7 Trademark and Patent Law
Agnes Gambill West
Constitutional and Statutory Law
Constitutional and Statutory Law
U.S. Const., Art. I, § 8, cl. 8. The Congress shall have Power * * * To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.
Lanham (Trademark) Act, Pub. L. 79–489, 60 Stat. 427, July 5, 1946, codified at 15 U.S.C. § 1051 et seq.
Patent Act of 1952, Pub. L. 82–593, 66 Stat. 792, July 19, 1952, codified at 35 U.S.C. § 1 et seq.
Leahy-Smith America Invents Act (AIA), Pub. L. 112–29, 125 Stat. 284, September 16, 2011
Case Law
The Museum of Modern Art v. MOMACHA IP LLC and MOMACHA OP LLC, 339 F. Supp. 3d 361 (SDNY 2018)
OPINION & INJUNCTION
LOUIS L. STANTON, U.S.D.J.
Plaintiff The Museum of Modern Art (“Museum”) moves under Rule 65(a) of the Federal Rules of Civil Procedure for an order preliminarily enjoining Defendants MOMACHA IP LLC and MOMACHA OP LLC (collectively “MOMACHA”) from using, displaying, or promoting the MOMA or MOMACHA marks, and the https://momacha.com/ domain name, during the pendency of this action. MOMACHA opposes the motion on the grounds that MoMA has not shown a likelihood of success on the merits of its claims or a likelihood of irreparable harm in the absence of an injunction, and that the balance of hardships tilts in MOMACHA’s favor. For the reasons that follow, the motion is granted.
BACKGROUND
The Museum of Modern Art (“Museum”) was founded in 1929. It is located in New York City. The Museum has an art collection of approximately 200,000 works of modern and contemporary art, including paintings, sculptures, drawings, prints, photographs, media and performance art works, architecture, and films. It sustains a library, a conservation laboratory, and archives that are recognized as international centers of research. The Museum has published more than 2,500 titles, and participates in numerous book fairs each year, including the London Book Fair, Bologna Book Fair, and the Frankfurt Book Fair.
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The Museum has been generally known by its acronym, MOMA, for nearly 50 years. That name appears on the Museum’s building, banners, signs, brochures, merchandise, promotional materials, and website. In the mid-1980s, the Museum transitioned its name and logo from “MOMA” to “MoMA,” with a lowercase “o” between the two capitalized “M”s. The Museum’s current logo is shown below:
The mark is used both horizontally and vertically, such as on the front of the Museum’s building, as shown below:
The logo uses a proprietary font called “MoMA Gothic,” which was developed exclusively for MoMA in 2003 based on the ITC Franklin Gothic font. Id. The logo has received significant press coverage, including in the New York Times.
The Museum has used the MoMA logo in virtually all of its communications with the public, press, artists, and sponsors, since 1967. … The Museum owns the registered trademark for “MOMA” for a variety