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Express ownership of local icons

GymbagIt isn't the first we heard of this, but the MTA is sending cease-and-desist letters to businesses that use subway-related logos. This strikes me as an uphill battle (and ultimately a losing one)  because there is no way that the MTA can keep up with all of the people using its logos. Plus, the subway really belongs to all New Yorkers, doesn't it? (Shouldn't it?)

But with all of the real estate that the MTA is selling for below market value - and its impending financial collapse, I can see why they need to maximize the profits from their logos.

You Can Take the A Train, but Don't Take Its Logo
by Sewell Chan
NY Times, 6/5/05 p. A1

Eli Zabar, the Upper East Side food market and restaurant owner, had been making thick, rectangular shortbread cookies coated with hard icing to look like MetroCards for more than three years when he received a letter in November from the Metropolitan Transportation Authority.

The tone was official, even ominous. The authority warned Mr. Zabar that he was improperly using its intellectual property - namely, the yellow and blue design of its electronic fare card. He responded that he would be happy to get permission to sell the cookies with the authority's official endorsement.

"They never got back to us," recalled Mr. Zabar. "We're still making the cookie. I guess my cookie is the least of their problems."

Indeed. The authority has been trying to crack down on the unauthorized use of its logos, symbols and images. But with only one lawyer to handle trademark issues, it has been ineffective at policing its brand. In fact, time and money are so scarce that the authority hasn't even been able to trademark all its subway route symbols, barely getting past the A, D, F, 1, 4 and 7.

In the past two years, the authority has issued more than 30 cease-and-desist letters alleging trademark infringement, but the sternly worded letters were not backed up with any legal action. Among the items were tote bags, T-shirts, bagels and perfume.

Advertisers using images controlled by the authority, like photographs of Grand Central Terminal, have also received letters.

To bolster its intellectual property claims, the authority has started to trademark its circular route symbols. In that effort, too, the results are mixed: in addition to the six symbols registered in 2003, applications for the E, G, J, N, 2 and 6 are pending. But there is not enough money for the other lines' symbols, so they will have to wait.

Each trademark can cost thousands of dollars to register and maintain. Although the authority has not registered all the subway route symbols, it believes it holds the exclusive right to them simply because it has used them for decades.

The impetus for all this activity is the authority's licensing program, which has grown to 25 product lines, including neckties, coffee mugs and shower curtains. Proceeds from the program provided the New York Transit Museum with more than $200,000 last year, a sixfold increase from 1999.

The authority now runs two gift shops, at the museum in Brooklyn and at Grand Central, along with an online store. The money pays for educational programs and reduces the subsidies the museum receives from the authority.

Legal experts say it is about time that the authority defended itself, even if it does so in the halting manner of a transportation agency designed to move millions of riders and not a private company equipped to fend off those who want to use its image.

"The M.T.A. is hardly unique in this and may even be a little bit late on the bandwagon," said Jane C. Ginsburg, a law professor at Columbia University who specializes in copyright and trademark issues.

But the authority has discovered that registering trademarks is expensive and time-consuming. It has filed 59 applications with the United States Patent and Trademark Office since 1992, according to federal records. So far, 36 applications have succeeded and 7 more are pending. The rest were abandoned because other trademark holders challenged them or because the authority believed they were no longer useful.

Selecting which subway route symbols to register is subjective. "There are some letters and numbers that fly off of our shelves, and others which never have," said Christopher P. Boylan, a deputy executive director of the authority who oversees its marketing program. The 1 and the A are highly popular, but the V and the W have attracted little interest.

The proliferation of counterfeit T-shirts, probably the most commonly imitated items, illustrates the limits of the authority's powers.

Under an exclusive license from the authority, Lynne Lambert began making black T-shirts with subway route symbols on the front in 1996.

Her sales grew from $35,000 that year to more than $1 million in 2004, Ms. Lambert said, but knockoffs are her foremost concern.

"My family's livelihood depends entirely on the M.T.A.'s good will," said Ms. Lambert, who runs her company, Prak Productions, from her home in Chappaqua, N.Y. "Any pirating is very painful to my small business."

After Ms. Lambert complained repeatedly, the authority sued Yellow Rat Bastard, a store at 478 Broadway, between Broome and Grand Streets, in 2001, charging that it had repeatedly sold unlicensed T-shirts and caps since 1999.

The case was settled, but problems with the store have persisted.

Prompted by complaints from Ms. Lambert, inspectors found more counterfeit clothing at a store supplied by Yellow Rat Bastard in June 2003 and at a Yellow Rat Bastard outlet in Queens in May 2004, according to the letters.

Henry Ishay, the owner of Yellow Rat Bastard, agreed in 2002 not to sell any more unlicensed items, according to court papers, but in an interview, he said he did so only to resolve a lawsuit he considered unfair.

"I feel sorry for this lady and her lawyer and the M.T.A.," Mr. Ishay said. "They're nice people, but they have nothing more important to do than keep themselves busy with this subject?" Ms. Lambert's shirts are distinguished by a label under the collar and an imprint on the back of the shirt. Several knockoffs - some selling at half-price - were visible during a recent visit to a half-dozen clothing stores in NoHo and SoHo.

To be sure, some vendors have complied with the authority's requests. CafePress.com, a company in San Leandro, Calif., that makes clothing and gifts with designs submitted by customers, withdrew several products after getting warning letters. "We can't know every trademark that's out there," said Maheesh Jain, vice president for business development.

But in several cases, like Mr. Zabar's cookies, which are sold at the Eli's Manhattan food market on Third Avenue and 80th Street, the authority has written letters but failed to follow up.

In April 2003, Lester G. Freundlich, the lawyer who handles trademark issues for the authority, sent a letter to Bond No. 9 Fragrance Inc., which marketed perfume with a logo that resembled old subway tokens, used from 1953 to 1985, with a large Y in the center.

The company continues to sell the perfume. Asked about the lack of a license to use the design, Claire Cabaron, a publicist for the company, referred questions to Laurice Rahme, the company president. Ms. Rahme did not respond to several phone calls and e-mail messages seeking comment.

Marketing a fragrance that reminds the buyer of the subway might not seem the wisest tactic, but as Professor Ginsburg, of Columbia University, said of the transportation authority: "They've got a lot of good will in the subway system, in the maps and in the symbols of the subway lines. It makes perfect sense to capitalize on that."

Florence Fabricant contributed reporting for this article.

Posted by Charles Star on 06/05/2005 | Permalink

Comments

There is a precedent for this... if any one remembers: the soft rock powerhouse Chicago was once named CTA, after the Chicago Transit Authority. The city sued the band, and won.

Posted by: Jamaal | Jun 10, 2005 11:38:26 PM

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