Historic Names Restored to Yosemite Lodging Icons

There’s no better way to celebrate old friends than to visit them on their birthday.  So when the National Park Service’s birthday rolled around on August 25, Kat decided to fly to Yosemite.  Pictured here is her visit to Mariposa Grove to admire the majestic sequoias.

Happily, the National Parks had even more to celebrate.  Yosemite National Park, by the time of Kat’s visit, was able to restore the signage of several properties to their historic names.  Those properties include the Ahwahnee Hotel, the Wawona Hotel, Camp Curry, and the Badger Pass Ski Area.

Wait, what?  Why were their names changed in the first place?

In 2014, the National Park Service started looking for a new concessionaire company.  The winning company Aramark signed a contract purchasing all the furniture, equipment, and other physical assets of the previous concessionaire Delaware North, who had been providing their services to the National Park Service from 1993-2014.  Yosemite had used the above-mentioned names for the respective hotels, lodges, and resorts long before 1993; however, Delaware North registered trademarks for such names on its own despite such prior use by the Park Service.  As Aramark’s contract did not explicitly discuss any transfer of intellectual property, Delaware North argued that Aramark was unable to use “their” trademarks.

In response to Delaware North’s claims, the Park Service was forced to rename many properties as of March 1, 2016, when Aramark’s contract began.  The Ahwahnee Hotel was renamed the Majestic Yosemite Hotel, Camp Curry was renamed Half-Dome Village, the Wawona Hotel became Big Tree Lodge, and so onTo long time visitors, these changes were hard to stomach.  While Delaware North offered to license the National Park Service “their” trademarks while the dispute was resolved, the Park Service refused, not wanting to acknowledge Delaware North’s rights as legitimate.

After a long negotiation process, Delaware North and the Park Service ultimately settled the resulting lawsuit in 2019.  The government ended up paying $3.84 million to Delaware North, while Aramark paid $8.16 million, and at the end of Aramark’s contract, Aramark will transfer ownership of the trademarks to the National Park Service at no cost.

While we are happy to see the matter resolved, what can be done to make sure such situations don’t happen in the future?  First, always read your contracts with specificity about intellectual property assets.  You need to make sure it is clear who owns and/or has rights in an particular asset.  You don’t want to build a brand around an intellectual property asset to which you don’t have all necessary rights. 

Alternatively, could there be some public policy exemption where the National Parks Service can own any and all trademarks regarding park areas and lodges?  Such a concept is not unheard of.  Congress has in the past granted statutory trademarks to a number of organizationsIn such a case, an organization does not file a trademark application with the federal authorities, but rather, Congress grants special protection to that organization through a statute within the U.S. Code itself.  Some organizations with such protection include Boy Scouts of America, the U.S. Olympic Committee, and maybe less familiar, the National Tropical Botanical Garden.  So what do you think?  Doesn’t the National Parks Service merit this special attention from our lawmakers?

– Kat Gavin, Esq.

Decorative, Ornamental, and Aesthetically Functional – A Cautionary Tale

Decorative, Ornamental, and Aesthetically Functional – A Cautionary Tale

They can be seen everywhere: funny phrases, beautiful works of art, and hip logos adorning hats, shirts, and apparel of all sizes and shapes.  But no matter how cool the design, catchy the slogan, or hilarious the pun, take caution before expending time and money trying to trademark or market your creative trademark.  Unfortunately, trademark law takes the on mantle of the grumpy old man whose yard swallowed many a Frisbee® and baseball of our youth, his catchphrase no longer the classic and effective “Get off my lawn,” but the much dryer “That’s decorative, ornamental, or aesthetically functional!”

The Trademark Office will refuse to register marks that are merely “decorative or ornamental.”  Meaning that if an applied-for mark is not being used as a source or brand identifier, but is rather a flashy design merely adorning the products being sold, such mark is ineligible for trademark registration.  Such objections usually arise if the mark is displayed only on the goods themselves, such as on the front of a tee shirt, and not in a manner that identifies the maker of such goods.  Thus, a decorative or ornamental objection can be overcome, or avoided altogether, if an applicant properly uses the mark in commerce as a source-identifier.  Trademark counsel will be able to advise regarding proper filing strategy for your mark.  However, once a mark is registered, it may still face an aesthetic functionality claim, if not properly utilized.

Aesthetic functionality is a murky area of trademark law that traces its roots to a comment in the 1938 Restatement of Torts: “When goods are bought largely for their aesthetic value, their features may be functional because they definitely contribute to that value and thus aid the performance of an object for which the goods are intended.”  Essentially, a mark is aesthetically functional if consumers are purchasing products for the mark itself, and such mark is not acting as a source-identifier.  This is not to say that a mark cannot act as both the reason a consumer purchases a particular product and a source identifier.  Consider the Nike swoosh.  Consumers buy all manner of goods prominently bearing the iconic swoosh, and we can reasonably infer that at least some of these consumers are buying these goods because of the design.  However, Nike has spent considerable effort in establishing itself as a brand, and consumers are not simply buying products because they like the swoosh design aesthetically, but also because they have brand loyalty to Nike and/or like Nike as a company.

Problems arise when consumers purchase products because of “interest in the specific names, independent of the reputation the companies developed when selling the products” LTTB LLC v. Redbubble, Inc., Case No. 18-cv-00509-RS, at *6 (N.D. Cal. Jul. 12, 2019).  A recent case in California, LTTB LLC v. Redbubble, Inc., highlights this distinction.  In LTTB, plaintiff LTTB brought suit against Redbubble, Inc. regarding numerous products featuring LTTB’s registered trademarks for LETTUCE TURNIP THE BEET (the “Marks”) for sale on Redbubble’s website.  LTTB LLC, at *2.  Redbubble successfully sought summary judgment claiming, in part, that the Marks were aesthetically functional.  Id.  The court held that LTTB was selling the pun, “Lettuce Turnip the Beet,” itself, stating:

The products are simply the vehicle for distributing the claimed “trademark,” rather than the other way around, where a trademark is used to identify the source of the goods. While companies that have already established s famous mark for selling a product—for instance Coca-Cola, Volkswagon, Audi, or Nike—may thereafter be able also to exploit consumer interest in the mark by selling t-shirts or other products emblazoned with such marks, and preclude others from doing so—that simply does not present an equivalent issue.

