What do Baltimore City, the National Park Service, and the State of Michigan have in common in 2017? Each began the year fighting with commercial entities in federal court and in the U.S. Patent and Trademark Office (PTO) over trademarks, registered or to be registered. In Baltimore, the fight goes on.
LIGHT CITY Baltimore
On March 31, 2017, Baltimore City will stage its second LIGHT CITY festival with large-scale light art works, live performances, music, illuminated sculptures and projections, food, virtual reality experiences, and more. These attractions will be centered around the Inner Harbor and extend out to eight Baltimore neighborhoods. For a modest fee, you can attend six daytime innovation conference tracks featuring prominent authors, scientists, and entrepreneurs.
The 2016 light festival was the first large-scale light festival held in the United States. It drew about 400,000 people, and more are expected to attend LIGHT CITY Baltimore in 2017.
There is a backstory, however. The City is litigating in federal court and in PTO with two Baltimoreans who created and persistently advocated for a light festival in Baltimore. The issue is who owns the websites, social media accounts, and four LIGHT CITY trademarks, including these two prominent marks:
The federal court litigation will not interfere with the 2017 festival. Instead, it is likely that another successful LIGHT CITY festival will up the stakes in the litigation.
The Allens Create the Light City Concept
Brooke Allen and Justin Allen (the Allens) do creative marketing in Baltimore and have been since 2009. Brooke Allen named her agency What Works Studio (WWS). For years, the Allens envisioned a light festival for Baltimore such as the Vivid Sydney festival in Australia.
In 2013 the Allens came up with the name “Light City.” They incorporated Light City, LLC as part of their plan for a light festival. They published a descriptive brochure, produced a Light City video, and purchased a now-parked website (lightcity.us). They solicited investors and sponsors including BG&E which eventually became a major financial sponsor of the first Light City festival. Nevertheless, by the end of 2013, the Allens and WWS needed more to produce a light festival.
So the Allens reached out to Baltimore City. In March 2014, they discussed their Light City vision with Bill Gilmore of the Baltimore Office of Promotion & the Arts (BOPA). Throughout 2014, the Allens had many discussions with Gilmore seeking City support. The Allens say Gilmore eventually agreed that BOPA would be a production partner and “fiduciary” agent or sponsor of the festival. Baltimore Festival of the Arts (BFAI), another city-controlled corporation, became involved, and the Mayor and City Council gave both corporations the “go-ahead.”
Who Owns What?
Factual disputes abound about what was said during 2014. The City alleges that the Allens were told during meetings in 2014 that the City would organize and promote the festival only if the City corporations controlled everything and owned all trademarks and service marks associated with the festival. The City claims that the Allens agreed to these conditions to the City’s involvement.
The Allens flatly deny these allegations. The Allens contend they entered a “marriage” or “partnership” with the City. They rely on minutes of a December 14 meeting stating that the Allens are the founders of the Light City Festival and the owners of the Light City domain names. The City’s role was to be limited to serving as the fiduciary agent. The Allens allege that the consensus was that the Light City festival was developed by private citizens and that the Allens owned the intellectual property.
The Mayor and City Council approved plans for a light festival in Baltimore. BFAI began negotiating contracts and gathering funds. BFAI and BOPA spent taxpayer money as well, about $3.8 million in 2016. WWS submitted to BFAI a proposal for the development of logos, brand identity, and websites for the Light City Baltimore festival. In the “Ownership” section, WWS acknowledged that the “. . . trademarks and service marks are and shall remain the sole property” of BOPA and BFAI, the city-controlled corporations.
In April 2015, Brooke Allen created and designed LIGHTCITYU, a trademark for the innovation conferences, ticketed events that produce revenue. Another contract resulted in July 2015, this time between WWS and BFAI in which WWS agreed to develop conference events for the 2016 festival. This contract gave the Allens “the right to negotiate for an ownership stake” in LIGHTCITYU. The City, however, alleges that the Allens gave up their right to negotiate in return for receiving all the benefits of a $250,000 level sponsor of the 2016 festival. The Allens deny these allegations.
