“A New York street artist filed a cease-and-desist letter to Apple, claiming their new ad campaign for the iPhone 5s uses his trademarked slogan,” Barbara Ross reports for The New York Daily News.
“James De La Vega says he’s been using the phrase, ‘You are more powerful than you think,’ for almost a decade as part of his ‘Become Your Dream’ series,” Ross reports. “The Cornell University grad with a degree in fine arts has chalked his slogans onto sidewalks, painted them into murals and even incorporated them into a graffiti motif that designer Tory Burch used recently for a line of handbags and fashion accessories.”
“De La Vega said the slogan is so widely associated with him that when a company called Quotable Cards Inc. recently decided to market a collection of quotable magnets featuring the sayings of living instead of dead people, they got De La Vega’s permission to use the ‘powerful’ quote,” Ross reports. “Richard Garbarini, De La Vega’s lawyer, recently sent Apple the cease-and-desist letter demanding that Apple acknowledge that it has violated De La Vega’s rights as the ‘common law owner of the trademark.’ Garbarini’s letter says De La Vega wants to avoid a lawsuit by negotiating a settlement. ‘Words are weapons,’ De La Vega said. ‘This is my way of building a movement. (Apple) should pay me because I created it and they’ve used it to creation national excitement about a product and huge profits for themselves.'”
Read more in the full article here.
MacDailyNews Take: A mind is a terrible thing to waste®. And vice versa.
[Thanks to MacDailyNews Reader “Brawndo Drinker” for the heads up.]
Hmmm. The headline made me leap to one conclusion; after reading the MDN summary I’m not so sure that this guy doesn’t have a case against Apple. But “Common Law Owner of the Trademark” rather than “Registered Trademark Owner” may make things a bit difficult for him. (But WTF do I know?)
“common law owner of the trademark”
That’s once concept I’ve got to look up. Never heard of it. I’m also willing to bet I can find a lot of prior use of the offending phrase. Search engine attack mode NOW!
The anonymous armchair lawyer who responded to me below can doubtless tell you all about it.
-jcr
Well, I have a “common law trademark” on the phrase:
“[Insert American president’s lat name here] sucks!”
So you can all start paying me.
Oh dear. I’m finding “You are more powerful than you think” used QUITE a lot by MANY companies. WordPress only lets us post two links at time. So these are my favorites:
1) OhLaLa! Powerful lady’s apparel.
http://abook.org/you-are-more-powerful-than-you-think/
2) WooWoo! The Spirit of Ma’at.
http://spiritofmaat.com/mar11/octahedron_manifesting.html
All together I got 46 hits for (in quotes) “You are more powerful than you think” using DuckDuckGo. Only two of those hits are clearly associated with Mr. De La Vega.
IOW: Throw out the case! It’s a Commonly Used Phrase. Sorry Mr. De La Vega. You didn’t invent it. You don’t have any more legal rights to it than anyone else! Save your lawyer fees.
Wasn’t that a line in “The Matrix”?
I am pretty sure that Morpheus said something like that to Neo.
The Matrix came out in 1999.
It’s a very popular meme in many Fantasy Genre books featuring the callow youth learning he has talent that is needed to destroy the evil that lords it over the land. . . and the phrase is tritely used in many of them.
Clearly, it is a common phrase.
A hit! Here’s an informative page about “Common Law Trademark Rights”. There are some very clear limitation:
http://www.bitlaw.com/trademark/common.html
Executive summary:
Trademark rights arise in the United States from the actual use of the mark. Thus, if a product is sold under a brand name, common law trademark rights have been created. This is especially true once consumers view the brand name as an indicator the product’s source.
I.E. Mr. De La Vega has to have SOLD a product with the ‘trademark’ used to associate the product with the phrase. Do his greeting cards apply? ONLY where they were sold, as in what state within the USA where they were sold. If they were universally sold, he might have a case…
EXCEPT he has to establish that the phrase has not already been associated with other products. Quoting:
Common law trademark rights are limited to the geographic area in which the mark is used.
Furthermore, quoting:
Effect of common law marks on trademark searches:
Since no registration is required in order to establish common law rights to a trademark, it can be difficult to discover whether anyone has trademark rights in a particular mark. This is the legal background for the difficulties and expenses involved in trademark clearance searches. If registration were required for trademark rights, clearance searches would only need to examine trademark registers. Under U.S. law, however, an attempt must be made to discover these common law rights.
IOW: Have fun with your search Mr. De La Vega. I ready did one search, and it looks really bad for your case! You have zero precedent as having created the phrase or having used it first. Zero.
