New York Continues Its Trademark Bullying Ways: Threatens Coffee Shop With Bogus Threats
from the i-hate-ny-trademark-bullying dept
I recall, a few years ago, filmmaker Kevin Smith talking about how the state of NY demanded money because a background player (I think a dancer) in Clerks II was shown wearing an "I ♥ NJ" t-shirt, and NY, somewhat infamously, holds the trademark on "I ♥ NY." I don't recall all of the details, but I'm pretty sure Smith said that a significant sum of money had to be paid to the state of NY. Of course, that's an abuse of trademark law on multiple levels. The likelihood of confusion is likely nil, and even if they were arguing dilution, that seems unlikely as well. The t-shirt was in a movie, not for sale by the movie. Another time, NY threatened the guy who created the I ♥ NY design in the first place when he tried to make a new version after September 11. Because NY is an obnoxious trademark bully, that's why.The latest in NY's over-aggressive trademark bullying comes courtesy of the NY Times, which reports that CMG Worldwide, the agency that NY uses to "police" its trademark, sent a legal nastygram to NYC coffee shop Everyman Espresso. Apparently, one of the co-owners of the shop, Sam Penix, had "I [coffee cup icon] N Y" tattooed across his fingers, as seen below:
Photo from jkwoo
Everyman Espresso's owners decided to fold, telling CMG that it would "cease all use of its mark." You would think that should be enough, but because NY state is positively obnoxious, CMG sent back a letter demanding licensing fees:
“We expect that any entity that infringes on the rights of our client compensate it for unauthorized use,” the lawyer, Clare Neumann, wrote on May 20, requesting “an accounting of all gross revenues generated during the period when the I ♥ NY® Trademark was used” to help her set the appropriate penalty.Penix rightfully points out that this feels like extortion, and it's doubly ridiculous because the entity threatening his coffee shop is the Empire State Department for Economic Development, who is basically trying to extract money from a popular coffee shop, while getting it to stop promoting NY.
The lawyer representing NY claimed that trademark regulations "prohibit companies from using any part of a trademark." But that's flat out untrue. There are all sorts of situations where you can use a trademark, especially if there's no likelihood of confusion (which is absolutely the case here). If NY argued dilution, there might be a case, but I'd love to see how this harms NY and its mark in any way. Because it doesn't.
Coincidentally, I'll be in NYC next week, staying blocks from Everyman Espresso. I don't even drink coffee, but feel like stopping by to support the store, just because trademark bullies suck.
Thank you for reading this Techdirt post. With so many things competing for everyone’s attention these days, we really appreciate you giving us your time. We work hard every day to put quality content out there for our community.
Techdirt is one of the few remaining truly independent media outlets. We do not have a giant corporation behind us, and we rely heavily on our community to support us, in an age when advertisers are increasingly uninterested in sponsoring small, independent sites — especially a site like ours that is unwilling to pull punches in its reporting and analysis.
While other websites have resorted to paywalls, registration requirements, and increasingly annoying/intrusive advertising, we have always kept Techdirt open and available to anyone. But in order to continue doing so, we need your support. We offer a variety of ways for our readers to support us, from direct donations to special subscriptions and cool merchandise — and every little bit helps. Thank you.
–The Techdirt Team
Filed Under: coffee, i love ny, ny, trademark, trademark bullying
Companies: everyman espresso
Reader Comments
Subscribe: RSS
View by: Time | Thread
New mark
[ link to this | view in chronology ]
Re: New mark
The phrase could be: I LOVE NEW CENSORED!
But then, if it were abbreviated, it could be confused with a different state.
[ link to this | view in chronology ]
I think trademark bullying was invented in New York.
Take a loopy tour of Techdirt.com! You always end up same place!
http://techdirt.com/
You've found the site of Internet Quipper Mike "Streisand Effect" Masnick!
14:08:02[p- 65-2]
[ link to this | view in chronology ]
Re: I think trademark bullying was invented in New York.
[ link to this | view in chronology ]
Re: I think trademark bullying was invented in New York.
I wonder how his corporate masters are taking their lapdog's biting the hand that feeds him.
[ link to this | view in chronology ]
4 Things I'd Like To See.
2. I'd like to see where I (Heart) NY shows up in a straight line on a fist, trademarked.
3. I'd like to see where the City/State has filed a trademark on coffee mugs.
4. I'd like to see the douchebag lawyers that shook down this coffee shop hung by their balls from a NYPD camera tower in Times Square.
Considering I'll never see 1-3, I'll settle for #4.
[ link to this | view in chronology ]
Re: 4 Things I'd Like To See.
[ link to this | view in chronology ]
Re: Re: 4 Things I'd Like To See.
I hope the next administration cleans house.
[ link to this | view in chronology ]
Re: Re: Re: 4 Things I'd Like To See.
[ link to this | view in chronology ]
[ link to this | view in chronology ]
Re:
Same question; you?
[ link to this | view in chronology ]
Re:
[ link to this | view in chronology ]
Re:
[ link to this | view in chronology ]
Re:
Here's a clue: The NY lawyer didn't say a goddam thing about an actual case of confusion. If they had an actual example, they would have used it in their letter. "We received a thousand complaints from consumers who were upset that they bought a t-shirt that said I [coffee cup] NY and they could have sworn it was endorsed by IP maximalist bullies in the NYC government!"
