NY Street Artist Claims Common Law Trademark on Apple’s ‘Powerful’ Tag

| News

New York City street artist James De La Vega has sent a Cease & Desist (C&D) letter to Apple demanding the company stop using the phrase "You're more powerful than you think" in its advertising without permission from him. Mr. De La Vega has used that phrase in a series of works called "Become Your Dream," and is claiming what is called a common law trademark for the phrase.

James De La Vega

James De Le Vega
Credit: Wikimedia Commons

Apple used the phrase in its Powerful commercial (shown in full below the fold), an ad showing people using their iPhone 5s devices to tune instruments, model amps, mix monitors on stage, play cellos, control stage lightning, play games, film their kids, film a street band, take photographs, measure their heart rate, set off rockets, and teach astronomy.

Powerful

Screenshot of Powerful Ad
Source: Apple

Mr. De La Vega has been using the phrase in series of chalk and other street art intended to be inspirational. His C&D said that Apple's use of the phrase, "clearly misleads customers into believing De La Vega somehow supports, approves and/or endorses its products." He also said that it “contradicts and undermines" his own inspirational message.

"I have a whole series of quotes," Mr. De La Vega told The Daily News, which broke the story. "They’re all intended to inspire, uplift and empower human beings. These guys were well aware of that when they decided to use it as a way to motivate their base to buy their phones."

The artist believes Apple should pay him for use of the phrase, and he said, "Words are weapons. This is my way of building a movement. (Apple) should pay me because I created it and they’ve used it to create national excitement about a product and huge profits for themselves."

Mr. De La Vega also claimed that the phrase is associated with him, and that a company called Quotable Cards Inc. contacted him for permission to use the phrase on a series magnets featuring quotable phrases.

The basis of his claim is common law trademark, which is effectively an unofficial trademark on a word or phrase, even if you haven't filed for federal registration for that mark.

The Business Journal noted that the U.S. Patent and Trademark Office's FAQ on trademarks stipulates that, "Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application."

That means Mr. De La Vega might well have a case.

Apple's full ad:

Comments

BurmaYank

James De La Vega said: ”... (Apple) should pay me because I created it and they’ve used it ...”

If Apple’s lawyers could find a quote of someone saying that phrase before James De La Vega adopted/claimed it (e.g., by someone saying it before he was born), why wouldn’t that destroy his case? Why wouldn’t it be enough just to prove that he was not the first user of that phrase?

Lee Dronick

  Mr. De La Vega also claimed that the phrase is associated with him

First that I ever heard of him. That doesn’t mean he didn’t coin the phrase nor does it mean that he did.

Lee Dronick

Well he has a wikipedea page

http://en.wikipedia.org/wiki/James_De_La_Vega

And a book

http://www.amazon.com/James-De-la-Vega/e/B001JS0NOU

Also when I Binged him I see that he is a bit famous in the New York City area

Ryan Stern

FWIW, Apple was using the slogan “The power to be your best” when Mr. De La Vega was twelve years old.

http://www.youtube.com/watch?v=zVw1As4fcL4

Anthony Triano

I’ve lived in NYC my whole life and never has seen or heard of this guy.  We have ALOT of people who are FAMOUS in their own minds!! I highly doubt this guys claim.

geoduck

I don’t think his claim will stand up
First he may claim Common Law Trademark but I kinda doubt Apple would use the line without protecting it with a real trademark or copywrite or something. A real one would trump a common law one
Second I doubt , anyone could get a copywrite on the line because there’s nothing unique about it. People have been saying and writing this line forever. He may be using the phrase but I seriously doubt anyone could claim to have created it. I could claim a common law trademark on “Happy Birthday” or “what time is it there?” But it wouldn’t stand up.

MacFrogger

Yo Geoduck!  A word from my lawyer:

I am hereby ordering you to cease and desist using the phrase “But it wouldn’t stand up” because I have heretofore used it hereunder, and so forever hereafter you will have to pay me royalties herein.  wink

adamC

“That means Mr. De La Vega might well have a case.”

I have been using using the words mac observer and writing it in many comments so Bryan you be using me in court.

Hilarious…...

Lee Dronick

  Apple’s use of the phrase, “clearly misleads customers into believing De La Vega somehow supports, approves and/or endorses its products.

I really doubt that Apple customers would believe that even if they knew of him.

jhorvatic

Anyone can have a wiki page and write whatever they want. Doesn’t give them the right to accuse or say they own a certain written or oral phrase or sentence. And since he is only known sort of in New York I doubt he has a legal cease order that Apple lawyers have to worry about. I have never heard of him or any of what he does.

mrmwebmax

+

“I have a whole series of quotes,” Mr. De La Vega told The Daily News, which broke the story. “They’re all intended to inspire, uplift and empower human beings. These guys were well aware of that when they decided to use it as a way to motivate their base to buy their phones.”

I love it, just love it: Here he acts like an indignant artist whose sole concern is to inspire, uplift, and empower—not like that greedy Big Corporation which only wants to sell phones. Art Good. Greed Bad!

OK, Apple, now that I’ve established the phrase as my own, send me money.

Terrin

For it to be a trademark, he had to have used the phrase before Apple to identify a product in commerce continuously. Assuming he satisfies that requirement, which I doubt, his trademark would only trump Apple’s in the area he is located (e.g. the section of New York he is in). The federal trademark would trump his everywhere else.

Lee Dronick

Are there not a lot more steps to obtaining a trademark than typing option-g?

zewazir

It’s getting to the point Apple can’t sneeze without someone suing them because they sneezed first.

Price of success, or do patent and trademark laws need a serious revamp?

Lee Dronick

  Price of success, or do patent and trademark laws need a serious revamp

Patent, and copyright certainly do, at least in my opinion (which is not humble).

BurmaYank

I’m betting Apple’s detectives/attorneys have already found, or will soon find, a history of other scams, cons &/- extortions in this guy’s past.

NEALC5

Just google the phrase, and you can find links like this: http://enquirer.com/editions/2002/12/06/tem_bono06.html

Where Bono of U2 used the phrase at a concert in 2002.  It’s such a common phrase, this seems so stupid to claim ownership.

N

BurmaYank

Then again, I can see how he might really have already gotten all he really wanted; the attention, and his face all over the place.

lunchtkts

I found an interesting photo online


http://www.gettyimages.com/detail/news-photo/people-gather-around-to-watch-artist-james-de-la-vega-news-photo/97342815

DELAVEGA was the artist at the launch of the original Microsoft Surface demonstration in 2007. Is it possible that this is where the “endorsement” argument comes from? Maybe DELAVEGA is being sued for breach of contract?

Lee Dronick

Now this sounds and looks like an Apple ad, it even has a lowercase i prefix in the product name.

http://www.adweek.com/news/advertising-branding/ad-day-gus-van-sant-directs-trio-breathtaking-spots-bmw-i8-157664

Log-in to comment