TradeMarks are only protectable if you REGISTER them… and are granted them, after a process that assures they are not already claimed, or not too common to considered public domain. Registered TradeMarks can even be lost by their owners if they are not aggressively protected by preventing their use in commerce. Witness kleenex, xeroxing, and other once trademarked names that have passed into generic usage because the companies that owned them did not prevent others from using the terms for similar products. Merely “chalking” a phrase on the sidewalk or incorporating a phrase into artwork at best might get him a copyright on the artwork, or the appearance of the work, but nothing more, certainly not a “common law TradeMark.” TradeMarks are specific and usually for specific industries.
I should have used the term “enforceable” rather than “protectable.” He can claim a “TradeMark” all day long, but unless he has that little “™” on his phrase, and legitimately so, he will be hard pressed to enforce his claim. There are levels of trade protection and this use of an aphorism among others in his collection, as he claims, is not one of them. He may be able to claim copyright. But he’s not.
According to the United States Copyright Office, copyright protection is not available for names, titles or short phrases. The copyright laws of the United States are contained in Title 17 of the United States Code. Protection is not available for catchwords, catchphrases, mottoes, slogans or short advertising phrases. Due to the limited amount of content contained in phrases, the Copyright Office holds that they cannot be protected because they do not meet the minimum amount of authorship requirement.
. . .
Phrases
Although phrases cannot be protected through copyright law, they can be protected through trademark law as long as they serve to identify the origin of a particular good or service. Trademark law serves as a way of maintaining fair competition by limiting who can use particular names, titles or phrases in order to describe their goods or services. Examples of phrases that are protected by trademark law include, “Where’s the beef?” and, “Like a good neighbor, State Farm is there.” Federal trademark law is contained in the Lanham Act.
Trademark Registration
Trademark law provides that phrases can be protected as long as they are not already registered or in use, they are used to identify a particular good or service and they are not overly generic. Trademark law states that generic phrases cannot be used as the United States Patent and Trademark Office does not wish to provide a monopoly over phrases that are commonly used by the public.
——————-
His claim fails on the test that the phrase does not clearly identify his “particular” service or product, but in fact, as one aphorism among many in a list he pushes, it appears to be just one that may appear on his goods and services sold at his “museum”. . . which, when presented as a larger philosophical list, may be copyrightable, but as individual aphorism when taken out of context as a separate item, it is not individually copyrightable and most likely not TradeMarkable as it does not distinguish anything remarkable about his brand.
“common law owner of a trademark”?
Dude’s delusional. You don’t own a trademark unless you register it with the patent office.
-jcr
Randolph:
You’re an Internet fanboy hack so I’ll go slow.
A trademark filed with a national trademark office like the USPTO is a FORMALITY. Nobody is required to file a trademark in this manner to be deemed the owner of the thing in question.
If a person or business can demonstrate first use, then they have a strong position. The next thing is to show confusion in the marketplace. That the owner of the mark is suffering damages in commerce because of the unauthorized use of his mark. Or, that a person or company is profiting from his mark without him participating in that.
I find it hard to believe Apple’s ad agency didn’t rip it off. I guess they thought the guy wouldn’t do anything. That after running a sweep on the USPTO and not finding anything.
djds
Thanks for the technical update (a summing it is accurate)
My guess is that Mr de la Vega might need to show that it has not been used earlier? Perhaps not. Windows has been used for years and I am sure people said “It’s the real thing” long before Coke got their hands onto it.
I would not be so sure that Apple ripped it from him. While a fine thought, “You are more powerful than you think” is not a particularly original idea.
“You’re an Internet fanboy hack so I’ll go slow.”
Yeah, being snotty like that totally convinces me of your imaginary legal credentials.
-jcr
No, it’s not a “formality” if you want your Trademark” to have any legal enforceability. Having filed for TradeMarks, and registered business names, it is not just something you leave to chance. Ignoring that “formality” has the potential to get your business sued out of business if you use a TradeMark that is already in use. Ask Apple about iPhone. . . and how much it cost them in China for iPad. They are in the process now of nailing down iPhone TradeMark in Brazil… and there was an issue with it in Spain just last year.
It is especially important if you want monetary damages. Also, TradeMarks are generally associated with industries… For example, MacDonalds can TradeMark the BigMac that name for fast-food restaurants but can not reserve the TradeMark a truck manufacturer from using it on a truck as a BigMack (they tried). Nor could they prevent Apple from producing TradeMark Mac computers.
I thought it was “a mind is a terrible thing to taste??” — oh well, back to my brain salad surgery.
It’s,”A mime is a terrible think to taste”.
Oh my, a reference to one of my fav albums. ELP
If MDN is implying that this kid wasted his abilities, I agree. However, that does not mean he lacks the right to protect his intellectual property. Apple, as great as the slogan is, needs to either stop, change the ad, or pay up.
That’s what happens when you don’t do your research, Cupertino …
How do you research something that isn’t a “Registered” trademark. I’m no attorney, but “Common” trademark sounds to me like there’s nothing legally registered, so how is Apple (or anyone else) supposed to know?
