It all started a little while before New Year’s Day. My brother-in-law is in the screen-printing industry, and he decided to try and pick up a little extra money by making and selling t-shirts at the Pasadena Tournament of Roses Parade®. He had somebody do a design for him, but it looked bad and was a blatant violation of trademark, so I did a new design for him. I told him that he had to avoid trademark infringement; he couldn’t use the words “Rose Bowl®,” “Tournament of Roses®,” or either of the team names. He had to use generic wording to avoid trademark infringement. We came up with a very nice design that said “2002 Pasadena Rose Parade” with an illustration of a rose, based on an old woodcut design. He’s done all the paperwork, got the seller’s permit and the Peddler’s license (two different things), and everything is on the up-and-up.
What follows is a blow-by-blow account of the whole adventure in the Downtown Oz that is American jurisprudence. So you can see what I’m talking about, the first design is the Official Tournament of Roses® logo*; the second one is my t-shirt design.
*NOTE: This logo is a registered trademark of the Tournament of Roses Association, and is used here without permission for journalistic purposes only. Its appearance here in no way indicates association with or endorsement by the Pasadena Tournament of Roses. The logo on the right is my personal creation and is © 2002 by James MacQuarrie. Fat lot of good that does me.
Jan. 1, 2002: New Year’s in jail
Well, that was a treat. My family and I kept our New Year’s tradition: we stayed up all night watching movies. The last movie ended at about 6:15 this morning, and we crawled off to bed. At least that was the plan. Along about the time I got to the upstairs bathroom, my bride’s brother was heading out to the Rose Parade to sell his t-shirts. He’s been staying with us while getting his finances back in order after a long bout of unemployment. The night before, he was out walking the parade route, selling shirts, and he found a seller’s permit that somebody had lost. These cost $60 each, and there wasn’t much chance of finding the owner, and the office that issues them was closed. It seemed a shame to let it go to waste. So I’m feeling marginally awake, and I offer to go with him to help sell the shirts.
We putter on down, park the car, and hit the street with duffel bags full of t-shirts, heading off in opposite directions. Within five minutes, I sell a shirt. Within another ten minutes, I’m in police custody. Turns out that as of 1994 “Rose Parade” is now a registered trademark. Never mind that there are at least 10 other “Rose Parades” across this great land of ours, not to mention products ranging from rock bands to salt shakers, all completely unaffiliated with the Pasadena Tournament of Roses®.
In any case, I got picked up. They have a representative of the licensing agency ride around with undercover officers. When they see a vendor, they look at the merchandise, pretending to be customers. If they determine that it’s an infrigement, they make an arrest. In this case, I was charged with violation of California Penal Code Section 350, Possession and/or Sale of Counterfeit Merchandise. My “crime” falls more properly under the Business and Professions Code Section 14320, which is civil law. The Penal Code statute covers willfull, knowing and deliberate manufacture of counterfeit merchandise with intent to defraud, the latter covers trademark infringement. But they want to play hardball. They apparently want to make an example of me.
The undercover police officers who stopped me were pleasant enough as they took me to my pickup truck, seized all the shirts (along with the duffel bags they were in), and $23 in my pocket, only $10 of which was from selling t-shirts. Then they handcuffed me, left me standing on the street for 15 minutes while one of the officers chatted with a friend who wandered by so that I could really enjoy the humiliation of standing on a public street in handcuffs. Eventually they drove me to the police station and took me through the entire booking process before writing me a citation and tossing me out the door to walk back to my car. The whole process took about two hours.
The odd part is, I cooperated with them in every way possible, was pleasant and obedient, and they even got a laugh out of the “get out of jail free” card I keep in my wallet. Still, they hauled me in and subjected me to the whole show–fingerprints, mugshot, the works. My wife’s brother was also picked up. He was pretty uncooperative, yet they wrote him his ticket on the street and left him there to enjoy the parade while I sat in a holding tank watching drunks sleep it off in the next cell. Go figure.
After I get home, my snotnose kid (the oldest, the one I get to throw out in three years) starts making jokes about me being a jailbird. She keeps playing the soundtrack to “O Brother Where Art Thou?” and skipping ahead to “He’s in the Jailhouse now.” Cute kid. Anybody want to adopt?
A brief examination of trademark law.
