1675-3 The Tiffany Hotel DATE: Sunday, November 28, 1999 EDITION: Final
SECTION: New Homes PAGE: 4H LENGTH: 58 lines
ILLUSTRATION: photo: The Hotel (a)
SOURCE/CREDIT LINE: By DAVID W. DUNLAP, New York Times Service
DATELINE: NEW YORK
BUILDINGS ASSERT TRADEMARK STATUS
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, and an Internet-oriented venture capital firm called Flatiron
Partners have sought to register an image of the structure as a trademark with
the U.S. 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.
In September, Judge Miriam Goldman Cedarbaum of U.S. 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 Stock Exchange argued that the trademark value of the facade, which is
registered, 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, Flatiron Partners agreed to license the image from Newmark and
withdraw its trademark application.
Flatiron Partners is in 257 Park Ave. 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 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. "
CAPTION: HERALD FILE LOST THE BATTLE: The Tiffany Hotel on Miami Beach is
now known as The Hotel after losing a trademark fight over the name.