If you’re a Central Coast trademark lawyer, it’s not long before someone asks you about the Lone Cypress.
The Lone Cypress is an iconic tree that stands on top of a granite outcropping in Pebble Beach, between Pacific Grove and Carmel-by-the-Sea. It’s a Monterey cypress, endemic to just a few native groves in Carmel, Pebble Beach and Point Lobos (though now cultivated internationally).
The Lone Cypress sits on land owned, like most of the gated Pebble Beach community, by the Pebble Beach Company, purveyor of golf resort services and assorted luxury bric-a-brac. Pebble Beach Co. long ago adopted the tree as a symbol, and in 1990 it registered an image of the Lone Cypress as a trademark for various services. In the years thereafter, the corporation’s aggressive IP enforcement practices attracted considerable attention, including articles in the New York Times and Monterey County Weekly, and earned it a fair degree of local infamy.
What particularly caught the public's imagination was the Pebble Beach Company's repeated threats of litigation against artists who merely sold artwork depicting the Lone Cypress. This led many to conclude that the company was asserting more than just the exclusive right to use its Lone Cypress logo as a trademark for its golf and hospitality services. To critics, it looked very much like the company was asserting exclusive rights to the tree itself.
And, indeed, statements by Pebble Beach Co. seem to demonstrate a staggeringly broad conception of its legal rights. In 1999, its lawyer framed the issue this way: "People couldn’t go and reproduce the copies of Clint Eastwood [photographs] and sell it. He’s a living person. There’s no difference between a living person and a living tree." Moreover, to this day, a sign is posted beside the Lone Cypress that reads “Photographs or art renderings of the Lone Cypress for commercial or promotional purposes cannot be taken or rendered without written permission from Pebble Beach Company.”
This is nonsense.
Pebble Beach Co.’s tree trademark is probably perfectly valid. Debates about whether someone can own a “trademark in a living entity” are beside the point. It is irrelevant whether a trademark depicts something organic or inorganic, naturally occurring or manmade.
But a trademark is not an infinite or free-standing right to control depiction of an object. A trademark is a designation of origin used commercially in connection with goods or services. A trademark by definition can only be infringed by another trademark and only to the extent that the two marks are likely to cause consumer confusion.
Pebble Beach Co.’s trademark case against an artist selling Lone Cypress artworks would therefore rest on the dubious theory that consumers are inclined to mistake the subject of a picture for its vendor or sponsor. That’s a proposition that will ring false to anyone who’s ever seen a painting of a Campbell’s soup can in an art gallery or bought a postcard featuring a photo of Wrigley Field. Consumers likely understand that a picture of a tree is not necessarily affiliated with the company who happens to use that same tree as its logo, just like they understand that not every painting of revolutionary agitator Samuel Adams was created by the Boston brewery.
The distinction here is between use of an image as a trademark and use of an image as a feature of or ornamentation on the product itself. It’s a common strategy for businesses to use trademark law as a back door to monopolize images that they can’t protect through copyright. But it’s equally common for the USPTO to reject such marks as “merely ornamental,” that is, because consumers will regard them as part of the product design, not as designations of origin.
Meanwhile, the Clint Eastwood analogy made by Pebble Beach Co.’s counsel is breathtakingly misleading. It conflates right of publicity—a state-law privacy right—with trademark. Trees, to state the obvious, do not possess a right of publicity.
In the intervening decades, the company has still never filed a lawsuit attempting to vindicate its expansive claims with respect to the Lone Cypress (at least as far as we could tell) and many of its 1990 registrations for cypress images were abandoned in 2016 for failure to renew. Yet, it has never publicly retracted its extreme legal position, as attested by its ham-fisted notice to tourists.
Below is our own artistic rendering of the famous tree. To be clear: we received absolutely no written permission from Pebble Beach Company to make or distribute this image, and we fully intend to use it for both commercial and promotional purposes.