New York Continues Its Trademark Bullying Ways: Threatens Coffee Shop With Bogus Threats

from the i-hate-ny-trademark-bullying dept

I recall, a few years ago, filmmaker Kevin Smith talking about how the state of NY demanded money because a background player (I think a dancer) in Clerks II was shown wearing an "I ♥ NJ" t-shirt, and NY, somewhat infamously, holds the trademark on "I ♥ NY." I don't recall all of the details, but I'm pretty sure Smith said that a significant sum of money had to be paid to the state of NY. Of course, that's an abuse of trademark law on multiple levels. The likelihood of confusion is likely nil, and even if they were arguing dilution, that seems unlikely as well. The t-shirt was in a movie, not for sale by the movie. Another time, NY threatened the guy who created the I ♥ NY design in the first place when he tried to make a new version after September 11. Because NY is an obnoxious trademark bully, that's why.

The latest in NY's over-aggressive trademark bullying comes courtesy of the NY Times, which reports that CMG Worldwide, the agency that NY uses to "police" its trademark, sent a legal nastygram to NYC coffee shop Everyman Espresso. Apparently, one of the co-owners of the shop, Sam Penix, had "I [coffee cup icon] N Y" tattooed across his fingers, as seen below:
And, from that, the coffee shop built something of a logo, and sold merchandise with the logo, which included the fist as a key part.
IMG_2971
Photo from jkwoo
Lots of people, quite reasonably, find this bullying ridiculous, and as Gothamist points out, some even volunteered to set up a legal defense fund.

Everyman Espresso's owners decided to fold, telling CMG that it would "cease all use of its mark." You would think that should be enough, but because NY state is positively obnoxious, CMG sent back a letter demanding licensing fees:
“We expect that any entity that infringes on the rights of our client compensate it for unauthorized use,” the lawyer, Clare Neumann, wrote on May 20, requesting “an accounting of all gross revenues generated during the period when the I ♥ NY® Trademark was used” to help her set the appropriate penalty.
Penix rightfully points out that this feels like extortion, and it's doubly ridiculous because the entity threatening his coffee shop is the Empire State Department for Economic Development, who is basically trying to extract money from a popular coffee shop, while getting it to stop promoting NY.

The lawyer representing NY claimed that trademark regulations "prohibit companies from using any part of a trademark." But that's flat out untrue. There are all sorts of situations where you can use a trademark, especially if there's no likelihood of confusion (which is absolutely the case here). If NY argued dilution, there might be a case, but I'd love to see how this harms NY and its mark in any way. Because it doesn't.

Coincidentally, I'll be in NYC next week, staying blocks from Everyman Espresso. I don't even drink coffee, but feel like stopping by to support the store, just because trademark bullies suck.


Reader Comments (rss)

(Flattened / Threaded)

  1.  
    icon
    ChurchHatesTucker (profile), May 31st, 2013 @ 5:34pm

    New mark

    Just create a new image. I suggest the tatted hand flipping the bird.

     

    reply to this | link to this | view in thread ]

  2. This comment has been flagged by the community. Click here to show it
     
    identicon
    out_of_the_blue, May 31st, 2013 @ 6:08pm

    I think trademark bullying was invented in New York.

    Just an offshoot of the thieving done on Wall Street.


    Take a loopy tour of Techdirt.com! You always end up same place!
    http://techdirt.com/
    You've found the site of Internet Quipper Mike "Streisand Effect" Masnick!
    14:08:02[p- 65-2]

     

    reply to this | link to this | view in thread ]

  3.  
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    droozilla (profile), May 31st, 2013 @ 6:22pm

    4 Things I'd Like To See.

    1. I'd like to see where the city/state has a trademark on the letters I, N, & Y.

    2. I'd like to see where I (Heart) NY shows up in a straight line on a fist, trademarked.

    3. I'd like to see where the City/State has filed a trademark on coffee mugs.

    4. I'd like to see the douchebag lawyers that shook down this coffee shop hung by their balls from a NYPD camera tower in Times Square.

    Considering I'll never see 1-3, I'll settle for #4.

     

    reply to this | link to this | view in thread ]

  4. This comment has been flagged by the community. Click here to show it
     
    identicon
    Anonymous Coward, May 31st, 2013 @ 6:43pm

    I know you're just a faith-based, backwards-working, results-oriented FUD-packer, but how did you determine, absolutely, that it's "absolutely the case here" that there's no confusion? Seriously, do you hear yourself? You sound like a fucking idiot with these foregone conclusions based on no evidence presented as unequivocal fact. Why should anyone take you seriously ever?