The Allens also claim the City took control of websites and social media accounts relating to the LIGHT CITY festival that they established on Twitter, Facebook, and Instagram. The City claims the opposite, i.e., that the social media accounts are owned by the City and that the Allens took control of and denied the City access to the accounts.
LIGHT CITY Baltimore 2016 was a success. Even though the festival lost approximately $400,000.00, it brought substantial economic and other benefits to the City. The Allens admit they were paid $170,000 by BFAI/BOPA for work related to the 2016 festival, but they claim more is owed.
There is no dispute that by the end of 2015, the prominence of Allens and WWS in the management and production of the festival had been diminished. After the 2016 festival, the City eliminated the involvement of the Allens in the LIGHT CITY program altogether. BOPA brought the revenue-producing innovation conference bookings in house. WWS was removed as a BFIA board member.
The City Applies for Trademark Registrations at the PTO
Several weeks before the 2016 festival, BFAI filed four applications to register the LIGHT CITY trademarks. The marks are the two shown above plus a standard character word mark on LIGHT CITY and a LIGHTCITYU with color mark. Each application seeks registration for International Class 41 services (providing entertainment and cultural activities). The City claims it first used the marks “at least as early as” February 26, 2015 – and after the Gilmore signed the WWS proposal and more than a year before the 2016 festival. As required in trademarks applications, the City declared that no other person had the right to use the mark in commerce.
Three of the trademark applications are stalled. The PTO Examiner will not approve the applications until the City disclaims the word “light’ in the marks. The City has contested this requirement. The fourth application, for the LIGHTCITYU mark, was approved by the Examiner for publication in the Official Gazette, a routine step in the application process designed to provide public notice and permit filing of any opposition to registration. The Allens filed a formal Notice of Opposition on the grounds that, inter alia, (1) BFIA is not rightful owner of the LIGHTCITYU mark and (2) the sworn application supporting the application constitutes fraud on the PTO.
See You in Court!
On October 19, 2016, the City, BFAI, and BOPA sued the Allens in federal court in Baltimore. The Allens answered and counterclaimed against the City. Each side seeks a declaration by the Court that it owns all the LIGHT CITY trademarks, an injunction prohibiting use of the trademarks by the other party, the return of all social media accounts, and a judgment for damages, costs, and attorney’s fees. Judge Hollander is handling the case.
The case has moved slowly to date. The Allens did not try to shut down the 2017 festival, and no party is actively pressing for an injunction. No deposition testimony has been taken; no document production and exchange has occurred. The parties appear to be putting off costly litigation until after a scheduled settlement conference on April 14 before a Magistrate Judge.
The City has, however, filed a Motion to Dismiss the Allens’ counterclaim that could possibly knock out or limit the Allens’ claims. The Allens filed a vigorous Opposition brief. The Motion is pending, and no hearing has been scheduled.
The City has a strong legal case based on the signed contracts. The Allens have a strong equity case based on their creative and entrepreneurial efforts. Yet, if there is to be a voluntary resolution, the best guides may be on policy levels rather than on the nuts and bolts of trademark law. The lawsuit sets up an all-or-nothing result on ownership, but it doesn’t have to be that way.
There would be no LIGHT CITY Baltimore without (1) the Allens’ creativity and persistence, and (2) the financial, municipal, and logistical resources of the City. That the City has totally removed the Allens from all ownership and all operations in LIGHT CITY Baltimore is disappointing, and seems unfair to the Allens. That the Allens expect to totally own all the IP associated with LIGHT CITY Baltimore is unrealistic, and would be unfair to the City.
For the City, why not embrace and maintain commercial relationships with the creative entrepreneurs in the City, rather than take over and force them out? For the Allens, why not signal your desire for shared accommodations that provides the City primacy and control on LIGHT CITY Baltimore and that provides the Allens with the ability to realize entrepreneurial benefits from the IP they created. Shared accommodations can be facilitated through licensing and royalty arrangements.
After the upcoming festival, the brightest light ahead may be the April 14 settlement conference.
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