It seems we’ve had our own Rock and Roll Hall of Fame or Sydney Opera House case of sorts right here in Seattle. (See STL’s recent discussion of those cases here.) In 2004, the Space Needle Corp. sued McCain Snack Foods in the Western District for circulating a print advertisement featuring a photograph of the Seattle skyline with one little alteration — it replaced the Space Needle’s observation deck and restaurant with a giant onion ring.
The Space Needle Corp. brought suit for infringement of its registered trademarks, along with dilution and violation of Washington’s Consumer Protection/Unfair Business Practices Act. Its June 2004 complaint alleged: “Defendant’s use of the Space Needle Marks in the Advertisement is likely to confuse a significant portion of the purchasing public by inducing it to believe that Defendant’s products and services originate with, are sponsored by, or are otherwise associated with SNC or the food and entertainment services that SNC provides under the Space Needle Marks. Defendant’s use of the Space Needle Marks in the Advertisement also disparages SNC and the Space Needle Marks by associating the Space Needle Marks with goods and services that may be of lesser quality than those provided by SNC under the Space Needle Marks.”
In November 2004, the parties entered into a Stipulated Order of Dismissal and Permanent Injunction in which McCain denied “any liability or wrongdoing” but agreed to be permanently enjoined from “(1) using the Space Needle Marks or any image of the Space Needle in which the Space Needle is the dominant feature; and (2) using an adulterated image of the Space Needle.”
While obvious similarities exist between the Rock and Roll Hall of Fame and Sydney Opera House cases — namely, the commercial use of an iconic building in a photograph without the owner’s permission — there also are some notable differences. First, the Space Needle Corp. owned federal registrations for design marks depicting the building in profile, whereas the Rock and Roll Hall of Fame did not. (SNC’s Reg. No. 2,773,451 is depicted at right.) The Sydney Opera House claimed to have obtained “trade mark protection for a large number of trade marks including representations of SOH” but its demand letter did not identify the contents of any such registrations.
Perhaps more importantly, the Space Needle’s flat legs, round top, and protruding needle look the same in profile from every angle. Therefore, it does not suffer from the same trademark limitations inherent in more architecturally complicated buildings. In Rock and Roll Hall of Fame and Museum v. Gentile, 134 F.3d 749 (6th Cir. 1998), for example, the Sixth Circuit found the plaintiff had made “disparate” use of “several different perspectives of its building design,” which led the court to conclude it was not likely the plaintiff had created a “consistent and distinct commercial impression as an indicator of a single source of origin or sponsorship.” The same likely would be true with the Sydney Opera House. If SOH sold photographs, postcards, and t-shirts depicting its building from the front, the side, the top, at dawn, in the afternoon sun, and in the moonlight, it probably would have trouble establishing that any one view served as an exclusive indicator of source.
Finally, McCain’s use of the Space Needle photograph was not primarily an homage to the landmark but an altered depiction of the building — arguably making fun of the building — used to sell its snack foods. Would this really lead consumers to believe the Space Needle Corp. endorsed, sponsored, or was affiliated with McCain’s onion rings? If not, the Space Needle Corp. probably still had a decent dilution claim. It would have been interesting to see how the court would have decided these issues.
The case cite is Space Needle Corp. v. McCain Snack Foods, No. 04-01443 (W.D. Wash.).