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Answers to your troubling and tricky legal questions.

Don't Mess with Texas

Who owns a copyright, the first person to file, or the first person to use it?

By Eva-Marie Boyd (October 18, 2004)

(Note: Eva-Marie has been a practicing attorney for approximately 15 years. During that time she has been President of the Orange County Barristers, President of her law school alumni association, served on the Orange County Bar Association Board of Directors for seven years and as chair of the Orange County Bar Association Legal Referral Committee for three years. She was a panel attorney for California Lawyer for the Arts and has lectured for that organization on copyright issues.)

Q. Can the State of Texas prevent others from using the slogan, "Don't Mess With Texas," on clothing?

A. In my opinion, not without a struggle.

The Texas Department of Transportation began using "Don't Mess with Texas" on highway anti- litter signs in 1986, but did not file a trademark for the name until 2000.

Subsequently, they filed and received the right to use the slogan for paper goods and decorative magnets.

Texas also filed an application for clothing in the year 2000 which has yet to be granted, for you see there is a slight hitch: Richard Tucker, a seller of Western-theme clothing in South Carolina, filed an application for that phrase in 1993 and it was granted in 1995.

The State is sending "cease and desist" letters in an attempt to stop "illegal" users of the phrase.

In an article in the Los Angeles Times, one legal expert went on record to say that "it is absurd to try to control it now. The State of Texas cannot be surprised or alarmed that people are using this phrase for something other than litter control. The Highway Department is running against the tide of culture."

Legal experts in Texas think they are on solid footing because the anti-litter campaign was launched before Tucker applied for the clothing application. Their argument is based on the theory, that the state has superior rights to the verbiage, basing their argument on the proposition that it is not the first to file but the first to use.

This may be true, but it requires a legal showing of common law rights. The Trademark Office apparently agrees, since the Texas application for clothing filed in 2000 still had not been granted by the end of 2004.

In the meantime Texas officials are defending the crackdown that has made the agency look like a bully to some. The officials commented that they have received emails from some saying they should "get over themselves."

Time will tell.

(Note: Have any questions regarding copyrights, trademarks, or other business-related legal issues? Your name will not be used. Mail, fax, or email your questions to Eva-Marie Boyd, 1160 Catalina St., Laguna Beach, CA 92651 fax: 949-497-3148; email lawddaw@aol.com. To read previous Legal Q. & A. columns, click on the titles in the right-hand column.)

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