Silvery Gray Areas--Protecting Intellectual Innovation
Last year, three guys in NYC transformed a vacant storefront into F Line Bagels, using props, color scheme, and icons familiar to any subway rider as a draw to passing traffic. They put their heads together (and their money and sweat) and made their store look like a clean, modern subway car with hanging straps, straddle poles and Euro-style signage. They used the almost generic symbols of a single san serif character in an orange circle--the same signs subway riders use to pinpoint stops. They added 2 neon signs for a heads-up to transit seekers too preoccupied to notice they were entering a space clearly not on tracks and incapable of moving them to any destination short of the nearest bagel. If you've ever been in a NYC bagel shop, there are big clues everywhere that you are not in a subway car; the aroma of hot baked goods, big bins of fresh baked bagels, and the flurry of activity as the paper bags are whacked open in the air. Try to get a bagel for a token--can't be done.
About a month after they opened, a lawyer for the Metropolitan Transit Authority (MTA) stopped by, told them to cease and desist; that their atmosphere (the tiles, the straps, the signs) was the authority's intellectual property. In fact, the authority found itself fending off questions about whether it was in the bagel business. True, the store owners bought their props from the online store operated by the MTA, “but this did not entitle them to display the items for commercial use” without agency permission. I wonder just how much a hanging strap contributes to the value of a bagel.
Arguments ran the gamut: The MTA doesn't own the alphabet, other stores use similar motifs, and the subway system is in the public domain. Short of the licensing fee demanded, the owners were forced by the court to dismantle their successful parody. Now the shop stands with bags over the straps and taped off signs, all except the sign on the counter with an O in an orange circle (Order Here)--there is no O line, so they got to keep that one.
About a week earlier, the actor/director Robert Redford was in NYC to announce a collaboration between the Sundance Institute and the Brooklyn Art Museum (BAM), which loosely occupies the same 40 degree latitude. This collaboration will be called Creative Latitude. I wondered if my peers were aware that someone famous casually appropriated a piece of their intellectual property, so I sent the item to the Editor of Creative Latitude, a highly esteemed creative platform that promotes and cultivates ethics in our field, among other things. His comment was brief and nonplussed, “Funny.” Creative latitude, artistic license, intellectual property: just words in our vocabulary that nobody owns. I hope Mr. Redford and his collaborators will not appropriate the wonderful coffee cup logo, too.**
Much the same as quick thinking entrepreneurs rushed to buy up domain names for resale before the corporate world realized the importance of web presence, law firms have been adding intellectual property specialists to their roles. They are stacking the decks against the little guy who invents, innovates, and invests the sweat equity in an idea. Patent trolls, or patent holders who threaten companies with costly court battles unless they're offered licensing fees, are a serious threat to legitimate businesses. One good example of an intellectual property system gone awry is the foofah between the Canadian company Research in Motion (RIM) and a small Virginia company called NTP. NTP owns five patents that describe the design and function of a bare-bones wireless email network, hardly comparable to RIM's highly popular Blackberry. RIM built the Blackberry from scratch and no one argues they used the NTP patents or even knew they existed. NTP held the patent on a vague idea and design, then waited until another company created a successful business based on the idea. An injunction was granted, and the only thing keeping the Blackberry alive is an enormous ransom. The next step--NTP will go after cell companies that offer Blackberry. The ransom was established in 2003, and since that time, the patent office has preliminarily declared NTP's patents invalid (as well as the 1900 claims they contain). But until they are formally found lacking in merit, RIM is still on the hook for the ransom that runs into billions.
Every law student learns the difference between the letter of the law and the spirit of the law. If we want to encourage innovation, protection of intellectual property under the law must extend to all innovators, not just those who can afford to patent ideas, hire legal innovators and wait for an opportunity to pounce. And we really ought to make allowances for the intended spirit of the law: to allow innovators to profit from their ideas. Though each example examines different venues of intellectual property, the issue remains the same and should be of interest to all creative innovators.
* The New York Times column (About New York 01/11/2006: by Dan Barry)
**The New York Times column (Boldface 01/06/2006: by Anthony Ramirez)
***The New Yorker Magazine (The Financial Page Blackberry Picking 12/26/2005: by James Surowieki)
AN UPDATE ON RIM
Research In Motion (RIM), the Canadian company that builds the Blackberry, won its cases in Great Britain and Germany . The patent infringement lawsuits were similar to the one filed in the US by patent troll NTP, and faces an impending court date in the state of Virginia. As mentioned in my original post, the US Patent and Trademark Office has already invalidated the NTP-held patents that are central to the dispute, but RIM could still be slapped with a permanent injunction to sell Blackberry in the US. The federal government has asked the judge to delay ruling on the lawsuit. The final outcome on the challenge at the Patent office is a long time off, but a court hearing in the local patent infringement case sent the two sides back to the settlement table which resulted in a $612 million payout to the patent troll NTP. Blackberry users can rest easy.
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The problem is control - the MTA want it. They probably would not have too much problem with the restaurant in a real sense (although it probably reduces the value of any restaurant they did which used the subway theme).
If they allow too many through it is then difficult to stop anyone else
Great first post, Susan, lots there to think about.