Their letter referred only to "Everyman Espresso�s unauthorized and confusingly similar use of the I ♥ NY� logo." Where's the smoking gun? Oh, of course there isn't one. No actual confusion.
Nobody thinks a coffee cup is a heart. Maybe your heart is equivalent to a cup of black coffee, but the rest of us wouldn't be confused by the similarity of the phrases.
[ link to this | view in chronology ]
Re:
Common sense is clearly becoming less common, as demonstrated by you.
"Seriously, do you hear yourself? You sound like a fucking idiot..."
Left yourself wide open there didn't you sparky...
[ link to this | view in chronology ]
Except the opposite. Wait, why are they suing again?
[ link to this | view in chronology ]
"I ♥ NJ" vs. "I ♥ NY"?
If New York holds a trademark on "I ♥ NY", why would they care if someone was wearing a shirt with "I ♥ NJ"?
Last time I checked New Jersey is not New York.
Strange indeed.
[ link to this | view in chronology ]
Re: "I ♥ NJ" vs. "I ♥ NY"?
There is a fondness in New Jersey to mock the pretentions of New Yorkers.
[ link to this | view in chronology ]
Re: Re: "I ♥ NJ" vs. "I ♥ NY"?
[ link to this | view in chronology ]
Re: Re: Re: "I ♥ NJ" vs. "I ♥ NY"?
[ link to this | view in chronology ]
Re: Re: Re: "I ♥ NJ" vs. "I ♥ NY"?
[ link to this | view in chronology ]
[ link to this | view in chronology ]
[ link to this | view in chronology ]
Re:
After all, if NJ is too close to NY, then MY must be right up there too...
[ link to this | view in chronology ]
[ link to this | view in chronology ]
[ link to this | view in chronology ]
[ link to this | view in chronology ]
Re:
The only thing that will hurt is the coffee shop taking up the offer of a legal defense fund and taking this to court. Winning in court and being awarded lawyer fees and possibly damages would then come out of the NY coffers and someone might ask this lawyer what cracker jack box they got their diploma out of.
[ link to this | view in chronology ]
[ link to this | view in chronology ]
[ link to this | view in chronology ]
New York
Nothing new about new york. "Old York" fits much better.
[ link to this | view in chronology ]
As a consumer, how does this protect me?
I'm so confused.
[ link to this | view in chronology ]
I HATE NY
[ link to this | view in chronology ]
First off the I ♥ N Y trademark seems to simple in its use of a heart. There has got to be prior art in this case somewhere as the city is 200 years old. Its likely a nonsense trademark.
Second here we have a case where the city of New York is probably (figuratively of course to any literary terrorists out there!) shooting themselves in the city foot. This is a great example of how culture spreads and modifies current slogans and ideas to be both original and creative about normal things/places/topics expressing their love and wonder (or disgust) about them.
The city of New York has lost. Period! In what way has this episode increased the cultural diversity (thus happiness) and tax revenues (thus viability) of the city? Its a double three stooges whack on the noggin and a painful noogie to the city. (again, figuratively of course to any literary terrorists out there!)
Thirdly where is a coffee cup in place of the ♥ not an original creation? Its probably Trademarkable in and of itself.
Some solution oriented proposals;
One of the great problems of trademark is that it is way to inexpensive to obtain a trademark enforced throughout the US. It costs $250-350 usd for a trademark that lasts 10 years at that time it must be renewed (for $400 usd) before a 6 month grace period is up.
It might be a good thing to cut the territory given up for such a low cost Trademark to just one city, county or state. This would have the effect of letting local culture not squashed out be every small mom and pop store or over reaching city legal department. This would solve the great majority of silly trademark disputes.
The fee for a nationwide Trademark would be much larger maybe (at least) ~3000 per year and much much greater (say +3 million/year) if the trademark itself was some corporate attempt to limit the legitimate spread of popular culture. The best example are the Trademarks on Disney characters like Micky Mouse, Batman or Superman. No way anyone cannot recognize these characters a part of American Culture! (have to think about the cultural significants of a trademark and its impact on society and come up with some formula...)
It was once common law that if any concept/idea/character/etc became a �Household word� it became a legitimate part of American Culture and thus non trademarkable nor copyrightable. Can one use in a sentence the characters of any comic to label someone's behavior? Example �Wow! It felt like Superman entered the room when so and so made the scene.�
Another of the great problems of Trademark law is that it WAY to easy to threaten anyone indiscriminately. A good possible solution is to force the accuser/plaintiff to put up a bond that covers all legal fees from both sides just for even sending out a strongly worded demand asking for monetary settlement. It has to hurt enough to be a restraint on stupid lawsuits and idiotic trolling threat letters.
Reactionary,
That Anonymous Coward. Is only a matter of time that the Stop and frisk cops start looking for trademark violations on tattoos? Think of the extra revenue a �Trademark Ticket� plus further legal charges bring in to an obviously broke city because they threw out all the clever small coffee shops?
[ link to this | view in chronology ]
[ link to this | view in chronology ]
This guy should be claiming fraudulent copyright claim and counter-claim by getting a copyright on his fist and coffee.
Also... hearting New York and coffee-ing New York are two different things... hearting New York is a verb meaning "to love" New York... HE is clearly creating a new verb "coffee," meaning "to supply with coffee." ;)
[ link to this | view in chronology ]
I ♥ NYC
[ link to this | view in chronology ]