Saturday, May 25, 2024

Connect with us:

Lan-Oak Park District threatens legal action against Lansing Journal

legal action
The Lansing Journal’s Clock Tower t-shirt features a stylized photo of the Lansing Clock Tower. The shirt is available for purchase in The Lansing Journal’s Teepublic.com shop.

LANSING, Ill. (January 8, 2024) – The stylized rendering of an iconic Lansing landmark on a T-shirt being sold by The Lansing Journal has led to a dispute with the Lan-Oak Park District, which has threatened to pursue legal action against the news organization.

The image of the Lansing clock tower appears on a shirt being sold in the Journal’s online shop to raise funds for its news coverage.

Objection

On Sept. 16, Sharon Desjardins, senior superintendent of strategy and operations for the park district emailed Journal publisher Melanie Jongsma and managing editor Josh Bootsma objecting to use of the clock tower image.

legal action
The Certificate of Renewal for Lan-Oak Park District’s registered servicemark includes this image and reads in part, “Application has been made…for renewal of SERVICEMARK registration number 104789, which is described as follows: ‘PARK PLAZA – WITH LOGO – WORDS APPEAR ON 4 CLOCK FACES OF BILLARD (sic) GREEN CLOCK TOWER’ registered on November 21, 2012, a specimen or facsimile of which mark, as currently used, is attached hereto.”

“Currently the Lan-Oak Park District owns a Servicemark/Trademark for the clock tower image,” Desjardins wrote. “I have no messages from The Lansing Journal requesting use of the clock tower image for profit. In the past, the park district has granted permission to use the image to two organizations, neither of which is associated with or related to The Lansing Journal.

“I am happy to investigate your use of the image with the Board of Commissioners and legal counsel and will be in touch.”

Confusion

Desjardins emailed Jongsma and Bootsma again three days later, on Sept. 19, saying the park district’s board discussed the clock tower issue at a meeting, was “disappointed” by the lack of a response to the initial email and by the continued use of the clock tower image “for profit.” Desjardins added that board members instructed her to contact the district’s legal counsel.

Jongsma emailed Desjardins and Michelle Havran, Lan-Oak’s director of parks and maintenance on Sept. 22, saying the Journal was looking into the park district’s concerns but “we don’t think our merchandise creates any brand confusion.”

Jongsma also asked for a copy of the park district’s certificate of registration for the trademark, as well as evidence of its use.

Desjardins responded via email the same day, saying Jongsma “seem[s] to be confused” about the distinction between a brand and a trademark and adding, “Our legal counsel will be in touch.”

A week later, on Sept. 29, Desjardins emailed a copy of the district’s certificate of registration but said “the Lan-Oak Park District is under no legal obligation to post anything relating to its trademark/servicemark on its website and is not legally required to always use the mark on all park district related materials.”

Expense

Desjardins added that the park district “regrets that the Lansing Journal has chosen to financially profit from a legal trademark/servicemark owned by the park district” and “[i]t is very unfortunate that The Lansing Journal has responded with disrespect when notified of the violation and has forced the park district to expend taxpayer dollars in defense of the trademark/servicemark.”

Harm

More than a month later, on Nov. 8, Andrew Paine, a lawyer for the park district, sent a cease-and-desist notice to the Journal.

“Please be advised your misappropriation and unlawful use of the logo will irreparably harm the Park District and will not be tolerated,” Paine wrote, adding that “this misappropriation and unlawful use is a violation of federal and state law … .”

Evidence

The Journal reached out to Lawyers for Reporters, an organization that provides pro bono legal services for local news organizations. Chicago-based lawyer Andrew Schapiro agreed to represent the Journal and responded to Paine’s cease-and-desist letter on Nov. 22.

Schapiro wrote: “Having reviewed your client’s concerns and investigated the matter thoroughly, we find no merit to any of the allegations contained therein.”

He said while Paine “assert[s] that the Park District has ‘actively used for many years’ a clock tower logo promotionally, we have found no evidence to support this assertion. Indeed, we have struggled to find even a single depiction of the clock tower in any commercial context. Accordingly, any clock tower servicemark has long been abandoned.”

“Additionally, you will not be able to show any likelihood of confusion,” Schapiro wrote. He cited the contrast between the park district’s “true-colored photographic depiction of the clock tower including the cyclist sculpture positioned directly in front of the tower …” and the Journal’s “non-photographic composite illustrations including stylized renderings of the clock tower alongside other iconography and text associated with Lansing.”

Schapiro also wrote that the Journal did not intend to create any confusion between its illustration and any park district mark, and “there is no evidence of actual confusion.”

He also notes: “The Park District already has twice refused to demonstrate to The Lansing Journal any use of a clock tower mark or logo.”

Defense

In an interview on Dec. 19, Schapiro reiterated the Journal’s stance that the items in its online store are unlikely to be confused with anything related to the park district.

“I don’t understand what the park district is trying to accomplish,” Schapiro said. “Their trademark is not in danger from anything The Lansing Journal is doing. Nobody benefits from litigation, (but) of course we’re happy to defend the Journal in court if necessary.