In some ways, a trademark is almost the opposite of a copyright. Copyrights are enforced for a limited period of time, but while in force, they protect the work from any and all uses, except for the few provisions set forth as “fair use” (journalistic, parodic, educational, etc.) In contrast, trademarks are enforced by use. The more well-known a mark is, the more protected it is. However, a trademark is only protected within the scope of the “trade” which it represents. For example, “Apple” is a trademark of the Apple Computer company, but it is also the trademark of the Apple Record company, and the two do not infringe upon each other. (Interesting aside: there was a concern that such a conflict would occur when they added music-making and recording abilities to the Apple computers, i.e. MIDI. That’s why one of the system sounds is called “Sosumi.” It’s a challenge to Apple Records: “So sue me.”) Of course, if “Apple” someday became a synonym for computers in general, they would lose their trademark. Xerox has been fighting like hell to keep theirs. They put out ads explaining that “Xerox is not a verb.”
There are two symbols used to identify a trademark in the US: “TM” and “R” inside a circle. “TM” is functionally meaningless; it’s a bluff to scare off the unknowing. The circle-R is the real deal, it means they have received federal registration and acknowledgement of their mark. Of course, one can still challenge the validity of the mark, if it can be demonstrated that the mark has, through usage and non-enforcement, become a synonym for a class of goods or services, or if the mark was obtained by fraud.
Now, megalithic corporations like Disney that slap their trademarks on every available surface are another story. Mickey Mouse is both the product and its trademark, so he’s covered under both trademark and copyright law. On the other hand, MAD’s Alfred E. Neuman has been in the public domain for over 150 years, and yet became a trademark in the late 1950s, a hundred years after he first appeared. He remains a trademark to this day.
Thank God for the Internet
On January 2, I e-mailed some reporters with the local paper, my city councilman and somebody from the Rose Parade committee about it. That afternoon I was interviewed and photographed by the paper for a story.
Jan. 3, 2002 EXTRA! EXTRA! Read all about it!
I’m in the paper. I made page 3. The reporter did a good job, exactly what I was hoping for. I was worried that he would make me sound belligerent or combative, but he didn’t. I used my favorite quote from the interview: “they’re killing sparrows with a bazooka.”
Several hours of searching the web for information about trademark law as it applies to my case has yielded a good defense. It looks like they have no basis for the criminal charges that were filed, but could press a civil suit if they want to, and the burden of proof is much higher for them in that case, so it’s very doubtful that they could get much of anything in the way of damages. They also would have to show that they sought to halt the infringement (a “cease and desist” notice), which they didn’t do. And if it comes to a civil suit, I can argue quite convincingly that “Rose Parade” is not enforceable as a trademark. At least nine other cities in the US (there’s also one in the Balkans, go figure) have Rose Parades, and the phrase is used generically in reference to all of them. There are “Rose Parades” in Santa Rosa CA (since 1894), Portland OR (1907), Tyler TX (1933), Thomasville GA, Newark NY, Jackson MI, Tombstone AZ (home of the world’s largest rose bush), Roseville MN, Maplewood NY, and Valley of the Roses in Karlovo, Balkan Republic. In addition to all that, the Los Angeles Rose Society, which is headquartered a few miles north of Pasadena, publishes a newsletter called The Rose Parade.
So where does that leave us? Under the penal code violation that I was cited for, they have to prove (a) criminal intent to defraud and (b) that my shirt was counterfeit merchandise. I will argue that this is a simple case of alleged trademark infringement, which is a civil matter, not criminal. If there’s any justice in the world, the case will be dismissed, preferably before it gets to court at all. If it goes to civil court, they have to prove that (a) I willfully and deliberately violated their trademark and (b) that they attempted to halt the infringement. They can’t support either claim. On the other hand, I can argue that the trademark isn’t any more enforceable than the trademarks for “aspirin” and “nylon,” and I therefore didn’t infringe on anything. It’s nice to be so clearly right, especially when dealing with somebody so clearly abusive.
Just to be on the safe side, I spoke to an attorney. He’s not “my” attorney; if I could afford an attorney, I wouldn’t be hustling t-shirts on a street-corner at 7 am, now would I? At any rate, this fellow has considerable experience in both criminal law and trademark defense law, so he’s fully qualified to handle the case, and he says it may only cost a couple of grand, and that I’ll probably get off with a small fine. I have a suspicion that the lawyer was trying to scare me into seeing how much I need him to represent me. Of course, I have no intention of paying a couple of thousand dollars to avoid a fine that most likely would be a couple of hundred.
