable right with which [the] registration would
conflict.”221 The court found that the University was seeking to
assert a right to control the use of its identity, a species of the right
of privacy. To assert this right, the court held, the mark must point
uniquely to the party asserting it, or an intent to achieve the false
association must be demonstrated. Landmark owners or users of a
landmark’s image may find it difficult to prove a false assumption
of sponsorship, approval or association, or demonstrate that their
buildings, which may have been designated as landmarks, are
“uniquely associated” with them in particular because of the
landmark’s associations with cities, neighborhoods, historical
events and persons.
Section 2(a) also prohibits the registration of a mark that may
disparage or falsely suggest a connection with a “national symbol”
or bring it into contempt or disrepute. A “national symbol” has
been defined as “anything that by reason of its appearance
immediately suggests to a person the name of the country for
which the symbol stands,”222 “National symbols” are not entitled to
absolute protection against registration, like flags or coats of arms
that may not be registered under any circumstances.223 Many
national symbols are protected against unauthorized use by special
statutes.224
220. Id.
221. Id. at 1376.
222. National symbols that have been held to conjure up the image of the United States
as a whole include the Statue of Liberty (In re Consolidated Foods, 187 U.S.P.Q. 63, 64
(T.T.A.B. 1975) (citing Liberty Mut. Ins. Co. v. Liberty Ins. Co. of Texas, 185 F. Supp. 895,
908 (E.D. Ark. 1960), which “assum[ed] without deciding that the Statue falls within the
concept of a national symbol”); the bald eagle (In re National Collection & Credit Control,
Inc., 152 U.S.P.Q. 200 (T.T.A.B. 1966)); the name and figurative representation of “Uncle
Sam” (Consolidated Foods, id.). The representation of a hammer and sickle is a “national
symbol of the former Soviet Union (In re Anti-Communist World Freedom Congress, 161
U.S.P.Q. 304 (T.T.A.B. 1969); The “House of Windsor” has been held not to be a national
symbol of the United Kingdom but merely the name of the reigning family (W.H. Snyder
and Sons Inc. v. Ladd, 227 F. Supp. 185 (D.C.D.C. 1964).
223. Liberty Mut. Ins., 185 F. Supp. at 908.
224. 18 U.S.C. § 709, 18 U.S.C. § 713 prohibits the use of the seals of the United States
and President in any poster, advertisement, circular, book, pamphlet, or other publication,
public meeting, play, motion picture, telecast or other production or on any building or
monument for the purpose of conveying a false impression of sponsorship or approval by the
United States government or any agency, department or instrumentality thereof. 18 U.S.C.
§ 701 prohibits the manufacture, sale or possession of any insignia or design prescribed by
the head of any department or agency of the United States for use by any officer or
employee and the making of any photograph, print, or impression in the likeness thereof.
Vol. 92 TMR
1089
The mere incorporation of a landmark building that is a
national symbol in a mark does not by itself preclude registration
under Section 2(a). There must be a showing of false association. A
mark including an image of the landmark United States Capitol
building was not disqualified from registration under 2(a) because
there was evidence that the Capitol building was included in over
eighty trademark registrations and presumably did not point
uniquely to the United States government, and there was no
evidence that consumers were likely to make the false assumption
that the United States government sponsored or approved of the
registrant’s services.225 Moreover, the mere granting of national
landmark status by the federal government is unlikely to render
the landmark a “national symbol.”226
Section 2(b) of the Lanham Act prohibits the registration of an
“insignia of the United States or state or municipality.”227
“Insignia” include “specific designs formally adopted to serve as
emblems of governmental authority,” and “other emblems and
devices which also represent such authority and are of the same
general class and character as flags and coats of arms” such as the
United States Flag, the Great Seal of the United States, the
Presidential Seal and seals of governmental departments.228
Government department insignia that are merely used to identify
a facility of the Government are not insignia of national
authority.229 The United States Capitol building is not an
“insignia” of the United States230 and neither is the Statue of
Liberty.231 Thus, there may be a need for federal statutes that
specifically acknowledge and protect landmark government
buildings from unauthorized advertising and trade use.