Id. at *7.

LTTB’s Marks could serve simultaneously as a functional component of a product and a trademark, if the typical consumer not only purchased the goods for its aesthetic appeal, but also inferred from the Marks that the goods were produced, sponsored, or endorsed by LTTB.  LTTB LLC, at *8 (citations omitted).  However, the court held that LTTB presented no evidence that a purchaser of “Lettuce Turnip the Beet” products could infer from the use of the pun that such products were “produced, sponsored, or endorsed by any particular person or entity.”  Id. at *8.  Thus, consumers bought these products not because they originated from a specific producer, but because of the pun itself, which is a clear example of aesthetic functionality.  Additionally, even though LTTB’s marks had achieved “incontestability” on the Federal Trademark Register, statutory incontestability “does not preclude challenges based on arguments that the marks are ‘functional.’”  Id. (citing 15 U.S.C.§ 1115(b)(8)).

To avoid claims of aesthetic functionality, trademark owners must ensure their marks act as source identifiers.  In order to best protect your designs and slogans, we always recommend you consult a licensed trademark attorney.  Counsel can help you to develop a comprehensive strategy to ensure maximum protection.

 

– Fred Freeman, Esq.

Patchwork of State Privacy Laws

Earlier this year, we wrote about the European Union’s General Data Protection Regulation (GDPR) and how California was following suit by passing the California Consumer Privacy Act (CCPA). This law will come into effect on January 1, 2020. 

The CCPA protects California residents by providing heightened privacy rights and consumer protection regarding the collection of their personal data online.  While California residents are the protected class, businesses nationwide will be affected by the CCPA.  Any company whose website is accessed by California residents is subject to the requirements of the CCPA.  Potential damages for violation of the CCPA include statutory or actual damages, as well as fines for intentional and unintentional violations; therefore, it is imperative that businesses ensure their websites, privacy policies, and data collection procedures are compliant with the CCPA as soon as possible.

Additionally, a patchwork of states have started drafting and passing privacy laws in the CCPA’s wake. The infographic above shows which states are proposing and passing new legislation.

One of the two states that has officially passed a data privacy law is Nevada.  Although only passed in May of this year, it will be effective a full three months earlier than the CCPA, October 1, 2019.  This law appears narrower than the CCPA, as it specifically addresses a consumer’s right to opt out of the sale of their personal information, while the CCPA covers the whole gamut of an individual’s rights to data.  Additionally, this bill does not include a private right of action, but rather relies on the Attorney General to enforce it. We are not at all shocked that Nevada would be one of the earliest adopters of additional privacy legislation, however. What happens in Vegas, stays in Vegas.

The other early actor is Maine, whose governor signed one of the strictest internet privacy protection bills into law just this month. Maine’s new privacy law, which goes into effect on July 1, 2020, will require internet service providers to seek consent from their consumers before selling or sharing their personal information with any third party.  Critics have attacked this law on various grounds, arguing that the law conflicts with federal laws, the U.S. Constitution’s Interstate Commerce Clause, and even the right of free speech.  Yikes.  We’re interested to see how these challenges will play out in the courts.

Five additional states have proposed legislation.  All of these proposed bills have pros and cons, but we will look into them in more depth as they progress.

  • New York has proposed a broadly worded bill regarding privacy that includes imposing an obligation on companies as a “data fiduciary” and allows for a private right of action. We expect such an aggressive bill to get some pushback, as a fiduciary duty is a very high obligation.
  • Maryland’s proposal incorporates the CCPA’s prohibition on discriminating against those who exercise their individual rights to data access or deletion (which was one of the big changes from the GDPR to the CCPA) and shares many characteristics with the CCPA. This bill does not allow for a private right of action.
  • Massachusetts’ proposed bill allows for a private right of action for consumers who have had their personal information “improperly collected.” It also prohibits discrimination where consumers have exercised their associated privacy rights.
  • Hawaii’s proposed legislation currently has no definition for “business,” which will hopefully be remedied before its passage. It also does not include a private right of action . . . or any penalties for violations.
  • New Mexico’s proposed bill includes many key individual rights addressed in the CCPA, such as the right to access and deletion of personal information.

Additionally, Mississippi, Washington, and Texas all attempted to pass legislation this year that addressed consumer privacy.  While these bills did not make it through the legislatures, these states are participating in active discussions, which is just more inspiration for the remaining states.

A federal law may soon address this developing patchwork of state laws.  As early as November 2018, various House and Senate Committees held hearings and drafted federal legislation regarding consumer data protection. We expect to hear more from Washington D.C. by August 2019, but again, we’ll keep you posted.

– Kat Gavin, Esq.

Pam Visits Israel

Last month, Pam took some time out of the office to visit the Holy Land.  Pam made the pilgrimage to Israel along with fellow worshipers from Hope Church.  On her trip, she visited Bethlehem and the birth place of Christ, was baptized in the Jordan River, went to Nazareth and saw Armageddon, and sailed the Sea of Galilee.  She shared some of the photos from her life changing experience.

Kat Promoted to Partner

Gavin Law Offices, PLC is proud to announce that after her hard work and dedication, Kat Gavin has been promoted to Partner. We are looking forward to all we can accomplish as a team  with Kat in this position. Congratulations, Kat!