One Saturday afternoon in the summer of 1997, Carmel artist Paxton Mobley drove out to 17 Mile Drive to sketch the Lone Cypress Tree. The City of Monterey had invited him to mount a solo show at the Monterey Conference Center, and he felt a painting of Lone Cypress would perfectly capture the show's theme, "Dreaming of Monterey."
"My painting showed a cypress tree used as a table, with a brandy glass on top of it," Mobley says. "I called it `Happy Hour at the Lone Cypress.' I did it as a parody. I had no idea there was a problem."
But alas, there was a problem. It seems that the Pebble Beach Co., which owns the lone Cypress, and all the land around it, and which has registered the tree as its trademark, doesn't take kindly to folks using its tree for commercial purposes. A sign at the top of the stairs leading down to the tree reads, "Photographs or art renderings of the lone Cypress for commercial or promotion purposes cannot be taken or created without written permission from Pebble Beach Company."
Meanwhile, Mobley liked his Lone Cypress painting so much, he had postcards of it printed up and sent out as invitations to his show. A week before his Aug. 1 opening, he got a call from Neal Hotelling, director of corporate affairs for Pebble Beach Co. "He told me I was in trademark infringement," Mobley says. "I had to sign away my rights to use the painting, or face a lawsuit."
Mobley was stumped. "This was a week before the show. I had to sit down and think, do I want to fight a lawsuit? With Pebble Beach Company?" The answer was no. "My lawyer was ready to fight it, but I decided I didn't have the money," Mobley says.
In the ensuing days, Mobley and Hotelling spoke several times in what both describe as friendly fashion. Mobley caved in. "I signed a contract saying I'd never use their image of the cypress, or any Pebble Beach logo, again in any work, and I could not use this particular painting again," Mobley says. "I can no longer go onto Pebble Beach property, take pictures of the tree, or paint it. I've signed away my rights to any of that."
Although he has no complaints with Hotelling's personal treatment of him, Mobley is incensed at the terms of the agreement he says he had "no choice" but to sign. "It frustrates me that this is a living entity, a tree, on the Monterey Peninsula, an inspiring image," he says. "And people can't use it."
That's right, they can't- at least as far as the Pebble Beach Co. is concerned. The company is very attached to its Lone Cypress. Images of the tree have appeared on company documents since 1919, and over the years, Hotelling says, the Lone Cypress has become synonymous in people's minds with Pebble Beach itself. "It's our signature," he explains.
In May 1990, the company officially registered the Lone Cypress as its trademark. Soon afterwards, the signs restricting commercial artistic renderings of the tree were posted. Today, the company has no problem with folks snapping pictures of the Lone Cypress, and pasting those photos in their scrapbooks. "We welcome it," Hotelling states.
Just don't try selling those photographs, or you risk the billion-dollar wrath of the Pebble Beach Co. And it's not just photographs: The restrictions extend to paintings, sketches, and all other artistic renderings of the tree, as well. "An artist can paint the tree and hang it on their wall, but if they sell it, it becomes a problem," Hotelling says. "The rules apply to both photographers and artists."
Pebble Beach Co. takes violations of that restriction very seriously, and expends considerable efforts to enforce it. The company even scours local galleries to see who's selling unauthorized pictures of the Lone Cypress. "We have 1,500 employees, and they keep their eyes open," Hotelling says. "We search the Web constantly. We have an outside agency that searches, too."
Once an offending artist is found, Hotelling either makes a phone call or sends a letter, informing them they're in violation of trademark law. He estimates "just a few" new offenses are uncovered each month. "I try to resolve as many situations as I can with a friendly phone call or letter," he says. "We send them a letter to sign, acknowledging that they won't make any further infringement on our mark. Most people, when you let them know about it, are pretty good about signing."
I bet they are, says attorney Robert Turkell. "What are you going to do, if you're a little Carmel artist, and Pebble Beach sends their attorneys down to talk to you?" he asks. "How many people can go against a company that has nothing to lose? Even if the court says, this lawsuit against `Mr. Smith' is frivolous, and they have to pay court costs and lawyers' fees, what's it to them?"
Turkell says the company has "been very aggressive the past two or three years" about enforcing its position. "After `92, they started sending out people to hawk the Carmel galleries for reproductions of the tree," Turkell says. "In lieu of being sued, artists signed agreements to never paint the tree again"
Enforcement is difficult, Hotelling says. Particularly with the advent of the Internet as a worldwide marketing mechanism, it's impossible for the company to track down every single artistic reproduction of its tree. And Hotelling says he's not tying to go overboard. "If somebody has an art piece in a second-hand store, that's really hard for me to enforce," he says. "As long as it's not being done on a mass scale, I don't worry about it.
