Opinion
November 5, 1004
166-B TRADEMARKS
LSA-R.S. 51:211 and LSA-R.S. 51:224
LSA-R.S. 51:224 prohibits the free use images of certain buildings on the LSU campus. Further, we conclude that LSU has the legal right to require a licensing fee for use of images of its buildings that meet the requirements trademark law.
Mr. Steve Hawkland Attorney Supervisor Department of State P.O. Box 94125 Baton Rouge, Louisiana 70804-9125
Dear Mr. Hawkland:
This office is in receipt of your request for an official Attorney General opinion. As I understand your question, you wish to know whether or not the buildings on the Louisiana State University (LSU) campus are public, and if so, may the images of these buildings be subject to a "license?"
A "public building" in the sense anticipated by Paragraph 14(e) of Article 14 of the Constitution of 1921 is a building owned or controlled and held by the public authority for public use. This definition is further explained in 50 Corpus Juris, page 850 et seq., cited in Sharp v. Police Jury of East Baton Rouge, 194 La. 220 [ 193 So. 594] which states a public building is "a building erected and owned by state, county or municipal authorities; a building owned or controlled and held by the public authorities for public use; a building belonging to, or used by, the public for the transaction of public or quasi-public business."
It is our opinion that the majority of the buildings located on the LSU campus are likely public buildings; however, there is no definitive rule with respect to what may be included within the term public building. For example, the Lod Cook Alumni Center, located on the LSU campus, is considered a private building because it was funded by private organizations and citizens. La. Atty. Gen. Op. No. 92-344. Additional factors such as the source of the particular building's funding and the employment status of its employees (whether they are state employees or paid by a private entity) are necessary to determine the status of the building.
In the second part of your request, you ask if images of public buildings on the LSU campus may be "licensed." It is our understanding that LSU's policy concerning campus buildings is that all buildings are trademarks of the university, and LSU requires users of images of its buildings to pay a licensing fee.
Therefore, the licensing question is best addressed under the law of trademarks, not public buildings. In Louisiana, a statutory scheme has been adopted to regulate the use of trade marks and trade names in commerce. LSA-R.S. 51:211(A) defines a trademark as any work, name, symbol, or device or any combination thereof adopted and used by a person to identify goods made. LSA- R.S. 51:224(A) deals specifically with educational institutions in this state. It reads:
No person shall use for any commercial purpose any name, work, symbol, or device or any combination thereof which resembles the official name, symbol, seal, or logo of a public or accredited private educational institution except with the written consent of the public or private educational institution.
It is important to note that the language in this statute is almost identical to that in LSA-R.S. 51:211(A). Although there is no jurisprudence interpreting LSA-R.S. 51:224, there is case law that addresses the use and infringement of trade marks and trade names.
In order to prohibit others from using the trademark of another, it must first be determined whether there is a "protectable proprietary interest" in the mark. Gulf Coast Bank v. Gulf Coast Bank Trust Company, 652 So.2d 1306 (La. 1995). A "protectable proprietary interest" is established first by showing actual use of the mark; however, the mark must also be inherently distinctive or have acquired distinctiveness through secondary meaning. In order to determine distinctiveness, Louisiana courts and federal courts have generally divided trademarks into four categories: (1) generic; (2) descriptive; (3) suggestive; and (4) arbitrary or fanciful. Id at 1313.
For purposes of our analysis today, we will address category number two, descriptive. A descriptive term or mark identifies a characteristic or quality of an article, service or business. Gulf Coast Bank v. Gulf Coast Bank Trust Company, 652 So.2d 1306 (La. 1995). If a term or mark is not inherently distinctive, it is still entitled to protection if the owner can prove "secondary meaning." Secondary meaning exists when substantial usage has resulted in the public coming to identify the name or mark with the goods, services or business it identifies. 46 La. B.J. 392. Once the name or mark becomes distinctive, it is subject to exclusive appropriation, and is fully protectable as a trademark. G ulf Coast Bank v. Gulf Coast Bank Trust Company, 652 So.2d 1306 (La. 1995). Clearly, certain buildings on the LSU campus, such as Tiger Stadium, are inherently distinctive to the university. At the very least, they have acquired secondary meaning. Accordingly, it is our opinion that LSU has a "protectable proprietary interest" in the images of certain campus buildings.
Whether a particular building meets the required standard of distinctiveness is a factual determination best made by a court; however, it is the opinion of this office, that LSA-R.S. 51:224 prohibits the free use images of certain LSU buildings. Further, based on the jurisprudence, we conclude that LSU has the legal right to require a licensing fee for use of images of its buildings that meet the requirements of trademark law.
Very truly yours,
CHARLES C. FOTI, JR. ATTORNEY GENERAL
BY: ________________________ Kristi M. Garcia Assistant Attorney General