Hands Off That Tree!
Pebble Beach Co. tells artists they can't sell their pictures of the Lone Cypress. What gives them the right?
Thursday, January 14, 1999
A poem lovely as a tree.
Poems are made by fools like me,
But only God can make a tree."
--Joyce Kilmer, "Trees"
One Saturday afternoon in the summer of 1997, Carmel artist Paxton Mobley drove out to 17 Mile Drive to sketch the Lone Cypress Tree. The City of Monterey had invited him to mount a solo show at the Monterey Conference Center, and he felt a painting of the Lone Cypress would perfectly capture the show''s theme, "Dreaming of Monterey."
"My painting showed a cypress tree used as a table, with a brandy glass on top of it," Mobley says. "I called it ''Happy Hour at the Lone Cypress.'' I did it as a parody. I had no idea there was a problem."
But alas, there was a problem. It seems that the Pebble Beach Co., which owns the Lone Cypress, and all the land around it, and which has registered the tree as its trademark, doesn''t take kindly to folks using its tree for commercial purposes. A sign at the top of the stairs leading down to the tree reads, "Photographs or art renderings of the Lone Cypress for commercial or promotional purposes cannot be taken or created without written permission from Pebble Beach Company."
Meanwhile, Mobley liked his Lone Cypress painting so much, he had postcards of it printed up and sent out as invitations to his show. A week before his Aug. 1 opening, he got a call from Neal Hotelling, director of corporate affairs for Pebble Beach Co. "He told me I was in trademark infringement," Mobley says. "I had to sign away my rights to use the painting, or face a lawsuit."
Mobley was stumped. "This was a week before the show. I had to sit down and think, do I want to fight a lawsuit? With Pebble Beach Company?" The answer was no. "My lawyer was ready to fight it, but I decided I didn''t have the money," Mobley says.
In the ensuing days, Mobley and Hotelling spoke several times in what both describe as friendly fashion. Mobley caved in. "I signed a contract saying I''d never use their image of the cypress, or any Pebble Beach logo, again in any work, and I could not use this particular painting again," Mobley says. "I can no longer go onto Pebble Beach property, take pictures of the tree, or paint it. I''ve signed away my rights to any of that."
Although he has no complaints with Hotelling''s personal treatment of him, Mobley is incensed at the terms of the agreement he says he had "no choice" but to sign. "It frustrates me that this is a living entity, a tree, on the Monterey Peninsula, an inspiring image," he says. "And people can''t use it."
That''s right, they can''t--at least as far as the Pebble Beach Co. is concerned. The company is very attached to its Lone Cypress. Images of the tree have appeared on company documents since 1919, and over the years, Hotelling says, the Lone Cypress has become synonymous in people''s minds with Pebble Beach itself. "It''s our signature," he explains.
In May 1990, the company officially registered the Lone Cypress as its trademark. Soon afterwards, the signs restricting commercial artistic renderings of the tree were posted. Today, the company has no problem with folks snapping pictures of the Lone Cypress, and pasting those photos in their scrapbooks. "We welcome it," Hotelling states.
Just don''t try selling those photographs, or you risk the billion-dollar wrath of the Pebble Beach Co. And it''s not just photographs: The restrictions extend to paintings, sketches, and all other artistic renderings of the tree, as well. "An artist can paint the tree and hang it on their wall, but if they sell it, it becomes a problem," Hotelling says. "The rules apply to both photographers and artists."
Pebble Beach Co. takes violations of that restriction very seriously, and expends considerable efforts to enforce it. The company even scours local galleries to see who''s selling unauthorized pictures of the Lone Cypress. "We have 1,500 employees, and they keep their eyes open," Hotelling says. "We search the Web constantly. We have an outside agency that searches, too."
Once an offending artist is found, Hotelling either makes a phone call or sends a letter, informing them they''re in violation of trademark law. He estimates "just a few" new offenses are uncovered each month. "I try to resolve as many situations as I can with a friendly phone call or letter," he says. "We send them a letter to sign, acknowledging that they won''t make any further infringement on our mark. Most people, when you let them know about it, are pretty good about signing."