"We're not trying to be bullies," Hotelling maintains. "But if we don't enforce our marks, we'll lost the right to do it."
Why should they care? Because, Hotelling explains, when people see a picture of the Lone Cypress, it spells "Pebble Beach" to them. "It's important to us, how we are perceived by the public," he says. "The trademark of a company is its signature. Our concern is that when it's before the public, it's in a way we have controlled. So it doesn't show up in Hustler magazine, for example."
The tree is also, he points out, a revenue source for the company. That scrawny, twisted, 250-year-old cypress tree clinging to a rocky promontory in Carmel Bay brings plenty of tourists to Pebble Beach. They pay the gate fee, they buy T-shirts and souvenirs sporting the Lone Cypress image. That translates into a lot of dough. Artists who sell their own renditions of the tree are cutting into Pebble Beach Co. profits. "We've spent hundreds of thousands of dollars maintaining that tree, and we should share in the commercial gain," Hotelling says.
The Pebble Beach Co. restricts artistic reproductions of its tree on two grounds. First, the Lone Cypress is on company-owned land. Turkell explains that when you pay your $7.25 to enter Pebble Beach, you are agreeing to a "limited trespass," thus giving your implied consent to the rules and regulations stipulated by the property's owner. One of those rules prohibits making commercial or promotional use of the Lone Cypress. "They own that property," Turkell says. "If they place a restriction that you agree to by paying the $7.25. you have to abide by that, It's like me inviting you into my backyard to see something I own, and I charge you [$7.25]. You can't make money on it, or I can sue you for infringing on my economic gain."
That covers artistic works created while the artist is standing in front of the tree. But what about art created without trespassing on company property, such as painters sitting at home with an easel, or photographers hanging out of a helicopter hovering 100 feet above the tree? For those cases, says Pebble Beach Co.'s trademark attorney Stephen Trattner, the company stands behind trademark law.
Go ahead and take a photo or paint a picture of the tree, and hang it in your living room, he says. But if you sell it, or use it to promote your business, you're using something that belongs to Pebble Beach Co. "If the Lone Cypress tree dominates the picture or the photograph, and is clearly the reason people are buying it, then it does serve as a source identifier. And when it serves as a source identifier, as a matter of law it functions as a trademark," Trattner explains. "If that's the reason for the sale, if that's what motivates the sale...then it serves as a trademark, and the un4uthorized use of that clearly violates the law." And it's something Pebble Beach Co. takes seriously, Trattner says; "For years, we've stopped unauthorized reproductions of the Lone Cypress free very successfully."
But what is it exactly that Pebble Beach Co. has trademarked? Trattner says they've trademarked the living tree itself. Any artistic reproduction or interpretation of the tree would thereby constitute trademark infringement.
Hogwash, says attorney Terry Francke, general counsel for the California First Amendment Coalition in Sacramento. You can't claim a trademark in a living thing. "A trademark is just that, a mark," he explains. "It's a symbol, a design made by human beings. It is unique, made by somebody at some given point.
"A tree is not a mark. It's a plant. It's not a work of man. It's missing the whole point of trademark law to think the plant itself is a trademark. It is arrogating to a corporation what only God can do. According to that logic, a company could trademark all images of the sun, the coastline, deserts. It's just silly. I wouldn't expect them to get very far in court."
Intellectual property attorney Stephanie Bums, with the Portland, Oregon law offices of Davis, Wright, Tremaine, agrees. What Pebble Beach Co. has rights over is any unauthorized reproduction of the particular image of the Lone Cypress it submitted to the government trademark office in 1989.
"They did not obtain protection for the tree itself," Burns opines. "They obtained protection for their image of the tree."
There are precedents, Trattner maintains, for claiming a trademark in a living entity. The Prudential Company claims a trademark in the Rock of Gibraltar, which it uses as its company logo. Celebrities regularly claim a trademark in their image, which cannot be reproduced without their consent. "People couldn't go and reproduce the copies of Clint Eastwood [photographs] and sell it," Trattner argues. "He's a living person. There's no difference between a living person and a living tree."
"It's very different," counters Burns. "That's your own personal likeness, an invasion of privacy claim, where someone misappropriates your likeness for commercial advantage."
Trademark law aside, Franeke says, Pebble Beach Co.'s restrictions on artists and photographers could be fought on First Amendment grounds, as a violation of freedom of expression. "If they attempt to enforce this in court, there's a defense both on First Amendment grounds and regarding trademark law," Franeke argues.
"They own the property," Turkell admits readily. "But a man sitting down and painting a picture from memory, anyone who thinks they can transgress on his right to do that would be dead wrong. If you want to paint that tree from a picture, or from memory, you'd get into First Amendment issues."
