By Erin Sherbert
By Howard Cole
By Erin Sherbert
By Erin Sherbert
By Leif Haven
By Erin Sherbert
By Chris Roberts
By Kate Conger
Nate Tan may give you a lift. But not if there are 367,000 of you every weekday. That's a job for BART, and BART and Tan are not the sort of entities you'd mistake for one another.
The former is a 41-year-old transit agency with a $1.5 billion yearly budget and the Bay Area's most ill-advised carpeting. The latter is the San Francisco artist and designer behind New Skool, which creates hip attire and paraphernalia emblazoned with intensely local imagery.
So, last year, the artist was taken aback when he received a cease-and-desist letter from a private attorney retained by the transit agency charging him with "unfair competition."
At issue was a T-shirt featuring a large image resembling a BART ticket. Tan altered the familiar — and trademarked — "BA" logo, however, to read "Bay Area." And the monetary values on the left of the image would never grace a real ticket: 925, 707, 650, 510, 415, 408. These are, however, all the Bay's area codes.
One last giveaway that this isn't a genuine BART ticket comes from the vertical text: "All Aboard! Destination: Planet Rock. Get Your Ticket!!!" Very rarely do you see a single exclamation point, let alone three, on literature generated by transit agencies.
And yet, Tan says he did what most people do upon receiving a sharply worded cease-and-desist letter from an attorney representing a company with a nine-digit budget: He ceased and desisted. He emphasized that he didn't want any trouble and still doesn't: "I have a family. I have kids." He didn't seek media attention; your humble narrator contacted him after learning of this situation elsewhere.
Half a dozen legal experts confirmed Tan's move was the right one for anyone unwilling to spend hundreds of thousands of dollars on attorney's fees, win or lose. BART is apparently well within its intellectual property rights in calling out a small designer as a source of "unfair competition" which is "diluting" its brand. In fact, BART and other "trademark owners have a duty to enforce their marks," notes attorney Milord Keshishian, "to make sure consumers are not confused and misled."
But even legal scholars who conceded that BART is on solid legal ground lamented the evolution of trademark law to the point where this is so. Tan's ticket T-shirt gains us entry to a bewildering place indeed.
Trademark law makes up for being an arcane realm by featuring a bounty of hilarious lawsuits. There isn't just one Barbie doll case, but scads of them — relating to artwork and songs, if not dream houses. "Mattel is very aggressive," explains attorney Jed Wakefield, whose firm, Fenwick & West, represented the Burlingame Museum of Pez pro bono in a trademark suit brought by Pez, Inc. A case brought by seminal boy band New Kids on the Block, charging newspapers running polls gauging the group's popularity with trademark infringement, reached the Ninth Circuit Court of Appeals (the panel of federal judges ruled NKOTB did not have the right stuff). A company hawking doggie toy purses called "Chewy Vuiton" spent years and a fortune staving off Louis Vuitton's legal slings and arrows.
In the realm of transit, New York City's Metropolitan Transit Authority — which, unlike BART, licenses clothing and tchotchkes — scours the Internet for targets with Anthony Weiner-like fervor. In 2009, a San Francisco man named Joseph Moore who hawks shirts critiquing Muni rail lines ("N-one," "L-ate," "T-ardy") received a jaw-dropping communique from an NYC MTA attorney. Essentially, it stated New York's transit agency owns the trademark for letters within colored circles — a claim on par with the solitary joke that holds up from Austin Powers, about a man making "outrageous claims, like he invented the question mark."
At first blush, the notion of Tan and BART as competing business interests seems equally outrageous. But it's just an extension of trademark law's sensible origins. Imagine you're headed to the store to buy some General Electric light bulbs, says USC law professor Dan Klerman. But, instead, you're hoodwinked by a cheapo company called "Generalissimo Echo" with its own stylized GE logo. Now that's unfair competition; consumer confusion is at the heart of trademark law.
Consumers may well assume Tan's T-shirts depict an actual BART ticket, and deduce BART authorized it. Klerman acknowledges this — and feels BART is on the right side of the law. But he adds a corollary: So what?
"Who thinks this shirt will get them on the train for free? Who thinks that if the quality of this T-shirt is bad, BART is a lousy train system because they make bad shirts?" he asks. "This should not be illegal. There is no harm to BART, and no harm to consumers. This is trademark law gone overboard."
BART did not by press time respond to a public records request for its cease-and-desist demands since 2010. Our request for BART to explain the notion of "unfair competition" and "dilution" in the context of a T-shirt was also unanswered. But, again, the law is clear. If consumers might be confused regarding the provenance of the product, attorneys can begin charging billable hours.
Some BART-riding attorneys, however, are confused about why an agency weighed down by the stigma of trigger-happy cops and a toxic labor stalemate would lash out at those adopting its symbols as happy emblems of Bay Area pride and nostalgia. "As a manager, I'd be applauding someone willing to make and buy a shirt with a BART ticket on it," says Ben Depoorter, a professor at UC Hastings (and a daily BART commuter from Daly City to Civic Center). "I'm surprised there's a market for this, with everything that's been going on recently. ... [But] BART has bought into the very aggressive culture of trademark law." This, Depoorter notes, "is within BART's prerogative."
Of course, so was putting carpets in those trains.