Even if he has validity, his “claim” sounds fairly confined to use in and around NYC, so any settlement would be tiny (in Apple’s eyes).
You should do your own research before posting as Derek has done above.
I believe i have used those words before as well.
Should i sue apple?
Unless the dude is selling smartphones or other electronics with his slogan, I really don’t think he has much of a case.
Hell, Apple can’t even protect their user interface designs built upon millions of lines of code. This guy thinks the court system will protect his seven common words strung together that aren’t really even all that profound? Good luck to you, sir.
The slogan is Public Domain, because it is not registered!
And what research must Apple’s Legal team do, when the slogan is chalked on the streets and not published as a registered trade mark? I suppose he could call it a novel… But then it’s so few words. It has to be a TM.
“Purple is the new blue.” I just used it, you can’t, it’s mine under common law. Sorry, I don’t think it will stand.
I recall my Mum telling me the same thing back in the 70s in Ontario. She’s a pensioner now. Maybe De La Vega would like to help her out.
So if I take a well known and well used combination of words, do a bit of graffiti with it claim a common law copyright, I can expect payment from anyone else who thereafter uses said phrase. I see a business here.
I’ve never heard of him or his business which means he is a trivial whiner who is greedy and deserves nothing especially payment from Apple unless he has a patent on his slogan, whatever.
I’ve said a lot of things too. Apple should pay me for saying things along with Google, Microsoft, Oracle, Samsung, ………..
LOL!
Keep your day job dude because I think the Apple lawyers are going to laugh in your FACE!
Chalked his slogans onto sidewalks?!?!?
Well, that’s different. 😉
If anything, he’ll benefit from the added attention.
“Garbarini’s letter says De La Vega wants to avoid a lawsuit by negotiating a settlement.”
Follow the money.
That’s all we need to know about this ‘artist’.
If this bloke, who I’ve never heard of, chalks and paints this slogan on public places, without officially registering it, then I’m pretty sure it’s in the public domain, and he hasn’t a leg to stand on.
It’s possible I’ve read, or heard, this slogan, but I’m in the UK, where he has no presence, so if I started using it, and actually registered it, what would he do then?
I think Apple should give him something, as a kind gesture, not to cave to his demands. 🙂
That “kind gesture” may not be the kind he is looking for.
Coolfactor, if Apple gives him something, as a kind of gesture, there will be thousands in aline after him, claiming ownership of every word, combination of words, sentence and paragraph in every word ever uttered, published, or printed by Steve Jobs, Apple, Tim Cook, or any one ever employed by Apple. . . all hoping for a similar sympathetic gesture from Apple. No, he needs to be squashed like a bug.
I have ben saying “Hello. How are you?” for decades. If you say it, you own me $10,000.
AOL TradeMarked “You’ve Got Mail!” but I said that to numerous people in my past. Do you think I could sue AOL???
A quick look at uspto.gov suggests that unless he used TM or SM in his slogan he has no case as he wasn’t asserting to anyone that he was using the slogan as a mark. Further, a quick search of TESS shows a dead (2002) record by a sports promoter of a whole host of quips that used some of those words, but none used the same sequence nor context. USPTO FAQ says that you basically have to show that someone’s use of your mark has harmed your business, something this fellow hasn’t (at least the article didn’t go there, it went with his contention that he was starting a movement!).
He’s going to have to show that Apple has somehow slowed the sale of De Vega phones and tablets. . .
In my experience, if someone purporting to own a trademark has shown no effort over time to protect that trademark, then they cannot simply decide now that a big enough fish has made it worth filing a law suit. De la Vega is going to need to show many cease and desist letters sent over time to the various other users of that phrase. I note Derek Currie’s list above.
As prior posts have suggested: Apple should have done their homework before allowing that sentence/slogan in their ad. This diminishes their ad’s worth and not compensating the artist now would purchase them negative press. Basically, anytime hereon Apple would care to air this ad, to a lot of folks this would bring forth a scoff or a negative vibe.
First of all, even if there weren’t a controversy associated with using this tag line: “You are more powerful than you think”, I would still not use it. On a subway wall, this would sound empowering, seemingly unassociated with any materialistic goal. As an ad slogan, this is at best corny. Immediately, this places Apple as someone who knows better than the audience. It’s carries a downright patronising connotation.
Secondly, so what is the message Apple is conveying with that line? Here, buy our products and you’ll be more powerful than you deemed possible. That is just corny and sad, worthy of Samsung and Android champs. It saddens me that good taste seems to be lacking from the top in Apple with Steve’s untimely demise. I would have hoped it lasted longer than it did.
Sad really.
You obviously know nothing about advertising. An ad sells aspirations. . . and what better aspiration can there be than to be more powerful. This is an excellent ad.
It speaks to the visceral desires of people to be creative, to change to world around them. It’s very tasteful.