Re: Re: Coipyright in the Hollywood Sign

>From: Tyler Ochoa <TTOchoa[_at_]scu.edu>
>Subject: Re: [CNI-(C)] Coipyright in the Hollywood Sign
>
>Amalyah - The mind boggles indeed. This is an outrageous claim.
>Feel free to forward this response to Mr. McCracken and to
>CNI-Copyright.
>
>========================
>
>With regard to copyright, the Hollywood Chamber of Commerce is blowing smoke.

Actually, it appears to be a scam by someone who doesn't know the difference between copyright and trademark. Or the difference between $5,000 and the real value of one of the best-known trademarks in the world.

>
>In my view, the more serious problem is with trademark law. I
>checked the Open University website, and there is an argument that
>the Open University is using the Hollywood sign as a trademark; they
>have a series of slides using the title caption "Hollywood Science,"
>with the "Hollywood" sign forming the first part of the title
>caption. The argument would be that the Chamber of Commerce has a
>registered trademark in the Hollywood sign (they do), and that the
>use of the sign creates a likelihood of confusion as to whether the
>University has been sponsored or endorsed by the Chamber of
>Commerce. In my view, this is a more plausible theory; but there
>are still a number of problems. The Open University pages are
>clearly marked, so there is no confusion as to source; the only
>possible confusion is to sponsorship or endorsement. But would
>someone looking at the website really think it was sponsored or
>endorsed by the Hollywood Chamber of Commerce? Doubtful. This is a
>nominative use, in which the sign is being used to refer to the U.S.
>movie industry ("Hollywood" in common parlance), and nominative uses
>are permitted under U.S. law under many circumstances. Also, in
>what class of goods is the Hollywood sign registered as a mark? I
>checked the USPTO website; it is registered for advertising,
>entertainment, casinos, jewelry, toiletries and cosmetics, clothing,
>photos and art prints, and clocks. It has not been registered for
>educational services, so this use might be too far removed to be
>confusing. [Although trademark dilution could still be argued, but
>this might be considered a non-commercial use of the mark.]
>Finally, I know that Hollywood Video uses the Hollywood sign as part
>of their registered trademark, and I seriously doubt that they are
>licensed by the Chamber of Commerce, so there is a waiver or
>abandonment argument as well.

Generally you cannot trademark a geographic location except as a certification mark ("Made in the USA") or collective mark ("Florida Orange Growers"). So the Chamber can't trademark the word "Hollywood", except perhaps as a collective mark for Hollywood movie producers ("Made in Hollywood"). Use of the word as a geographic designation is unrestricted. Not only can the Open University teach "Hollywood Science," you can even start your own town and name it Hollywood -- as they've done in Alabama, Arkansas, Georgia, Maryland, Mississippi, South Carolina, and Arizona (talk about consumer confusion -- can you imagine a tour of celebrity homes in Hollywood, Alabama?).

Tyler refers to the "nominative use" of the mark. The Chamber's mark is in the shape and arrangement of the letters -- as though lifted off the hillside above Hollywood. I can advertise a used "Ford" in the classified's, but I suspect I do not have the right to use the distinctive script in the oval that they license to dealers for new car ads. If you look at the USPTO website, there are other "Hollywood" trademarks using different fonts and arrangements. I don't know if Hollywood Video is paying for the license or pushing the envelope on likelihood of confusion, but its block letters are staggered differently than the Chamber's mark. My guess is that they settled -- paid the Chamber something and/or agreed to rearrange the letters to deal with the abandonment and waiver problem.

Having looked at Open University's "Hollywood Science" webpage, I think that the Chamber has a pretty good claim (except for the fact that they're making the wrong claim if it is the Chamber). Tyler offers the argument that the mark covers entertainment, not educational services; but when the education is about making movies in Hollywood, I think you're close to the line.

>If the Hollywood Chamber of Commerce were to try to enforce their
>outrageous claim with a lawsuit, the Open University would have a
>lot of support in its defense from numerous U.S. intellectual
>property professors. So, I encourage the Open University to stand
>up to the Chamber of Commerce's overreaching claims and call their
>bluff.
>
>Prof. Tyler T. Ochoa

Call me gutless, but if you're talking about the trademark claim, not the copyright claim, I'd drop the photo and change the font unless you're going to take the case pro bono and indemnify me against plaintiff's damages and attorneys fees.

John Noble Received on Mon Jun 20 2005 - 20:05:01 GMT