     

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  5.  
    identicon
    Anonymous Coward, May 31st, 2013 @ 6:45pm

    Re: I think trademark bullying was invented in New York.

    Boring, even for you.

     

    reply to this | link to this | view in thread ]

  6.  
    identicon
    Anonymous Coward, May 31st, 2013 @ 7:16pm

    And thus all of society benefited from this aggressive protection and New York's brand did not suffer as a result.

    Except the opposite. Wait, why are they suing again?

     

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  7.  
    identicon
    Anonymous Coward, May 31st, 2013 @ 7:17pm

    Re:

    "Why should anyone take you seriously ever?"
    Same question; you?

     

    reply to this | link to this | view in thread ]

  8.  
    icon
    Ferel (profile), May 31st, 2013 @ 7:18pm

    Re:

    Why should you be taken seriously?

     

    reply to this | link to this | view in thread ]

  9.  
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    iambinarymind (profile), May 31st, 2013 @ 7:22pm

    "I ♥ NJ" vs. "I ♥ NY"?

    So New York really demanded money from Kevin Smith for having an individual in Clerks II being shown wearing an "I ♥ NJ" t-shirt?

    If New York holds a trademark on "I ♥ NY", why would they care if someone was wearing a shirt with "I ♥ NJ"?

    Last time I checked New Jersey is not New York.

    Strange indeed.

     

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  10.  
    identicon
    Anonymous Coward, May 31st, 2013 @ 7:56pm

    Re:

    I think you're like a kettle warehouse at this point.

     

    reply to this | link to this | view in thread ]

  11.  
    identicon
    MrWilson, May 31st, 2013 @ 8:45pm

    Re:

    "how did you determine, absolutely, that it's "absolutely the case here" that there's no confusion?"

    Here's a clue: The NY lawyer didn't say a goddam thing about an actual case of confusion. If they had an actual example, they would have used it in their letter. "We received a thousand complaints from consumers who were upset that they bought a t-shirt that said I [coffee cup] NY and they could have sworn it was endorsed by IP maximalist bullies in the NYC government!"

    Their letter referred only to "Everyman Espresso’s unauthorized and confusingly similar use of the I ♥ NY® logo." Where's the smoking gun? Oh, of course there isn't one. No actual confusion.

    Nobody thinks a coffee cup is a heart. Maybe your heart is equivalent to a cup of black coffee, but the rest of us wouldn't be confused by the similarity of the phrases.

     

    reply to this | link to this | view in thread ]

  12.  
    identicon
    Anonymous Coward, May 31st, 2013 @ 8:45pm

    Re: 4 Things I'd Like To See.

    Actually, the named lawyer is not a male, so the suggested location for hanging is a no-go. Given that the named lawyer is a relative newcomer to the practice of law (in this case less than 4 years), it is not at all surprising to see what I believe most seasoned trademark lawyers would treat as a minimal issue, and not one at which to "swing away" in the hope of hitting a home run.

     

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  13.  
    identicon
    Anonymous Coward, May 31st, 2013 @ 9:10pm

    It's clear to me now. Entitlement thinking causes insanity.

     

    reply to this | link to this | view in thread ]

  14.  
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    droozilla (profile), May 31st, 2013 @ 9:23pm

    Re: Re: 4 Things I'd Like To See.

    Substitute a reasonable female equivalent then.

    I hope the next administration cleans house.

     

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  15.  
    icon
    JMT (profile), May 31st, 2013 @ 10:36pm

    Re:

    "...how did you determine, absolutely, that it's "absolutely the case here" that there's no confusion?

    Common sense is clearly becoming less common, as demonstrated by you.

    "Seriously, do you hear yourself? You sound like a fucking idiot..."

    Left yourself wide open there didn't you sparky...

     

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  16.  
    identicon
    Lex, May 31st, 2013 @ 10:42pm

    The logo did not include a heart, therefore one can assume they are objecting to any part being used - so I wish them luck going after soNY, and many more companies that include I or NY in their name!

     

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  17.  
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    That Anonymous Coward (profile), May 31st, 2013 @ 10:52pm

    And once again IP law makes it easier to just do what the "owner" demands, than to attempt to fight back. Even if your in the right, you still need a warchest to fight for rights clearly spelled out. And even if you win, they appeal, and appeal, and appeal. And at the end... even if you won you've lost and the IP holder wins.

