In City of New York v. Blue Rage Inc, a mom-and-pop clothing store was sued for trademark violations by the City of New York. The Cop Shop, located in Massapequa, Long Island, is the culmination of former transit policeman Salvatore Piccolo’s dream to serve the law enforcement community even in retirement. In addition to providing regulation uniforms, the shop sells clothing, mugs, and key chains bearing the insignia and logos of the NYPD, FDNY, and other city agencies.
In March of 2014, Salvatore’s wife and business partner, Susan Piccolo, received a letter from the City notifying her that The Cop Shop was selling items that infringed on various trademarks owned by the City of New York. In a telephone call in January of 2016, Susan discussed the sale of the products with an attorney from the City, and she pledged that such products had been removed.
In June of 2016, undercover shoppers from the City’s licensing agency took photographs of numerous infringing items in The Cop Shop. Then again in May of 2017, more of the same was observed — and a month later the City filed suit, alleging federal and state trademark infringement, among many other claims.
The defendants initially argued that trademarks used by governmental agencies belong to everyone. Not so. Federal trademark registrations and enforcement are available to a City agency, which can charge substantial licensing fees that eventually pay for public benefits. That doesn’t mean the trademarks are in the public domain.
At the heart of the defense was a pair of dubious “permissions” that then-Mayor Rudolph Giuliani, as well as then-Chief of Police William Bratton, allegedly granted to the defendants:
- Giuliani implicitly granted permission to use the marks by not objecting to the merchandise at an event where it was offered for sale.
- Bratton gave Susan Piccolo written permission to use the NYPD marks — but, critically, the reply in which he allegedly granted the permission was “lost.”
The court dispensed with the first argument in one sentence, finding “the Mayor’s purported failure to disapprove of Defendants’ conduct is not tantamount to permission to use the City’s marks.” As for the allegation that Chief Bratton approved the use of the mark, Bratton himself provided an affidavit noting, among other things, that he did not have the authority to so consent. Indeed, the court noted that neither Giuliani nor Bratton was “…vested with the authority to grant permission.” The court also noted that defendants failed to oppose the summary judgment motion’s attack on all of their other defenses and counterclaims.
Not surprisingly, the court granted summary judgment to the plaintiff on everything — except the federal trademark dilution claim, because that requires a showing of fame for any logo or trademark that has been reportedly diluted. The court said that was a question of fact, which would necessitate discovery and a trial. (I would guess the City would amend its complaint to delete the dilution claim — why keep fighting for one remaining claim when you’ve won as to all the others?). The amount of damages was deferred to a later time.
In this case, the defendants exhibited poor judgment over and over again. They cited alleged authorizations that were informal to the degree of being absurd. They told a hostile, government attorney that they stopped selling the offending merchandise — and continued to sell it anyway. They didn’t consider that plainclothes investigators would inevitably come back to confirm whether they were lying. They inexplicably abandoned their counterclaims. The whole story, as reflected in the court’s decision at least, shows at best a lack of sophistication and disregard of reality — what’s commonly called magical thinking.
Takeaway: Stay true to your word if you agree to stop engaging in trademark infringement. The investigators will be back, and their employers will be vengeful — and indifference will not shield you from their wrath.