I had an idea. I could exploit another Pasadena institution, the famous Doo Dah Parade. If you’re not familiar with it, where the heck have you been? The Doo Dah Parade is an “anything goes” celebration of irreverence, created to mock the other Pasadena parade. It was born in a pub about 25 years ago, the product of inebriated minds. The parade is open to anybody who signs up. Previous marchers have included a precision lawnmower drill team, the Dull Men’s Club (guys in gray suits with leaf-blowers), a drum and bagel corps, drum and beagle corps, a mob of paparazzi (they attack people in the crowd and subject them to the celebrity experience), and various crossdressing would-be prom queens. It’s everything the Rose Parade® isn’t. My idea is to put together a group this year, the Torment of Roses™ goon squad. We’ll have a dozen or so guys, wearing the traditional white suits, with rose logo armbands and knee-high boots, goose-stepping down the parade route and beating up t-shirt vendors.
Feb. 1, 2002: Here come de judge
My arraignment day. I go before the judge, which involves waiting for an hour or so for him to weed through the drunks and hookers to get to the ordinary criminals. While I’m waiting, I try to talk to the prosecutor about the case, but she’s not having any. She’s going to trial. I fill out the form to get a public defender, but it’s no go. I don’t qualify. I own an house and have a 401k; if I want a lawyer, I have to come up with the money myself. No matter what happens, I’m going to be out some money.
I enter a plea of “not guilty” and the judge sets a date, March 26. He makes a remark about needing a jury, but I tell him I don’t need a jury trial; I’m willing to have the case decided by him. (Face it: do you want your fate in the hands of a dozen people too stupid to get out of jury duty?)
Feb. 20, 2002: My brother-in-law’s keeper
My brother-in-law has to enter a plea today. He qualifies for a public defender, so we meet in the hall with him and I explain the case and the things I’ve found out about trademark law. This fella spends his days negotiating plea bargains for crack whores; he doesn’t know much about trademark law. After a few minutes of conversation, he agrees that there’s a basis to fight it. That’s good news, since a public defender’s job is simply to get cases off the calendar as quickly as possible. If he thinks fighting it is more expedient than copping a plea, we must be in pretty good shape.
A few minutes later, he’s up in the front of the courtroom with all the other attorneys, discussing the case, and I hear a couple of them saying “isn’t that a civil case?” and “sounds like a civil matter to me.” I’m feeling good now.
The plan is to have the brother-in-law’s case put off for a while so the P.D. can seek to have it dismissed. Then, whatever papers he files for that, I’ll duplicate and file for my case. The case is set for March 26, my trial date.
March 26, 2002: The showdown
I’ve spent the last few weeks, researching the law, sending e-mails to lawyer friends, lawyer friends-of-friends, law students and innocent bystanders. I’ve immersed myself in law websites. A couple of people have offered helpful insights, and some of them, when run through a Google search, turn up some interesting leads.
Here’s the biggie: I finally found a working definition for the difference between trademark infringement and counterfeit goods. The key is in which trademark is misused, and for what purpose. “Counterfeit goods” is the term used when a trademark is improperly used to misrepresent the manufacturer or source of a product. I read that a bunch of times, and the implications never set in.
Finally, I found a “Fundamentals of Trademark” site that contained this sentence: “The print on the front of a t-shirt is ‘ornamentation.’ the trademark is the name on the tag.” BOOM! Lightning strikes! Suddenly my eyes are opened. I’ve been charged under the wrong law.
My t-shirts were not fake Rose Parade® t-shirts; they were genuine Hanes shirts with a Rose Parade design!
My brother-in-law’s case is supposed to come up at 8:30, and mine is at 1:30. I ask the P.D. what he’s going to do, and he tells me that the judge is on vacation, so he’s going to get a continuance for my brother-in-law. Then he’ll just watch my trial and take notes. If I get off, he’ll use my arguments in his trial. Terrific.
He then recommends that I go up to the law library and look up the jury instructions for this kind of case, while he gets my brother-in-law’s case put off until May.
In the law library, it’s not going so well at first. The jury instructions don’t exist. Turns out there is no case law on the books for Penal Code 350. But once I figure out how to find things in West’s Annotated Case Law, it goes very well. I find a number of precedents. By the time I go downstairs, I’m loaded for bear. I have all the facts and citations to utterly demolish the prosecutor.
I take my seat in the courtroom at 1:30 when the doors open after lunch break. The substitute judge has been dragged into another courtroom, and we have to wait.