225. Heroes Inc. v. The Boomer Esiason Hero’s Foundation, Inc., 43 U.S.P.Q.2d 1193,
1997 (D.C.D.C. 1997) (held that mere incorporation of the Capitol building does not, by
itself, disqualify a trademark from registration).
226. See San Francisco Arts & Athletics, Inc. v. United States Olympic Committee, 483
U.S. 522, 107 S. Ct. 2971, 97 L. Ed. 2d 427 (1987) (Supreme Court held that the mere
granting of charter to the United States Olympic Committee by the United States
government with right to exclusive use of its designations did not render it a government
agent or “national symbol” and the refusal of registration under 2(a) could not be sustained).
227. 15 U.S.C. § 1052(b).
228. TMEP § 1204.
229. In re United States Dept of the Interior, 142 U.S.P.Q. 506, 507 (T.T.A.B. 1964)
(cited in Heroes, 43 U.S.P.Q.2d at 1198).
230. Heroes, 43 U.S.P.Q.2d at 1197-8. In this case the district court stated that “the
Capitol Building may evoke certain sentiments among members of the public, but such a
message-conveying function—assuming one exists—is incidental to the building’s primary
function: to provide a place for the legislative branch to carry out its business . . . there is no
evidence before the Court that the Capitol Building was ‘formally adopted to serve as an
emblem of the governmental authority.’”
231. Liberty Mut. Ins. Co. v. Liberty Ins. Co. of Texas, 185 F. Supp. 895, 908 (E.D. Ark.
1960).
1090
Vol. 92 TMR
In addition to the prohibition of registration under Section
2(a), there are many federal statutes absolutely prohibiting the use
of specific symbols that serve the public interest.232 Courts have
enjoined the use of such symbols even in non-commercial contexts,
notwithstanding the rights granted by the First Amendment.233
These symbols are accorded such broad protection because they
serve important public purposes that would be compromised by
unnecessary enforcement costs. Certain landmark buildings that
are embodiments of national cultural heritage should be entitled to
a similar degree of protection.
C. Proposed Legislative Remedies to
Protect Landmark Buildings
Many commentators have urged that the owners of wellknown trade symbols should be granted a right of publicity to
prevent unauthorized commercial appropriation of the hard won
advertising value of their symbols.234 In a 1954 article, Nimmer
argued that traditional legal theories were inadequate to protect
the pecuniary publicity value, for persons as well as inanimate
objects, as the recent experience of landmark owners would seem
to confirm. Nimmer’s view was that “since animals, inanimate
objects, and business and other institutions all may be endowed
with publicity values, the human owners of these non-human
entities should have a right of publicity (although no right of
privacy) in such property, and this right should exist (unlike unfair
competition) regardless of whether the defendant is in competition
with the plaintiff, and regardless of whether he is passing off his
own products as those of the plaintiff.”235 As discussed above,
Nimmer referred to a case which protected the publicity value of
images of a landmark as a property right236 in order to illustrate
the existence of a judicial willingness to protect publicity rights
232. Such symbols include those of the Red Cross (18 U.S.C. § 706), the Olympic
Committee (36 U.S.C. § 380), the American National Theater and Academy (36 U.S.C.
§ 3305), Cape Cod National Seashore 50 F.R. 25336 (June 18, 1985) and Assateague Island
Insignia Prescription 53 F.R. 34841 (September 8, 1988), the Big Brother, Big Sister and the
Boy Scouts and Girl Scouts (36 U.S.C. § 27; 36 U.S.C. § 36), and the Golden Eagle Insignia,
originated by the Department of the Interior as the official symbol of federal recreation
areas (18 U.S.C. § 715).
233. San Francisco Arts & Athletics, Inc. v. United States Olympic Committee, 483 U.S.
522, 107 S. Ct. 2971, 97 L. Ed. 2d 427 (1987).
