Mon, Oct 25, 1999 page17

• The brave new world of trademarks

  LANDMARK CASE Owners of unique buildings are asserting their rights over how images of their structures are used, as companies seek to use the profiles of famous landmarks in their branding schemes

  • By David W. Dunlap / NY TIMES NEWS SERVICE
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  Metes and bounds once sufficed to determine the ownership of real estate. But a new kind of property dispute -- intellectual property -- is raising novel questions as to who controls the skyline.

  Take the landmark Flatiron Building. Both the building's owner, Newmark & Co Real Estate Inc, and an Internet-oriented venture capital firm called Flatiron Part-ners have sought to register an image of the structure as a trademark with the US Patent and Trademark Office. The case illustrates a growing inclination by the owners of unique structures to assert a trademark right to the design of their buildings and thereby control and even limit how images are used.

  Last month, Judge Miriam Goldman Cedarbaum of US District Court in Manhattan dismissed a lawsuit by the New York Stock Exchange against the New York-New York Hotel and Casino of Las Vegas, which has a one-third scale model of the famous Broad Street facade on its gambling floor as the "New York-New York $lot Exchange."

  

  The New York Stock exchange recently lost a suit filed against the New York-New York Hotel and Casino of Las Vegas, which has a one-third scale model of the famous Broad Street facade on its gambling floor as the "New York-New York $lot Exchange." The Stock Exchange argued that the trademark value of the facade was being diluted and tarnished.

  PHOTO: AP

  The Stock Exchange argued that the trademark value of the facade, which is registered (No. 1761655), was being diluted and tarnished.

  Judge Cedarbaum found that the trademark was not sufficiently distinctive to suffer dilution. "Many prominent buildings in the United States and elsewhere have classical facades with Corinthian columns and bas-relief figures on a pediment," she wrote. And she said the Big Board "is not likely to suffer injury to its business reputation merely because customers or potential customers of the casino make a mental connection" to the Stock Exchange when they see the $lot Exchange.

  The Stock Exchange will appeal the decision, said one of its lawyers, Doreen L. Costa of Baker & Botts.

  The tug-of-war over the Flatiron almost made it to federal court, but in a settlement last month, Flatiron Partners agreed to license the image from Newmark and withdraw its trademark application.

  Flatiron Partners is in 257 Park Avenue South, at 21st Street; not the Flatiron Building. It chose the skyscraper as an emblem of Silicon Alley, where many Internet enterprises are hatched.

  Newmark, which acquired an ownership interest in the Flatiron Building in 1997, objected when Flatiron Partners sought to register a trademark with a high-contrast image of the top of the prow-like structure.

  Then Newmark sued, charging that the logo was "likely to deceive, confuse or mislead" the public into thinking there was a connection between the investment firm and Newmark or its property. "We do in fact control the trademark rights to the building," said James D. Kuhn of Newmark. "We're not trying to stop general photography of New York City or anything like that."

  Keri A. Christ of Milbank, Tweed, Hadley & McCloy, a lawyer for Newmark, said the settlement "hopefully stands as an acknowledgment of the fact that the owners of distinctive architectural works or constructed buildings have intellectual property rights in the designs of those buildings if they're used in connection with their business." She said the amount of the licensing fee was confidential.

  Jerry Colonna, a founder and managing partner of Flatiron Partners, said the firm is "very happy" with the settlement, which enables it to continue using a "powerful, powerful image."

  "We felt we'd established a brand in our space of the world, separate from architecture and real estate," he said.

  "Like anybody who's created a brand, we certainly don't take branding lightly."
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