Eventually, the city prosecutor calls me out to the hallway to discuss my case. You’d be surprised at how much of the American legal system’s business is actually conducted in the halls outside courtrooms. That must be why they call it the Halls of Justice. The prosecutor lets me know in no uncertain terms that he’s going for the conviction. The city wants to prosecute these cases, and she’s going to nail me. She’s a bit nasty about it.
I begin explaining what the law says, and about the precedents I’ve found. I tell her that if it comes to that, I’m ready and willing to go into civil court and have the trademark completely overturned. I enjoy watching her go pale as the facts begin to sink in. She changes tacks and tells me that I “didn’t go through channels.” I didn’t have a valid seller’s permit. I shrug and tell her that’s irrelevant; I wasn’t charged with that, I’m facing a counterfeiting charge.
When next I see her, she’s got a law book in hand, and she’s talking to her boss. Then she’s talking to the guy from the licensing agency who’s flown in from Atlanta for the trial. Very shortly, she’s back to offer me a deal. She’s not nearly so nasty. She suddenly wants to make a deal. She wants it very badly.
She tells me they’ve decided to add a second charge, the seller’s permit thing. If I plead to that, they’ll dismiss the other charge. Pleading guilty to the municipal code violation will result in the following punishment: one year of probation and the day in jail that I already served. On top of that, the court tacks on a $100 assessment for the “Victims of Crime” fund. Ironically, a few years ago, I actually got money from that fund when I was nailed by a hit-and-run driver. I got about $100. So we’re even. I take the deal.
She remarks that she’s just a paid employee and does what she’s told. I mention that it would have been nice if we could have made this deal back on February 1 and avoided all this wasted time. She sounds a little surprised, asking if in fact nobody offered such a settlement. I look her in the eye and say, “no, YOU didn’t. I tried to talk to you about the case, but you didn’t want to hear anything about it.” She looks a bit embarrassed and hustles back into the courtroom. Hee!
Now we have to wait for the judge to show up so we can finish this up. Looking around the courtroom, I’m stunned by how many people are dressed so completely wrong. Here’s a tip: if you’re on trial for gang-related activities, don’t show up at court in your gang costume. I’m sitting in a room full of young males wearing beanies and gigantic jackets, pants with the crotch at knee-level, looking like extras from an NYPD Blue episode. Maybe it’s me, but I would think the judge isn’t going to be very sympathetic toward somebody who looks exactly like the stereotype of a criminal.
We sit in the courtroom for about an hour and a half. The prosecutor, public defender, court reporter and bailiff are all laughing and joking, talking about the movies they saw recently. The court reporter thinks Denzel is good, but nobody does it for her like Robert DeNiro, MMM-Hmmm. Across the aisle from me is a woman who was supposed to be in court this morning on a drinking-related charge, but didn’t show up, so there’s been a warrant issued for her. She’s with an arrogant jerk who’s trying to look like a lawyer. After a little while, they get up and walk to the front of the courtroom. Arrogant Jerk says “we have to get going; are we gonna see a judge today or what?” The courtroom goes silent and all heads turn to look at him. At that point, the woman blurts out “yeah, what is this, a social club? Where’s the judge?”
The bailiff, a tough-looking little African-American woman, steps up to them and says “you wanna leave, go ahead and leave; we’ll just come and pick you up and you can sit here in handcuffs. We got a warrant out on you, so you best just sit back down and be humble!” Tip: If there’s a bench warrant out on you, don’t smart off to the bailiff.
The court staff then amuses themselves for a considerable while by doing impressions of these two. Suddenly a voice cuts through the laughter. “Hello? Hello! Is Duane there?” Again the courtroom goes silent, and all heads turn. Another woman, a pal of the first one, who’s also here on a drunk charge, is shouting into a cell phone. She looks up and sees everybody in the place staring at her incredulously. “What? I figured if y’all was going to be talking, I could too.” The bailiff tells her that the court staff can laugh and be noisy; the defendants can’t. She has to put away the phone or leave the room.
She takes the phone out into the hall, and the court staff has great fun at her expense while she’s out there. Tip: When in court, shut up. Even if the judge isn’t there.
Finally they find somebody who can put on a black robe and fill a chair. The judge takes her seat and works quickly through the dirtbags ahead of me, and finally, at 3:45, I step in front of the judge, she accepts the deal, and I’m free to go. Total time: 3 minutes.
Part of my probation is that I have to stay away from the next Rose Parade®. Too bad. I was thinking about selling “Torment of Roses” shirts.
Here’s the design:
I like the big thorns myself.
UPDATE: Here’s the rest of the story.