     

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  18.  
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    MadMatt (profile), Jun 1st, 2013 @ 1:40am

    Just be sure when sending snail mail to the York state that you don't use part of their copyright when you address the mail. Or is the postal service paying copyright fees of some sort for each letter processed.

     

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  19.  
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    Anonymous Coward, Jun 1st, 2013 @ 1:48am

    is there likely to be a change of mind by the coffee shop, now that the lawyer has gone down the 'extortion' road, which this undoubtedly is? perhaps a campaign to raise awareness of what is going on will make this lawyer stop her ridiculous quest? it needs bringing to a wider media audience. there's gonna be a lot who know nothing about it. make them aware.

     

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  20.  
    identicon
    Anonymous, Jun 1st, 2013 @ 5:00am

    Tshirthell has an I [plane] NY shirt. The heart has been replaced with a plane crashing into the N.

     

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  21.  
    identicon
    The Real Michael, Jun 1st, 2013 @ 5:03am

    Unless you consider blackmail, legal threats and lawsuits against the public to be for our own benefit, I'd say that IP is a SCAM to benefit lawyers, judges, corporate enterprises, and government.

     

    reply to this | link to this | view in thread ]

  22.  
    identicon
    Theden, Jun 1st, 2013 @ 5:34am

    Re:

    And all the folks wit "I [heart] MY [insert image of something they heart here]

    After all, if NJ is too close to NY, then MY must be right up there too...

     

    reply to this | link to this | view in thread ]

  23.  
    icon
    That Anonymous Coward (profile), Jun 1st, 2013 @ 5:54am

    Re:

    It hasn't worked against stop and frisk, NYPD being sent around the globe to study terrorism, NYPD chasing brown people into other jurisdictions and not alerting local authorities to their activities, Tony Bologna, and the list goes on and on...

    The only thing that will hurt is the coffee shop taking up the offer of a legal defense fund and taking this to court. Winning in court and being awarded lawyer fees and possibly damages would then come out of the NY coffers and someone might ask this lawyer what cracker jack box they got their diploma out of.

     

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  24.  
    identicon
    Anonymous Coward, Jun 1st, 2013 @ 6:38am

    New York

    Great state, too bad a bunch of lawyers and state employees ruin it for a lot of people. They don't always see things right or interpret intentions written between the lines clearly. Oh, but they love those heavy handed threats on paper they pay secretaries minimum wage to mail out. If you let them take this fight from the courtyard to the courtroom, you're pretty much whipped.

    Nothing new about new york. "Old York" fits much better.

     

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  25.  
    identicon
    Moron In A Hurry, Jun 1st, 2013 @ 6:47am

    What is the city protecting here?
    As a consumer, how does this protect me?

    I'm so confused.

     

    reply to this | link to this | view in thread ]

  26.  
    identicon
    Anonymous Coward, Jun 1st, 2013 @ 8:12am

    Re: Re: Re: 4 Things I'd Like To See.

    ouch man

     

    reply to this | link to this | view in thread ]

  27.  
    icon
    madasahatter (profile), Jun 1st, 2013 @ 11:33am

    Re: "I ♥ NJ" vs. "I ♥ NY"?

    Because New York and New Jersey detest each other. The two states had a recent lawsuit over whether Ellis Island was in NJ or NY with NJ mostly winning. New Yorkers were upset because immigrants actually entered the US in New Jersey not New York.

    There is a fondness in New Jersey to mock the pretentions of New Yorkers.

     

    reply to this | link to this | view in thread ]

  28.  
    identicon
    Anonymous, Jun 1st, 2013 @ 11:37am

    Re: Re: "I ♥ NJ" vs. "I ♥ NY"?

    How come some people refer to New Jersey as "Jersey", but nobody ever refers to New York as "York"?

     

    reply to this | link to this | view in thread ]

  29.  
    identicon
    Anonymous Coward, Jun 1st, 2013 @ 11:47am

    Re: Re: Re: "I ♥ NJ" vs. "I ♥ NY"?

    Joyzee & Na Yuk

     

    reply to this | link to this | view in thread ]

  30.  
    identicon
    Anonymous Coward, Jun 1st, 2013 @ 1:21pm

    Re: I think trademark bullying was invented in New York.

    "Just an offshoot of the thieving done on Wall Street."

    I wonder how his corporate masters are taking their lapdog's biting the hand that feeds him.

