To some readers of this blog, it will no doubt come as a great surprise that many famous buildings have been registered with the USPTO as service marks. Examples abound: The Chrysler Building and the New York Stock Exchange, the Space Needle in Seattle, and, here in San Francisco, the Transamerica building, to name a just a few. A student note published over a decade ago noted that the USPTO had accepted approximately 100 buildings as trademarks.
It is not hard to understand the rationale for treating a building as a trademark from the perspective of the building’s owner. First, the trademarked buildings are invariably unique architectural creations that are in fact well-known among the public. The building owners would, in their ideal world, be able to collect licensing fees from the public for use of these trademarked symbols.
In fact, the owners of the Chrysler Building launched a lawsuit for just that reason. Their complaint asserted that the company Fishs Eddy sold a line of dishes that included depictions of the Chrysler Building, and that this use of the building infringed on the company’s trademark in the building. As detailed here, the owners ultimately declined to pursue the lawsuit. The publicity from the lawsuit probably caused them to (reasonably) fear a public backlash.
Other lawsuits have also arisen. For example, the New York Stock Exchange sued a Las Vegas casino for including a theme that included a smaller-scale three-dimensional version of the iconic building’s facade; the Rock and Roll Hall of Fame Museum filed a lawsuit when an artist sold posters of the building; and the Space Needle sued when McCain Snack Foods ran a magazine advertisement in which a giant onion ring orbited the building in place of the actual observation desk.
The case involving the Rock and Roll Museum has received the most attention in this area. There, a divided panel of the Sixth Circuit ultimately held that the artist was not liable for use of the building in his posters. The panel decided the case solely on trademark grounds, stating that “[W]we find no support for the factual finding that the public recognizes the Museum’s building design, in any form, let alone in all forms, as a trademark.” The Sixth Circuit simply applied traditional trademark principles and found that the building really was not a trademark.
In my view, there are good reasons to treat buildings differently from other trade dress, particularly when the alleged act of trademark infringement (or “dilution”) is two-dimensional artwork that depicts the building or a sculpture of the building that could not possible be confused with the real thing. In these cases, there are real First Amendment issues at play. Artists need to be able to recreate cityscapes without fear of trademark liability. Some of the most valuable cityscapes from the standpoint of photographic quality clearly involve portraits of trademarked buildings. It would seem absurd to tell a photographer that he or she had to crop a portrait of the San Francisco bay so as to omit the Transamerica Building.
The leading Supreme Court case on whether buildings can be trademarks is Two Pesos v. Taco Cabana. In that case, the Supreme Court was not technically ruling on the issue, but on whether there could be a claim for unfair competition under the Lanham Act when a restaurant chain imitated several features of its competitor’s restaurant design. Still, it is clear from the decision that an “inherently distinctive” building could be registered as a trademark.
But Two Pesos involved the copying of a building (and more). It had no reason to consider the First Amendment issues that would arise when an artist made a two-dimensional copy of the building.
In fact, there could be no viable copyright lawsuit when an artist renders a two-dimensional sketch of a building. That is because while copyright law allows for buildings to be copyrighted (so that we can comply with the Berne Convention), there is an explicit exception for two-dimensional portraits of buildings in Sec. 120, which states:
The copyright in an architectural work that has been constructed does not include 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 work is embodied is located in or ordinarily visible from a public place.
It would be quite strange if this part of the Copyright Act were, in effect, rendered meaningless because all one had to do was bring a trademark lawsuit instead. What Congress obviously recognized was that while exact replicas of the buildings are not allowed, artists should not be prevented from portraying them in their natural setting. Trademark law needs to take this into account as well.