234. Crowther, Misappropriation of Trade Symbols—Synthesis of Public and Private
Priorities, 60 TMR 321, 325 (1970); Nimmer, supra n.179, at 216; Winner, Right of Identity,
supra n.171 cited in DeNicola, Institutional Publicity Rights, supra n.174, at 620 n.102;
Boylan, The Corporate Right of Publicity in Federal Trademark Dilution Legislation, 88
TMR 349 (1998).
235. Nimmer, at 215-16.
236. Madison Square Garden Corp. v. Universal Pictures, 255 A.D. 459, 7 N.Y.S.2d 845
(App. Div. 1st Dep’t 1938).
Vol. 92 TMR
1091
that would not ordinarily be protectible under traditional legal
theories of privacy, unfair competition, contract, defamation, trade
libel or disparagement.237
In 1994, a subcommittee of the International Trademark
Association (INTA) undertook a study of the right of publicity to
determine whether the Lanham Act should be amended to meet
the needs of trademark owners. The subcommittee concluded that
“existing common and statutory law dealing with the right of
publicity provides a patchwork of different and inconsistent
provisions which create uncertainty for trademark owners and
national advertisers” and requested that the Board of Directors of
INTA adopt a resolution calling for the amendment of the Lanham
Act to create a federal right of publicity that (1) preempts both
statutory and common law, (2) harmonizes, to the extent
practicable, divergent state law in a manner which recognizes the
principles underlying the right of publicity and fairly balances
competing public interests, (3) provides for a descendible and
transferable right of publicity for a fixed term after death, without
regard to whether the right was exploited during a person’s
lifetime, (4) includes a “grandfather clause” protecting the user of
an aspect of persona lawfully acquired prior to enactment, (5)
exempts uses of persona that meet fair use and First Amendment
standards for such uses, such as news, biography, history, fiction,
commentary and parody.238
The substance and direction of a workable and socially useful
federal right of publicity for landmark buildings could be
fashioned, as Nimmer suggested, with reference to the
inadequacies of the traditional legal theories that have been used
to protect these rights, the adjudicated cases, and the economic
reality of the pecuniary values inherent in publicity.239
As discussed above, the Copyright Act, which offers
inadequate landmark protection, includes an express provision
regarding the lack of preemption with respect to state landmark
and historic preservation laws. In the absence of a federal statute,
it may be necessary for states to study and propose legislation
granting rights of publicity appropriate to protect their local
landmarks.
There are many statutes which provide sui generis protection
to the names, symbols and devices of organizations, properties and
events that are of public significance against uses for commercial
or trade purposes without the consent of the owner. There is
existing legislation to protect the names, symbols and devices of
237. Nimmer, at 219-20.
238. Request for Action by the INTA Board of Directors, March 3, 1998, www.inta.org/
rtofpubl.html, last visited on February 1, 2000.
239. Nimmer, at 215-16.
1092
Vol. 92 TMR
health, education and welfare organizations, arts and humanities
organizations, federal government property and federal agencies,
youth organizations, and even for historical celebrations and
historical societies.240 Special legislation could likewise be enacted
to provide similar exclusive publicity rights in landmarks,
exempting uses that make reference to the landmark for historical,
informative or artistic purposes. In this way, landmarks would be
protected as another category of historical, educational, artistic
and national symbols that currently enjoy special protection.
To safeguard the public interest in landmarks, one option is to
provide a tax-incentive for landmark owners to convey their
intellectual property and publicity rights to a non-profit
organization (e.g., like New York’s Municipal Arts Society or the
National Historic Trust) or a state or national agency, which would
be empowered to administer voluntary compulsory license grants
to members of the public for advertising or commercial use of
landmark names and designs. This model is consistent with the
idea of a landmark as a public domain object while creating a
revenue stream for education and preservation. This tax benefit
could be modeled after a “preservation or conservation easement”
which provide to the property owner a charitable deduction for the
value of the rights donated to the organization.241 In a “façade
easement,” for example, the owner donates the right to preserve
the external appearance of a building. In the case of conservation
or preservation easements, the Internal Revenue Service allows a
deduction if the easement is perpetual and donated “exclusively for
conservation purposes.”242 The amount of the tax deduction is
240. The American Revolution Bicentennial, 84 Stat. 1389; Columbus Quincentary
Jubilee, 98 Stat. 1257; United States Capitol Historical Society, 36 U.S.C. § 1215.
