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Corporate & 
Commercial
Law Article


Turning Real Property into Intellectual Property

By: Jay Hollander
Date: 1998

Jay Hollander, Esq. is the principal of Hollander and Company LLC, www.hollanderco.com, a New York City law firm concentrating its efforts in the protection and development of property interests relating to real property, intellectual property and commercial interests, as well as related litigation.

The content of this article is intended to provide general information relating to its subject matter. Providing it does not establish any attorney-client relationship and does not constitute legal advice. Personal advice in the context of a mutually agreed attorney-client relationship should be sought about your specific circumstances.

Article

Commercial property owners have always been an enterprising group of people, especially when it comes to finding different ways of maximizing income out of a particular property. From advertising space on building walls to otherwise invisible air rights which could be transferred from building to building, it seemed that the only things stopping property owners from collecting additional income was the space in which to hang or transfer a portion of the building or its surroundings.

Recently, in an emerging trend, owners have seized upon the increased value of intellectual property to try and reclaim profits from the design or uniqueness of their property's design.

This effort has chiefly taken two forms, copyright protection and trademark registration.

Copyright, which protects the expression of an idea fixed in a tangible medium of expression, has long allowed the protection of creative architectural ideas set down in drawings or building renderings. Thus, a copyright holder could prevent someone else from knocking off the unique design of a building or attempting a slightly different "derivative work" based upon a copyrighted building rendering.

Until a few years ago, however, once the building or other structure was built, no copyright protection accrued to the actual structure. In 1990, however, the Nation's copyright laws were modified to allow copyrights to be filed for completed structures as architectural works.

To be sure, this protection was not unlimited. Congress specifically added a section to the law, prohibiting the owner of such a copyright from preventing photos or paintings or other pictorial representations of a fully constructed structure. This restriction was itself conditioned on the structure or the building in which it is contained, is "located or ordinarily visible from a public place" Title 17, 120.In order to overcome limitations like this, owners of unique or distinctive commercial properties have begun to try registering them as a trademark.

What does a trademark do? Basically, trademarks are logos, slogans, product or brand names which are used to identify the maker or source of a good or service. The key to a trademark is that it must be distinctive in the sense that it uniquely identify the source of a particular good or service in commerce such that someone else using the same trademark without permission might cause confusion to a reasonable person as to the origin or endorsement of the good or service.

Common examples of trademarks are McDonalds' golden arches or the well known BLOCKBUSTER sign atop the popular video store chain.

But how easily can a building be trademarked? We'll soon find out. The new purchasers of a long term ground lease in New York's famous Chrysler Building, are trying to register the Building's distinctive Art Deco Spire as a trademark and to obtain merchandising revenues through licensing the image out in a variety of products.

Imagine if every picture of the Manhattan skyline in a tourist poster or calendar or coffee mug were to suddenly require permission of the holders of trademarks of one or more of the buildings in it! If the Chrysler Building trademark registration process is successful, this could very well be the result.

Of course, the process is by no means assured. There are a lot of obstacles standing in the way, especially for buildings or structures that have been publicly visible for a long time without any assertion of trademark rights. Trademark law has long held that it will not protect rights which have been effectively abandoned, either by neglect or lack of assertion in the face of widespread use by others.

Perhaps this is why the Chrysler ground lessees have taken to policing the use of the building's image of late. In the local New York press, it has been reported that the company's attorneys have demanded that a local retailer discontinue selling a particular style of china, which features the Manhattan Skyline on its borders, including the Chrysler Building Spire among other buildings.

Although the retailer is disputing the claim so far, and contending that no one would reasonably confuse the source of a skyline set of dishes with property owners of one building in the skyline, disputes like this promise to be more prevalent in the future because of the potentially valuable revenues at stake.

Interestingly, the Chrysler Building is not the only example of a property owner seeking or obtaining trademark protection. The Citicorp Building in New York has already been registered. Even the New York Stock Exchange is trying to register portions of the columnar facade on the front of the structure.

Other famous landmarks in other cities have also received, or are trying to receive similar protection.

Can your property be trademarked? If so, what standards are there?

While there are no hard and fast rules in this changing legal landscape, traditional trademark law doctrines would seem to argue against a belated effort to trademark the image of a well known building which has been publicly accessible for a long time and which has been the subject of open commercial exploitation by others without objection by the purported trademark owners.

So, a sudden effort to trademark the image of the Empire State Building or the World Trade Center Towers, both of which have long been "knocked off" would have a hard time gaining trademark registration, even if their owners tried to do it, something they haven't until now.

Newer buildings which have not suffered from this pattern of neglect and which have not been overexposed may stand a better chance. Even here, however, there must be the requisite distinctiveness which would set the property apart and which was actually used by its owners as means of branding or as a source of designation.

But even this is not certain. Right now, there is significant controversy about the degree to which building owners can clam trademark protections for their structures in other parts of the country.

For example, in Cleveland, an appellate court has reversed a lower court injunction, preventing the sale of posters depicting the Rock and Roll Hall of Fame, in competition with posters sold by the owners of the structure.

In a provocative decision which may yet be overturned by the Supreme Court, the Sixth Circuit Court of Appeals essentially decided that the distinctive Building, designed by famed architect I. M. Pei, was not being used as a trademark and, accordingly, no stay was appropriate.

In the face of the shifting legal sands surrounding this issue, it nevertheless remains that decisions on the trademark-ability of a structure will be determined on the basis of traditional trademark analysis, namely whether the registered mark is distinctive and has been used as an identifying trademark by the registrant; whether it has come to identify the source of the Building; and whether the Building owner has vigilantly protected its mark in commerce so as to prevent likelihood of confusion concerning exploitation by unrelated third parties.

For buildings under construction, owners may also file an "intent to use" trademark application, which would later be amended to reflect actual usage of the trademark in commerce.

In this age of REIT investment in real estate, a successful trademark attached to a Building could easily increase the Building's market value even in an already hot real estate market.

Shareholder value could not help but be increased by the anticipated revenues which would flow from creative exploitation of a trademarked Building's identity.

While the exact limits of commercial owners' abilities to convert real property gold into intellectual property gold is still being debated, wise owners will be compelled to evaluate the possibilities presented by a successful trademark registration and we may yet see the day when tourists will be the only people who can snap pictures of distinctive structures freely.


Copyright © Jay Hollander, 1998. All Rights Reserved.