C3 Patent and Intellectual Property Law

Aug312010 | Steve O'Donnell

A City Authentic

Recently, the city of Lancaster, PA launched a new brand--“A City Authentic”--with a little square rose logo. Within a few days, someone posted a clip on youtube pointing out that the logo has already been in use. Oops. What could the city have done to prevent this embarrassment?

The city is not a client of mine, so I can’t speak with any authority on what they did, or didn’t do. My suggestions assume certain facts I don’t have, but are general enough to apply to any branding action.

First, the city’s contract with their designer should have included a warranty of non-infringement. Basically, the contract should have stated that the designer warrants that the design is original and doesn’t infringe on any one else’s copyright or trademark and that the designer will shoulder any legal actions to the contrary. That alone would have saved the city some embarrassment since it could have shifted the blame to the real responsible party.

Second, as noted in this article from Lancaster Online the city registered the logo with the copyright office. Presumably, both the city and the city’s design/marketing company thought that doing so would “clear” the image. That presumption fails for a couple of reasons. Copyright protects original works of authorship, and the logo is obviously not original. Any copyright action trying to defend this logo will probably fail at the motion to dismiss stage. Also, the logo is being used in a trademark sense, so it should have been vetted through the trademark application process, which is generally more robust than the copyright registration process.

If they had contacted me or another trademark practitioner, would the problem have been caught before it was used? It’s difficult to say. I haven’t searched for the mark since learning about the problem because I don’t think there is any way I could divorce myself from the knowledge that a problem exists. However, if the trademarking registration process had been completed before the brand was launched, the city would be able to point to that as proof that their use of the logo was substantially dissimilar to any other use of the graphic.

Lastly, if I, or someone else, discovered the similarity to another logo, a simple license agreement could have been drafted to clear the city’s use of the graphic.

Now, the city has to engage in damage control and will probably have to spend more money on that and on possibly changing its branding than it would have if it had consulted with me or another intellectual property attorney in Lancaster.

Comments

Kelly Watson commented on 02-Sep-2010 07:32 AM

Regardless of where the blame lies in this situation, it's important to remember that it could theoretically happen to any business owner. You've given some great insights into the situation, and tips for preventing it. Thanks.

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