This is like Church and State, this whole idea of Business and Creative. You know on some level they should be kept apart and seperate, but there is really no way to do so without seeing them making out in a dark corner of the gymnasium.
Can't someone please make a website that outlines the rudiments of trademark and copyright, so that bloggers (and commenters) everywhere can have at least a modicum of knowledge before commenting? The MTA is legally obliged to vigorously protect its trademarks. There is a practical benefit, which is that the signage system, useful to 8 million residents, and far more (often non-english speaking) tourists, would be less effective if people were allowed to use it willy-nilly (as to licensing -- why shouldn't they? I want the MTA to milk their creative property as much as possible). If you don't think that lazy and uncreative business people wouldn't run rampant, then I've got a hundred or so Ray's Pizza's to take you to.
Not knowing the scope of the signage and such used in the shop I'm left with more questions than anything else.
Did the bagel shop use the MTA signage and logos in their business? Then I could understand the MTA arguing that their intellectual property was being infringed upon. However, if all the shop owners did was mimic the look and feel of a subway station then MTA sounds like they've gone a bit over board. There's countless shops and restaurants scattered throughout the globe that proprietors have modelled their business after in order to draw customers in and help extend their business goals by relating them to other businesses, luggage stores looking like train stations, airport lounges modelled after plane interiors.
Another question that comes to mind is if the MTA did sell the shop proprietors materials from their excess stores why didn't they have a usage caveat in place before hand? If the MTA didn't have a usage policy in place before hand isn't that much akin to when an individual throws something into the trash that it becomes part of the public domain? There again, more questions. Was the material sold to the bagel shop previously and distinctly designed as part of a branding project for the MTA or was it just general materials available from any other purveyor of general subway manufacturing? If it was general construction materials available from any supplier would the MTA have had any reasonable grounds to support their claim on intellectual property infringement?
Overall it sounds like the whole process was a case of a laywer previously involved in chasing ambulances finding a stationary target.
Responding to 99's comments about basic trademark and copyright info for designers, Shel Perkins is addressing this as part of his series on Design Firm Management on the Graphics.com Network -- http://www.dynamicgraphics.com/Microsoft/Door/28518
Excellent, thought-provoking article. Another problematic area is the logo. What small designer can afford to do a major search to see if anything vaguely similar has ever been created? Yet, a company with a similar logo would need to come out immediately with legal guns blazing to protect their identity. And if five years from now, Creative Latitudes decides they'd better protect their identity after all, think of the money it would take. It's a serious subject with many facets, all too often ignored. Thanks for an intelligent discussion of some of those facets.
Excellent bit! And the problem gets even worse. The Europeans have patented, copyrighted and trademarked all of the cheese and wine names that we all know so well. And now, the NZ Maori, Pacific Islanders, and Aussie Aboriginals are moving to do the same with the so-called "intellectual property" of their culture. All of which will lead to folks paying the Irish to do the jig!
Well Susan . . . I'm a born and bred New Yorker, and even though I've not been to the F Line Bagels store, I do live within 2 blocks of the "F Line" subway.
Until I retired from a large Wall Street law firm 2 years ago, I spent 40 years in the legal field (no I'm NOT a lawyer), and I feel as though this type of litigation seems to have grown into a cottage industry all by itself. To tell the truth, the image you attached to your post doesn't remind me of the subway at all . . . just the F Line name does. What is so horrible about equating a bagel (and coffee) with a trip on the subway to work? There are blatant signs about No Smoking, No Radios, and No Eating on the New York subways, but there's always those few who just CAN'T wait to get to the office to have that initial jolt to wake them up.
For those of us who live in New York City, I have one question for the MTA . . . Ellen's Stardust Diner has been open and prosperous for years, have you gone after that establishment as well, and possibly lost? For those who don't live in NYC, the outside of Ellen's is a replica of an old NY subway car, down to the last detail. True the inside doesn't have the poles and straps, but it does have a miniature train set that runs around a track on the upper level for all to see. Hmmmmm . . . . .
Now as for the Blackberry/NTP debacle, I'm not a Blackberry user, but I agree it seems like NTP was just "waiting in the wings" for the perfect opportunity to take advantage. How many "creative innovators" are going to think twice about their next great idea just because they'll be afraid of being caught up in needless litigation? What would we do without new innovations? I fear we'd become a very stagnant, uninteresting society before too long.
Great thought provoking blog Susan. Also responding to 99's comments about basic trademark and copyright info for designers - http://www.own-it.org is site offering free advice/factsheets/events on trademark, copyright and other intellectual property topics.
In fact, there's an intesting update on http://www.own-it.org/news/article/?p=15&a=489&t= about the Blackberry and NTP saga, plus interesting IP info about the Olympics and use of the logo.
And I couldn't agree more with you when you say, "If we want to encourage innovation, protection of intellectual property under the law must extend to all innovators, not just those who can afford to patent ideas, hire legal innovators and wait for an opportunity to pounce."
The cost for registering a trademark (especially a community mark in the EU) or patent is too much for some small and new (innovative) businesses to afford. I believe securing your IP should be made more affordable to exactly the people who need protecting the most.
Cheryl Rickman