Trademark a landmark? An urban skyline? A fancy facade? This would have probably seemed absurd when King Kong first climbed the Empire State Building. Now, however, architectural landmarks increasingly play starring roles themselves - Godzilla once again runs roughshod through the streets of Manhattan, alien forces casually blast the White House to smithereens, and Alcatraz serves as the background for an entire action-packed two hours. Therefore, a growing number of building owners are seeking to be compensated for these prominent cameos. Their claim? That these images are distinctive representations of a singular identity, and should receive vigilant protection under trademark laws from frivolous use by others. For their part, the many individuals and businesses who once profited from such ready recognition now find themselves faced with receding profits, mounting litigation, and are expressing a pervasive sense of annoyed disbelief. In court, both sides now engage in a new twist on the time-honored struggle between private interests and the public domain.

At the forefront of this debate is pending litigation between the owners of the Rock and Roll Hall of Fame Museum and professional photographer Charles Gentile.[1] In a federal suit filed in Cleveland, the Museum alleged various trademark and unfair-competition claims under state and federal law against Gentile for the sale and distribution of posters in which the Museum and the words "ROCK N' ROLL HALL OF FAME" are prominently featured. The Museum's complaint alleges federal and/or Ohio state law claims for trademark infringement, unfair competition, false or misleading representations and false designation of origin and dilution of trademarks. In short, the Museum avers that Gentile is using the Museum's trademarks on posters in a manner likely to confuse consumers into thinking that they are sponsored by the Museum.

The district court granted a preliminary injunction against Gentile, concluding that his use of the Museum's building and design in his posters was indeed confusing to consumers. He was ordered to surrender all copies of the poster, which sold for $20 apiece, to the Museum for destruction. In his argument to the United States Court of Appeals for the Sixth Circuit, Gentile protested that his use of the words "ROCK N' ROLL HALL OF FAME" is a non-trademarked use which simply describes his non-infringing photograph of the Museum. In agreement, the Appellate Court vacated the preliminary injunction and remanded the case for further proceedings. In Judge Ryan's opinion, in order to be protected as a valid trademark, an image must create a distinct commercial impression which customers readily link to a particular source. The appellate court was convinced neither that the Museum used its building design as a trademark nor that a photograph of a well-known public landmark could appear to a consumer to have no other purpose than that of a trademark.

Mr. Gentile is not the only small business owner to feel the squeeze of trademark infringement claims. In 1998, the owners of the Chrysler building, Tishman Speyer Properties and the Traveler's Group, demanded that Fishs Eddy, a tableware store, stop selling a line of china which features the building's spire among other prominent landmarks in a skyline. In an article in The New York Times, the owner of the store called the denial of the right to use the image "un-American."[2]Ý In response, the Chrysler owners contend that the situation is no different than that of celebrities who have property rights in their name and likeness that also enable them to control the commercial exploitation of their identity. Similar challenges have been brought against substantial companies. In an important court case covered by The Wall Street Journal,[3] the New York Stock Exchange filed a lawsuit against the New York Hotel & Casino in Las Vegas, a $460 million joint venture between Primadonna Resorts Inc. and MGM Grand Inc. The claim involves the use of a replica of the real stock exchange named "The New York Slot Exchange." "The stock exchange faÁade is used deliberately to call to mind its business, goodwill and reputation," says Doreen Costa, of the law firm Baker & Botts, which is representing the original stock exchange. The casino owners, who had found no clear trademark violations in their preliminary research, protest that the use of the facade is lighthearted and harmless.

The debate is not entirely new.Ý In the past, building owners and architects have sought to trademark designs in order to protect themselves from copycat construction. In 1937, a precedent was set when a court held that the White Castle restaurant chain could have exclusive rights to its design. In 1990, Congress modified copyright laws to protect architectural designs but allowed for photographs and pictures taken from public views. The rule was further modified in 1992, when the Supreme Court ruled in favor of the Two Pesos Mexican restaurant chain's right to protect its building design from being copied.[4] What is unusual about many current claims is that the owners seek protection from increasingly abstract and attenuated uses of their design. Movie-makers, advertisers, artists and other entrepreneurs, once free to include images of well-known landmarks, are now being called upon to exercise more care in such use.Ý This has many wondering where the line will eventually be drawn between the public domain and private trademark rights.Ý

In a 1996 commentary on the district court's holding in the Rock Hall of Fame case, patent counsel April Logan summed up the lurking constitutional question. "The unique First Amendment issue which impacts photographers, film makers and artists in particular is not adequately addressed by courts," she stated, "While fewer than 100 buildings are presently registered trademarks, should that number continue to increase, it's not difficult to imagine a day when one might have to seek the permission of dozens of building owners before one could photograph, paint or film a city skyline -- and that would be an anomalous result indeed."[5] Ý

1. See Rock and Roll Hall of Fame Museum, Inc. v. Gentile Productions, 134 F.3d 749 Ý(6th Cir. 1998).
2. See David W. Dunlap, The Skyline: What Next, a Fee for Looking?, N.Y. TIMES (Aug 27, 1998) at C1.
3. See David D. Kirkpatrick, No T-Shirts! Landmark Buildings Trademark Images, THE WALL STREET JOURNAL (Jun. 10, 1998) at B1.
4. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 112 S.Ct. 2753 (1992).
5. APRIL C. LOGAN, THE FIRST AMENDMENT AND TRADEMARKS: COMMENTARY, July 16, 1996.