241. A “preservation or conservation easement” is a property right that the owner of a
historic resource donates to the government or a qualifying conservation or historic
preservation organization, the value of which may then be claimed as a tax deduction. IRS
regulations require that the property have “significant” conservation values.
242. TITLE 26 Sec. 2055. Transfers for public, charitable, and religious uses (a) In
general, for purposes of the tax imposed by Section 2001, the value of the taxable estate
shall be determined by deducting from the value of the gross estate the amount of all
bequests, legacies, devises, or transfers - (1) to or for the use of the United States, any State,
any political subdivision thereof, or the District of Columbia, for exclusively public purposes;
(2) to or for the use of any corporation organized and operated exclusively or religious,
charitable, scientific, literary, or educational purposes, including the encouragement of art,
or to foster national or international amateur sports competition (but only if no part of its
activities involve the provision of athletic facilities or equipment), and the prevention of
cruelty to children or animals, no part of the net earnings of which inures to the benefit of
any private stockholder or individual, which is not disqualified for tax exemption under
section 501(c)(3) by reason of attempting to influence legislation, and which does not
participate in, or intervene in (including the publishing or distributing of statements), any
political campaign on behalf of (or in opposition to) any candidate for public office; (3) to a
trustee or trustees, or a fraternal society, order, or association operating under the lodge
system, but only if such contributions or gifts are to be used by such trustee or trustees, or
by such fraternal society, order, or association, exclusively for religious, charitable,
scientific, literary, or educational purposes, or for the prevention of cruelty to children or
Vol. 92 TMR
1093
determined by the value of the conservation easement. In addition,
the donor may have estate and property tax relief. Crafting a
creative tax incentive around a landmark right of publicity may
assist in the preservation and conservation of landmarks, and the
protection of the public interest in landmarks.
VI. CONCLUSION
Existing intellectual property laws do not adequately protect
the intangible property rights in landmarks, which are akin to
rights of publicity. The Architectural Works Protection Act of 1990
provides for copyright protection for those building designs built on
or after December 1, 1990, thereby injecting most of the landmark
architecture in the United States into the public domain. On the
one hand, the lack of any protection against the indiscriminate use
of landmark images for advertising and trade purposes may
compromise the significance and value of unique building designs
which are part of our cultural heritage. On the other hand,
allowing owners too much control over the use of landmark images
may discourage their use, and cause the significance and vitality of
these cultural objects to be lost to the public dialogue. A national
or state statute granting publicity rights in landmarks, which is
not preempted by the Copyright Act, would help to define these
rights and strike the appropriate balance between public and
private interests in the commercial use and depiction of
landmarks. Tax incentives could also be used to assist in striking
this balance and provide a vehicle to deploy the images to support
educational and conservation and preservation efforts with respect
to landmarks. A national statute protecting landmarks in the form
of an amendment to the Lanham Act to add national and state
designated landmarks as a category of names or symbols protected
under Section 2 of the Lanham Act from registration without
consent would further contribute to the protection of the cultural
importance of these valuable symbols, the management and
preservation of their meaning and the promotion of certainty in
the marketplace.
animals, such trust, fraternal society, order, or association would not be disqualified for tax
exemption under section 501(c)(3) by reason of attempting to influence legislation, and such
trustee or trustees, or such fraternal society, order, or association, does not participate in, or
intervene in (including the publishing or distributing of statements), any political campaign
on behalf of (or in opposition to) any candidate for public office.