“Our hope is the park district will think better of this.”

Infringement

On the same day, James Borscia, another park district lawyer, responded to Schapiro’s Nov. 22 letter.

“The Journal has infringed and continues to infringe on our client’s Mark,” Borscia wrote, adding, “Our client in fact can establish all of the necessary elements for infringement.”

Borscia went on to dispute Schapiro’s assertions that the park district has abandoned the trademark and that the park district will be unable to show the likelihood of confusion between the two depictions of the clock tower.

Borschia added that the question of the Journal’s intent is not relevant and that “actual confusion is not required to establish trademark infringement.”

He closed by repeating the cease-and-desist demand and demanding “an accounting of the revenues (the Journal) has generated from its infringement. If (the Journal) refuses to do so, my client will proceed with litigation to protect its rights.”

Comment

Neither Desjardins, Paine, nor Lan-Oak Park Board president Robert Tropp responded to a request for comment for this story.

Jongsma, the Journal publisher, said in a statement, “The Lan-Oak Park District does a lot of good work in our community, and we’ve always enjoyed sharing those stories. … So I’m confused about the Park Board’s decision to threaten legal action [against] The Lansing Journal. It doesn’t make sense, and it’s counterproductive.

“Still, we plan to stay focused on our core business of providing local news, and we’ll continue to include the parks as we always have.”

About the Park Board

The Lan-Oak Park District Board is elected to provide leadership in the park district mission “to enhance the quality of life for all Lansing residents….” The board typically meets on the third Monday of each month, and per the Open Meetings Act they publish an agenda to notify the public of items that are up for discussion and decision. The Board convenes its Committee of the Whole meeting prior to its regular board meeting. The first meeting starts at 6:30 p.m. at the Eisenhower Community & Fitness Center in Lansing, located at 2550 178th Street. All residents are welcome to attend meetings of the Park District Board of Commissioners.

Related

Mike Clark
Mike Clarkhttps://muckrack.com/mike-clark
Mike Clark is a veteran journalist who has been covering sports in the Chicago area and beyond, from preps to pros, for more than four decades.

8 COMMENTS

  1. Such a sad set of affairs!
    The park district appears to be acting out of selfishness instead of coming to the table to discuss it first and offer some sort of common ground. I feel that in the end they are helping the journal’s cause by their actions and hurting themselves. The Journal approaches all of their “NEWS” and attitudes out of “Unselfishness” and unbias. I see a situation where they (The Journal) proudly highlights an item that people may recognize in this community. Really, Lansing Park District, where is the harm to the community? The Park District Thank you Journal! even this story shows how strong a reporting agency they are. Stand strong Lansing Journal, The People of the community appreciate you!.

  2. Typical response from the Park District. They have had internal issues for years. That should be the story looked into. Just bought two Lansing Journal original clocktower shirts!

  3. Who believes the statement that use of the logo by the Lansing Journal will “irreparably harm the Park District” This would be a joke if it wasn’t so sad and petty on the part of the Park District. The Lansing Journal does more to promote the Park District and it’s events than any other entity. Very disappointing.

  4. Why not just use a different image? I don’t believe it would hurt the profits made by the Lansing Journal. Publishing this story will definitely help the Lansing Journal sale more shirts. This is the main argument. Hopefully, the Lansing Journal will let the Park District respond as well, because we’re only hearing from one party.

  5. One would think that the Park District would find better things to do with it (the people’s) time and money…

  6. This is the most absurd thing I have ever read. We are a community. Unfortunately, I’m not remotely shocked by this response from the Park District and Desjardins…..so petty as usual. In my opinion, they should be more than happy to at least come to an agreement for the Lansing Journal to use this image. It seems using the image “For Profit” is the main issue sssoooooo the Park District is mad the Journal is using the image in hopes of selling shirts worn by the community, maybe by their family and friends, to keep our community paper up and running which most likely includes advertising of events or stories written for/about the Park District that is also part of the same community?!?! I’m clearly missing something here because for me community looks out for community. I am curious to hear from the Park District on how the use of this clock tower image (trademarked or not) escalated so quickly into a legal matter against The Lansing Journal. Melanie, Josh and staff thanks for what you do and continue to do!

  7. What a monumental waste of time and money. Kind of like the skatepark. The Lansing Park District should be better stewards of precious tax payer dollars. The only people who profit are the lawyers. Melanie and her team provide more free publicity to the Park District and Lansing than the sale of a few T-Shirts. Truly cutting off their nose to spite their face. Grow up people.

  8. Just a reminder about The Lansing Journal’s comment policy, which is linked above the comment field: We will rarely allow anonymity in comments. Our comment form requests people to submit a name and email because we believe real conversation requires real names. Of the five commenters who have not included a name, only one has provided a legitimate reason, and we granted the request to remain anonymous. “I don’t want people to know I’m the one saying this” is not a legitimate reason. Real conversation requires real names.

    One other reminder: “We expect thoughtfulness and respect from all contributors. We accept disagreement, but not personal attacks.”

    Whatever your opinion about this topic or the parties involved, let’s keep the discourse civil. Thank you.

Comments are closed.