I bet they are, says attorney Robert Turkell. "What are you going to do, if you''re a little Carmel artist, and Pebble Beach sends their attorneys down to talk to you?" he asks. "How many people can go against a company that has nothing to lose? Even if the court says, this lawsuit against ''Mr. Smith'' is frivolous, and they have to pay court costs and lawyers'' fees, what''s it to them?"
Turkell says the company has "been very aggressive the past two or three years" about enforcing its position. "After ''92, they started sending out people to hawk the Carmel galleries for reproductions of the tree," Turkell says. "In lieu of being sued, artists signed agreements to never paint the tree again."
Enforcement is difficult, Hotelling says. Particularly with the advent of the Internet as a worldwide marketing mechanism, it''s impossible for the company to track down every single artistic reproduction of its tree. And Hotelling says he''s not trying to go overboard. "If somebody has an art piece in a second-hand store, that''s really hard for me to enforce," he says. "As long as it''s not being done on a mass scale, I don''t worry about it.
"We''re not trying to be bullies," Hotelling maintains. "But if we don''t enforce our marks, we''ll lost the right to do it."
Why should they care? Because, Hotelling explains, when people see a picture of the Lone Cypress, it spells "Pebble Beach" to them. "It''s important to us, how we are perceived by the public," he says. "The trademark of a company is its signature. Our concern is that when it''s before the public, it''s in a way we have controlled. So it doesn''t show up in Hustler magazine, for example."
The tree is also, he points out, a revenue source for the company. That scrawny, twisted, 250-year-old cypress tree clinging to a rocky promontory in Carmel Bay brings plenty of tourists to Pebble Beach. They pay the gate fee, they buy T-shirts and souvenirs sporting the Lone Cypress image. That translates into a lot of dough. Artists who sell their own renditions of the tree are cutting into Pebble Beach Co. profits. "We''ve spent hundreds of thousands of dollars maintaining that tree, and we should share in the commercial gain," Hotelling says.
The Pebble Beach Co. restricts artistic reproductions of its tree on two grounds. First, the Lone Cypress is on company-owned land. Turkell explains that when you pay your $7.25 to enter Pebble Beach, you are agreeing to a "limited trespass," thus giving your implied consent to the rules and regulations stipulated by the property''s owner. One of those rules prohibits making commercial or promotional use of the Lone Cypress. "They own that property," Turkell says. "If they place a restriction that you agree to by paying the $7.25, you have to abide by that. It''s like me inviting you into my backyard to see something I own, and I charge you [$7.25]. You can''t make money on it, or I can sue you for infringing on my economic gain."
That covers artistic works created while the artist is standing in front of the tree. But what about art created without trespassing on company property, such as painters sitting at home with an easel, or photographers hanging out of a helicopter hovering 100 feet above the tree? For those cases, says Pebble Beach Co.''s trademark attorney Stephen Trattner, the company stands behind trademark law.
Go ahead and take a photo or paint a picture of the tree, and hang it in your living room, he says. But if you sell it, or use it to promote your business, you''re using something that belongs to Pebble Beach Co. "If the Lone Cypress tree dominates the picture or the photograph, and is clearly the reason people are buying it, then it does serve as a source identifier. And when it serves as a source identifier, as a matter of law it functions as a trademark," Trattner explains. "If that''s the reason for the sale, if that''s what motivates the sale...then it serves as a trademark, and the unauthorized use of that clearly violates the law." And it''s something Pebble Beach Co. takes seriously, Trattner says; "For years, we''ve stopped unauthorized reproductions of the Lone Cypress tree very successfully."
But what is it exactly that Pebble Beach Co. has trademarked? Trattner says they''ve trademarked the living tree itself. Any artistic reproduction or interpretation of the tree would thereby constitute trademark infringement.
Hogwash, says attorney Terry Francke, general counsel for the California First Amendment Coalition in Sacramento. You can''t claim a trademark in a living thing. "A trademark is just that, a mark," he explains. "It''s a symbol, a design made by human beings. It is unique, made by somebody at some given point.
"A tree is not a mark. It''s a plant. It''s not a work of man. It''s missing the whole point of trademark law to think the plant itself is a trademark. It is arrogating to a corporation what only God can do. According to that logic, a company could trademark all images of the sun, the coastline, deserts. It''s just silly. I wouldn''t expect them to get very far in court."
