So specifically regarding the HCoC’s trademarks, they hold a registration on advertising services (Reg. No. 4089374, issued 2012), one for T-shirts (No. 3646762, 2009), paper products (No. 3891796, 2010), athletic apparel (No. 3891798, 2010), IP licensing services (3936261, 2011), jewelry (3031702, 2005), , and one for snack foods and drinks (5230470, 2017).
The city and the park service control public photography and filming in Los Angeles, so that is how they control access to much of the filming or photography of the sign.
But, what I still don’t get is how exactly they argue that these things give them a right to control any appearance of the sign in any movie or TV show. I’d like to see an actual legal argument.
Could it be that that is simply their due diligence to protect the trade mark for the souvenirs? I don’t think anyone has challenged it all the way to a court judgement. And in fact, such appearances in movies and TV shows actually serve to promote Hollywood as a tourist destination, bringing in all those people to buy the T-shirts, etc.
They still have to have a valid argument that it’s infringing. Being held responsible for defending your trademark rights doesn’t justify egregiously excessive claims regarding the scope of their rights.
What most are overlooking is that this is Hollywood we’re talking about.
Ford has a right (as well as a duty to stockholders) to protect the name Ford in relation to automobiles. Coca-Cola likewise in relation to soft drinks. These are legal and proper.
The Ford Company hasn’t, AFAIK, ever demanded that Valley Ford, CA (Sonoma County) change it’s name or pay royalties, nor required anyone taking a photo of the town to get permission.
Hollywood, however, is, as everyone should be aware, filled with more sleeze than average. So of course they try every way to make a buck. What else would you expect?
I don’t think anyone has overlooked that they’re trying to make a buck. I pointed it out in the third post of this thread.
In any case, the Hollywood Chamber of Commerce has done some things which benefit the whole community They are the ones who lobbied, for example, to have more than one exit into Hollywood from 101. Most average people who live here appreciate this. They have also created a foundation which has given quite a lot in grants to local non-profit agencies in the area.
And before you talk about “Hollywood” as a metonym for the “sleeze” of the film industry, you should understand that for a long time now most film business happens outside of the district of Hollywood itself, which is now mostly a working-class immigrant community.
It means something like showing up in some bureau and filing some form stating that I own the rights to use the image of the Taj Mahal and from then own asking for money from whoever use a picture of it for whatever reason.
I understood that it was what was happening with the Hollywood sign. If I want to use a picture of this sign for commercial purpose, I apparently must have the agreement of and pay some fee to the chamber of commerce even though it has no connection with said sign.
It just seems absurd to me that someone or some entity that didn’t create, build or own a specific thing could claim that everybody else should pay them to print an image of this thing on a T-shirt. Could I do the same with, say, the planet Saturn?
So this is your first mistake. (Just to be clear, I am talking about U.S. law. I believe most countries follow very similar principles, but I can’t say for sure.)
Trademarks begin not with showing up in some bureau and filing some form. They start with use in commerce. Your trademark rights are not granted by the government. They are earned through use.
So, where you start is by offering goods or services to the public, and then by applying some mark to those goods or services that identify you as the source. That mark can be a name (“Ford Motor Co.”), or an image (Apple Inc.'s Apple logo), or a sound (NBC’s three chimes), or anything that is capable of being distinctive. Anything that is capable of being perceived as an identification of goods or services.
That is where trademark rights begin.
Most governments then allow you to register your claim of rights. That’s where you go to a government bureau and file a form. But in order for your form to be approved, you must show that you already have those rights. The filing of the form is merely a recordation of your claim of rights. And that recordation is for the most part optional. You can have valid, enforceable trademark rights without ever filing a form at a government office.
So this is why I warn people not to use the word “trademark” as a verb. Because when they do so, it tends to make them think that the trademark rights start with filing a form with the government.
Really, what people should be thinking about is use in commerce. So that’s why I say, just avoid using “trademark” (or “copyright” for that matter) as a verb. Because of quirks in the way language and thought have occurred, it only tends to mislead yourself.
And here is the second mistake, the “for whatever reason.” You can only control your trademark rights to the extent that it creates a likelihood of confusion with respect to the source or origin of goods or services. (The concept of trademark dilution has a different standard, but we’ll leave that aside for the moment.) That standard is definitely not “for whatever reason.”
It is not clear to me what the legal basis is for what Hollywood Chamber of Commerce is apparently claiming as the extent of its trademark rights. That’s the question I’m trying to ask.
Yes, you could, perhaps, to some extent. For example, from 1995-2010, General Motors had a subsidiary called “Saturn” and had a logo incorporating a stylized image of a ringed planet. They could stop other car companies from using the “Saturn” name or having a logo depicting an image of a ringed planet.
And as for your Taj Mahal example, note that there are several restaurants in Paris that have the name “Taj Mahal” and presumably could claim trademark rights. They didn’t create the Taj Mahal, they don’t own the Taj Mahal, they didn’t invent the name, but they still can have some trademark rights in it.
Another example I’ve offered in this thread: The Prudential Financial company uses as a trademark an image of the Rock of Gibraltar, a natural feature in a foreign country that they don’t own.
If you take a look around you, you’ll see that this kind of thing is quite common.
So, in general, yes, it is not only possible, but is very routine for a business to adopt a name or an image of a feature or structure that it didn’t create or own and to be able to enforce trademark rights in it.
What exactly is going on in the Hollywood sign situation seems a little more unusual to me and I have not been able to figure out whether there’s a valid legal basis for it.
It appears that the Chamber of Commerce first began licensing the sign’s distinctive lettering to apparel manufacturers as part of its restoration of the sign, and grew more protective over the years.
This law review not concludes that the Hollywood Chamber of Commerce would probably not be successful in preventing a film from showing the Hollywood sign without permission.
Yes, this is the article already referenced here in this thread, in posts #32 (by the OP), #36, and #56, where I point out that it hasn’t really been tested in court because it hasn’t really gotten that far—at least in terms of the sign being shown in films.
We know that they “vigilantly” send cease-and-desist letters when they find the image represented in public, in films and so forth–even personal blogs.
But even for the sale of merchandise I wonder if it has ever really been challenged in a U.S. court. As I said before, people either comply with those letters and stop using the image, pay the license fee, or settle out of court. It’s not clear to me whether the Chamber of Commerce ever started by “offering goods or services to the public, and then by applying some mark to those goods or services that identify [itself] as the source,” as Ascenray describes it. Instead, it seems like ***they just started to demand the licensing fee from merchandisers out of the blue ***because they needed to raise money.
As I said in post #56 above, I don’t think there ever was a time when people looked at the Hollywood sign (or its likeness on a product of any kind) and said, “That indicates to me the fine goods (or services) of the Hollywood Chamber of Commerce!”
The *L.A. Times *articles mentions that it was a state law under which the Chamber initially started to make this claim, and ask for the licensing fees, but they seem to have extended it to federal law, and I believe it was under federal law that they were able to win the case in the German court.
Step #3:
Demand licensing fees for merchants to use the image (mark).
It seems to me that the Chamber of Commerce never took Step #1. Yes, they have always been providing a service, but no one would associate the image of the letters with that service, which the Sixth Circuit ruled as contingent in the case of the Rock ‘n’ Roll Hall of Fame.
It seems they needed money, and went directly to Step #2 under some kind of California state law, and almost immediately started Step #3. Then they went to the federal government and repeated Step #2. (I think at that point they might have taken Step #1 and opened their own souvenir shop very briefly, but I think that’s gone now.)
I don’t think anyone has overlooked that they’re trying to make a buck. I pointed it out in the third post of this thread.