By Jeff Pietsch
Last week, the Second Circuit affirmed a summary judgment against an advertising consultant in a suit against American Express. The consultant, Stephen Goetz, sued American Express for misappropriation and trademark infringement for the slogan “My Life, My Card” that Goetz claimed to have introduced to American Express. The court affirmed the summary judgment stating that Goetz never actually used the slogan in commerce. Since Goetz never used the slogan in commerce, he had no trademark rights in the mark.
In the summer of 2004, Goetz worked as a consultant for Mez Design. While at Mez Design, Goetz formulated an idea to allow credit card customers to personalize their credit cards by choosing a photograph to be displayed on the face of the card. Goetz then developed software to produce these cards with the idea of selling or licensing the software to credit card companies. After developing the software, Goetz mailed proposals to large credit card companies, including American Express. In these proposals, Goetz prominently displayed the slogan “My Life, My Card.” On July 30, 2004, Goetz mailed a proposal to American Express.
In addition to sending out these proposals, Goetz created an internet-based demonstration of his concept. The website also prominently displayed the slogan “My Life, My Card.” On September 7, 2004, Goetz registered the domain name www.mylife-mycard.com, and he also filed an application to register his trademark with the United States Patent and Trademark Office. Although American Express never expressed interest in the concept, MasterCard replied to his proposals. MasterCard viewed Goetz website which included the slogan “My Life, My Card.”
During this same time period, American Express was searching for a new global advertising campaign. They hired an agency which was brought in to develop the new campaign. On July 22, 2004, a week before Goetz sent his proposal, the agency proposed the slogan “My Life. My Card.” to American Express. American Express pursued the idea and asked the agency’s counsel to conduct a full trademark search on the slogan. This trademark search did not produce any results that referenced Goetz. American Express proceeded with the campaign, and on September 1, 2004 they registered the domain name www.mylifemycard.com. On September 15, they filed an intent to use application for the trademark “My Life. My Card.” A few months later, the global campaign featuring numerous celebrities was launched on television, print and internet ads.
Shortly after American Express’s campaign began, Goetz filed an action claiming that American Express infringed his trademark rights. The court in that case dismissed Goetz’ claims because Goetz had no protectable trademark rights in the slogan because he did not use the mark in commerce. Goetz also did not dispute the fact that American Express independently developed the slogan. Goetz appealed the ruling to the Second Circuit and argued that he was the first to use the mark in commerce based on his sales proposals to several credit card companies. This included his presentation to MasterCard. Goetz argued that since he used the slogan in commerce before American Express, he is the senior user of the mark.
After hearing these arguments, the Second Circuit affirmed the previous ruling. The court held that under the Lanham Act, a trademark or service mark is “any combination of words, names, symbols or devices that are used to identify and distinguish goods or services and to indicate their source.” On the other hand, copyright law protects the content of the creative work. A trademark identifies the source of the product and does not protect the creative content of the product. For example, a title of a song or movie may be a trademark, but the content of the song or movie is not. The court noted that an advertising agency that creates a slogan does not have a trademark in that slogan. The slogan is the agency’s creative work and does not usually identify the source of goods and services of that agency. The slogan, however, can become a trademark for the company that uses the agency’s slogan on their goods. Until the slogan is used by the company in commerce, it will not become a trademark.
Goetz, however, claims that his slogan was used in commerce by Mez Design where Goetz was employed. The court disagreed. The court stated that “My Card, My Life” slogan did not distinguish the goods of the advertising agency. It is merely the creative work of the agency. The court examined the facts of the case and found that Goetz never used the slogan in commerce to sell his agency. Rather, he used the content of the slogan as part of an overall campaign to sell the credit card company’s products. The court found that the slogan never referenced the agency nor Goetz himself. In fact, each letter contained the Mex Design logo. This logo identified the source of the services of the agency. The slogan was merely the creative work of the agency, and was used to entice credit card companies to use his services.
Because Goetz never used the slogan in commerce as a trademark, Goetz had no protection from trademark laws. The slogan was the creative work of Goetz and did not identify his services. Goetz could pursue his claims under copyright law, but since he did not argue against the fact that both slogans were created independently, he would not be able to show such infringement.