Intellectual property attorney Stephanie Burns, with the Portland, Oregon law offices of Davis, Wright, Tremaine, agrees. What Pebble Beach Co. has rights over is any unauthorized reproduction of the particular image of the Lone Cypress it submitted to the government trademark office in 1989.
"They did not obtain protection for the tree itself," Burns opines. "They obtained protection for their image of the tree."
There are precedents, Trattner maintains, for claiming a trademark in a living entity. The Prudential Company claims a trademark in the Rock of Gibraltar, which it uses as its company logo. Celebrities regularly claim a trademark in their image, which cannot be reproduced without their consent. "People couldn''t go and reproduce the copies of Clint Eastwood [photographs] and sell it," Trattner argues. "He''s a living person. There''s no difference between a living person and a living tree."
"It''s very different," counters Burns. "That''s your own personal likeness, an invasion of privacy claim, where someone misappropriates your likeness for commercial advantage."
Trademark law aside, Francke says, Pebble Beach Co.''s restrictions on artists and photographers could be fought on First Amendment grounds, as a violation of freedom of expression. "If they attempt to enforce this in court, there''s a defense both on First Amendment grounds and regarding trademark law," Francke argues.
"They own the property," Turkell admits readily. "But a man sitting down and painting a picture from memory, anyone who thinks they can transgress on his right to do that would be dead wrong. If you want to paint that tree from a picture, or from memory, you''d get into First Amendment issues."
Francke doesn''t even believe Pebble Beach Co. could prevent photography of the tree on grounds of limited trespass, because, he says, the laws of trespass were set up to protect actual damage to real property. "Trespass is not a part of intellectual property law," he says. "There''s no such thing as intellectual trespass." And even if the company could convince a court that an artist had caused real property damage, "the damages awarded would be trivial," he says.
Burns, who specializes in intellectual property law, believes the company would have a hard time bringing a case of trademark infringement against an artist depicting its tree. The company might have a better case on the basis of trademark dilution, she says, if the company could "prove the artist willfully intended to trade on Pebble Beach''s reputation or to cause dilution of its famous mark," but even then, she says, "normally, the only recovery is an injunction on the artist not to sell it anymore."
A law is only a law until someone challenges it successfully. And the amazing thing about Pebble Beach Company''s restrictions on artistic reproductions of the Lone Cypress is that the company has managed to enforce its claim--a claim that lawyers interviewed here feel would not stand up in court--without a single legal challenge.
The company sues folks all the time for trademark infringement. But those suits deal with commercial reproductions of the Pebble Beach logo, or the Pebble Beach name, or a hole on the Pebble Beach golf course. They deal with man-made reproductions of man-made things.
To date, Trattner and Hotelling agree, Pebble Beach Company has never sued an artist or photographer over pictures of the Lone Cypress.
On the other hand, no artists or photographers have taken Pebble Beach Company to court to challenge its claim. So the claim stands.
Trademark law is a quickly changing field, based on constantly changing case law. "There are new trademark rulings every day," says Hotelling. And when it comes to original paintings of the Lone Cypress, that''s an area where the company isn''t as quick to enforce its claims. "Our position is that this is barred under commercialization of our trademark," Hotelling says. "If an artist does an original oil painting and doesn''t try to commercialize or mass-produce it, I''m not going to be overly concerned about it."
But a court challenge takes courage, political will, and a hell of a lot of money. Paxton Mobley says he would have had to put up $50,000 up front to have a lawyer represent him against Pebble Beach Co. And anything an artist might gain from a court victory--profits realized from the sale of the painting, and perhaps the pleasure of seeing one''s face on the front cover of People--pales before the tremendous financial and professional loss that a court defeat would entail. As Turkell puts it, "$50,000 is nothing to the Pebble Beach Co."
"If you''re a lone artist out there, you''d be taking a big risk," Burns says. "There''s a deterrent effect." And while a First Amendment group might be willing to take such a case on a pro-bono basis, she doesn''t hold out much hope of that happening. "It''s a very political battle," she points out. "Firms may be unwilling to touch it because of that." cw