Portland City Officials Agree Not To Sue Over Portland Oregon Sign To Keep Court From Ruling On Trademark
from the punt dept
Portland, the city, is back in the news again regarding Portland, the sign, and the city's insistence that it has a trademark over the landmark. We last checked in on this when Pabst, the brewery, had used an adaptation of the famous Portland sign to promote a concert in the city. The city then worked out an arrangement with Pabst so that it could keep using its sign imagery and keep the case out of the court. This was fully in the city's interests, because it's unclear on why a municipality should be granted a trademark on a local landmark's image when it isn't actually using that image in commerce.
It seems Jeff Kunkle, owner of the Vintage Roadside shop, which sells merchandise on Etsy, thinks similarly. When Portland found that Kunkle was selling merchandise with images of the sign, the city contacted him to arrange a licensing deal. Kunkle told them to go dangle, instead suing the city to have its trademark over the sign declared invalid.
Vintage Roadside, a Portland company that sells photos of the old "Made in Oregon" sign on Etsy, is suing the city of Portland, which recently sought a licensing payment from the company for use of the image. The suit, filed in Multnomah County Circuit Court on Thursday, asks the court to declare the city's trademark of the sign, which changed to "Portland Oregon" in 2010, invalid and unenforceable.Oops. So, if you're Portland and you've been extracting money from individuals and businesses by way of a trademark that would likely be declared invalid should a judge look it over, what do you do? Well, you utilize the rules of the court to weasel your way out of the whole thing while not admitting that your sign trademark is bullshit, of course!
City of Portland officials are employing a creative legal maneuver to get rid of a lawsuit concerning its trademark of the "Portland Oregon" sign. Last week, the city told Kunkle's attorney, Robert Swider, that it was filing a covenant not to sue, which basically means that the city still believes the city owns the rights to the sign but won't try to enforce them against Kunkle—now or ever... By eliminating that point of contention, the city takes away Kunkle's standing to bring the lawsuit.Which keeps the question over whether or not the city's trademark is even valid to begin with. The good news is that this specific story will hopefully get enough play in the Portland area to serve as a beacon to anyone the city might later approach for one of its "licensing deals." It should be clear at this point that the proper response to the city is to sue them outright.
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Oh wow.
Yes, I know. Bad comparison. Just not bad enough.
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A perfectly working system*
This case, and similar ones involving trademarks, show just how utterly broken the system is.
Want to get into the extortion racket business? Not a problem, just invoke the magic words, 'Copyright', 'Patent' or 'Trademark', and no matter how sleazy and/or pathetic your case is, you're good to go.
Mark fights back, and it looks like you might lose the case, and potentially the copyright/trademark/patent being used to shake people down? Also not a problem, just drop the case, and move on to the next person. Unless you were a bit too blatant in your shakedown demands, should your target try and force the issue, they not you, will be the ones feeling the displeasure of the court for 'wasting everyone's time', allowing you to continue sending threat letters far and wide.
*For extortionists.
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Path of No Good
Surely the city of Portland can't turn back time and change the rules AFTER their previous action allegedly caused financial harm to an individual, the result of which was this lawsuit?
The city may try and forestall FUTURE suits by declaring that FROM NOW ON they will no longer try and extort money from local businesses, but the situation leading to the suit must be the basis of the case, no?
And will not those, who previously decided to pay the city's licensing fee demand their money back - through the courts, if necessary?
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In fact the covenant by filing it could actually negate any claim to a trademark ever of this sign.
Also the standing of Kunkle isn't specifically taken away by the covenant, and the standing by any affected parties (ie: citizens of portland) is definately not affected either
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Re:
[stupid non editable klunky td interface.. I blame Tim.. either one.. doesn't matter :) ]
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Re:
Isn't the covenant only to not sue that one business?
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Re: Re:
Equity becomes a major problem then.
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Are you sure about that? Isn't taking licensing fees from the unsuspecting a form of trade?
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Covenant Not to Sue
This sort of problem evades review and is likely to recur. Courts sometimes address such even when the original controversy is moot.
If the covenant works and is broad enough to eliminate his case and controversy, then we need to wait for Newcorp Free Automatic Sign Image Sublicensing, LLC, to see how this works out.
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Re: Covenant Not to Sue
Yes, this COULD happen, but there's no indication that it's likely. The court isn't ordinarily going to deal with a hypothetical. If he actually had Newcorp Sign Pictures ready to use those pictures, that would be a different story, but "I might want to form a new company someday" does not give him standing to sue.
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http://en.wikipedia.org/wiki/White_Stag_sign
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Portland Sign
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