     

    reply to this | link to this | view in thread ]

  31.  
    identicon
    anonymouse, Jun 1st, 2013 @ 1:39pm

    I HATE NY

    New shirts needed printing for all to wear I HATE NY , i am sure everyone will except my copyright and patent and every other law that people think cover this to be mine which i give to people freely unless they are a business making a profit of this shirt I request a reasonable 40% of all monies made pre tax.

     

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  32.  
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    special-interesting (profile), Jun 2nd, 2013 @ 3:38am

    Trademark law is way to powerful and needs to be trimmed if not lopped off mostly to the ground.

    First off the I ♥ N Y trademark seems to simple in its use of a heart. There has got to be prior art in this case somewhere as the city is 200 years old. Its likely a nonsense trademark.

    Second here we have a case where the city of New York is probably (figuratively of course to any literary terrorists out there!) shooting themselves in the city foot. This is a great example of how culture spreads and modifies current slogans and ideas to be both original and creative about normal things/places/topics expressing their love and wonder (or disgust) about them.

    The city of New York has lost. Period! In what way has this episode increased the cultural diversity (thus happiness) and tax revenues (thus viability) of the city? Its a double three stooges whack on the noggin and a painful noogie to the city. (again, figuratively of course to any literary terrorists out there!)

    Thirdly where is a coffee cup in place of the ♥ not an original creation? Its probably Trademarkable in and of itself.


    Some solution oriented proposals;

    One of the great problems of trademark is that it is way to inexpensive to obtain a trademark enforced throughout the US. It costs $250-350 usd for a trademark that lasts 10 years at that time it must be renewed (for $400 usd) before a 6 month grace period is up.

    It might be a good thing to cut the territory given up for such a low cost Trademark to just one city, county or state. This would have the effect of letting local culture not squashed out be every small mom and pop store or over reaching city legal department. This would solve the great majority of silly trademark disputes.

    The fee for a nationwide Trademark would be much larger maybe (at least) ~3000 per year and much much greater (say +3 million/year) if the trademark itself was some corporate attempt to limit the legitimate spread of popular culture. The best example are the Trademarks on Disney characters like Micky Mouse, Batman or Superman. No way anyone cannot recognize these characters a part of American Culture! (have to think about the cultural significants of a trademark and its impact on society and come up with some formula...)

    It was once common law that if any concept/idea/character/etc became a “Household word” it became a legitimate part of American Culture and thus non trademarkable nor copyrightable. Can one use in a sentence the characters of any comic to label someone's behavior? Example “Wow! It felt like Superman entered the room when so and so made the scene.”

    Another of the great problems of Trademark law is that it WAY to easy to threaten anyone indiscriminately. A good possible solution is to force the accuser/plaintiff to put up a bond that covers all legal fees from both sides just for even sending out a strongly worded demand asking for monetary settlement. It has to hurt enough to be a restraint on stupid lawsuits and idiotic trolling threat letters.


    Reactionary,

    That Anonymous Coward. Is only a matter of time that the Stop and frisk cops start looking for trademark violations on tattoos? Think of the extra revenue a “Trademark Ticket” plus further legal charges bring in to an obviously broke city because they threw out all the clever small coffee shops?

     

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  33.  
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    btrussell (profile), Jun 2nd, 2013 @ 6:16am

    Re: Re: Re: "I ♥ NJ" vs. "I ♥ NY"?

    York is Toronto's original name. Since there was no copyright back then, there wasn't any incentive to be original, just newer.

     

    reply to this | link to this | view in thread ]

  34.  
    identicon
    Shon Gale, Jun 2nd, 2013 @ 6:38am

    How about this one! "N Y S U X"

     

    reply to this | link to this | view in thread ]

  35.  
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    DannyB (profile), Jun 3rd, 2013 @ 5:55am

    Re: New mark

    > Just create a new image. I suggest the tatted hand flipping the bird.

    The phrase could be: I LOVE NEW CENSORED!

    But then, if it were abbreviated, it could be confused with a different state.

     

    reply to this | link to this | view in thread ]

  36.  
    identicon
    Anonymous, Jun 4th, 2013 @ 12:16am

    What a ridiculous junk claim. For one, isn't I heart NY usually arranged in a square with I heart and then a break and NY? It's not even similar.

    This guy should be claiming fraudulent copyright claim and counter-claim by getting a copyright on his fist and coffee.

    Also... hearting New York and coffee-ing New York are two different things... hearting New York is a verb meaning "to love" New York... HE is clearly creating a new verb "coffee," meaning "to supply with coffee." ;)

     

    reply to this | link to this | view in thread ]


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