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City of Portland officials are employing a creative legal maneuver to get rid of a lawsuit concerning its trademark of the "Portland Oregon" sign.
And the move is likely to work, says the attorney for the Portland business owner who brought the suit in June.
The upshot? The larger question that the suit posed will remain unanswered, at least for now: Does the city of Portland have a right to make even small-time artists pay license fees for commercial use of the "Portland Oregon" sign?
Jeff Kunkle, owner of Vintage Roadside, a Portland company that sells gifts and memorabilia, argued in his June court filing that the city's trademark for the "Portland Oregon" sign is invalid because it rests on a misinterpretation of trademark law. The sign, his attorney argued, does not promote goods or services, therefore it can't be trademarked.
Kunkle brought the suit after a deputy city attorney contacted him on Etsy in May, telling him that he needed to purchase a city license to sell images of the old "Made in Oregon" sign.
The deputy city attorney, Kalei Taylor, told Kunkle that the city owned the rights to the "Portland Oregon" sign and the previous iteration of the sign, the one that promoted the "Made in Oregon" store.
Last week, the city told Kunkle's attorney, Robert Swider, that it was filing a covenant not to sue, which basically means that the city still believes the city owns the rights to the sign but won't try to enforce them against Kunkle—now or ever.
Why the sudden act of generosity? There appear to be two reasons.
By eliminating that point of contention, the city takes away Kunkle's standing to bring the lawsuit.
"The city, in its infinite wisdom, has found the out," says Swider. "In all likelihood we will end up dismissing the lawsuit."
Jen Clodius, a spokeswoman for the city's Office of Management and Finance, which oversees the sign, also says the city got new advice from its outside attorneys on trademark issues. The attorneys advised the city that artistic renderings of the sign may not violate the trademark, she says.
The city's move doesn't protect it from a separate lawsuit by a new plaintiff, Swider says.
"It's one way to avoid one plaintiff and to defer a decision on the bigger issue," he says.
WWeek 2015