Francke doesn't even believe Pebble Beach Co. could prevent photography of the tree on grounds of limited trespass, because, he says, the laws of trespass were set up to protect actual damage to real property. "Trespass is not a part of intellectual property law," he says. "There's no such thing as intellectual trespass." And even if the company could convince a court that an artist had caused real property damage, "the damages awarded would be trivial," he says.
Burns, who specializes in intellectual property law, believes the company would have a hard time bringing a case of trademark infringement against an artist depicting Its tree. The company might have a better case on the basis of trademark dilution, she says, if the company could "prove the artist intended to trade on Pebble Beach's reputation or to cause dilution of its famous mark," but even then, she says, "normally, the only recovery is an injunction on the artist not to sell it anymore."
A law is only a law until someone challenges it successfully. And the amazing thing about Pebble Beach Company's restrictions on artistic reproductions of the Lone Cypress is that the company has managed to enforce its claim- a claim that lawyers interviewed here feel would not stand up in court without a single legal challenge.
The company sues folks all the time for trademark infringement. But those suits deal with commercial reproductions of the Pebble Beach logo, or the Pebble Beach name, or a hole on the Pebble Beach golf course. They deal with man-made reproductions of man-made things.
To date, Trattner and Hotelling agree, Pebble Beach Company has never sued an artist or photographer over pictures of the Lone Cypress.
On the other hand, no artists or photographers have taken Pebble Beach Company to court to challenge its claim. So the claim stands.
Trademark law is a quickly changing field, based on constantly changing case law. "There are new trademark rulings every day," says Hotelling. And when it comes to original paintings of the Lone Cypress, that's an area where the company isn't as quick to enforce its claims. "Our position is that this is barred under commercialization of our trademark," Hotelling says. "If an artist does an original oil painting and doesn't try to commercialize or mass-produce it, I'm not going to be overly concerned about it."
But a court challenge takes courage, political will, and a hell of a lot of money. Paxton Mobley says he would have had to put up $50,000 up front to have a lawyer represent him against Pebble Beach Co. And anything an artist might gain from a court victory- profits realized from the sale of the painting, and perhaps the pleasure of seeing one's face on the front cover of People- pales before the tremendous financial and professional loss that a court defeat would entail. As Turkell puts it, "$50,000 is nothing to the Pebble Beach Co."
"If you're a lone artist out there, you'd be taking a big risk," Bums says. "There's a deterrent effect." And while a First Amendment group might be willing to take such a case on a pro-bono basis, she doesn't hold out much hope of that happening. "It's a very political battle," she points out. "Firms may be unwilling to touch it because of that."
Last year, attorney Robert Turkell say: he walked through "all 108" art galleries in Carmel to see who was selling unauthorized artwork of the Lone Cypress. "I couldn't find a tree anywhere,” he claims. "I'd go in and say my wife wants a picture of the Lone Cypress. They'd say, `we don't even breathe that word around here."'
Turkell's experience was not duplicated by Coast Weekly A check of six galleries in downtown Carmel last month revealed two that were selling original paintings of the Lone Cypress, by painters that are not licensed by Pebble Beach Co.
While local artists and gallery owners seem well aware of the restrictions on taking commercial photographs of the Lone Cypress, few are aware that those restrictions extend to paintings created in the privacy of an artist's own studio.
Mario Simic, owner of Simic- New Renaissance and Regal Art galleries in downtown Carmel, was surprised. "Do they have any rights over the Lone Cypress?" he asks. "I did a painting of the Lone Cypress myself I have it displayed here in my window."
Told that the company's position is that he may not sell that painting, Simic responds, "How dare they forbid people from painting a landmark! If they were to tell me not to sell it, I'd fight them on it. I'm not going to lie down and play dead,"
Diana Tumlin, director of Carmel's Zantman Galleries, finds the issue fascinating, from a legal perspective. While she understands the ban on commercial photography, she wonders how that restriction could extend to non-photographic art.
"A photographer could reproduce the same picture over and over, but I can't see a painter doing that," she says. "The interpretation is not going to be identical to a photographic image. If [Pebble Beach Co. is] not in the business of selling original paintings of the Lone Cypress, then there's no conflict."
One Carmel artist is selling a charming watercolor she painted of the Lone Cypress in a Carmel gallery. She's never heard from Pebble Beach Co., and was unaware of their restriction on what she's doing. "I know lots of artists who paint the tree, and I've never heard of anyone having trouble," she says.
Susan Santy owns two local galleries, Golf Arts and Imports in Carmel, and Cambridge Golf Antiquities at the Pebble Beach Lodge. While Santy only carries photographers licensed by Pebble Beach Co. in her shops, she was unaware of the restrictions on original artwork.
Noting that her Pebble Beach shop is situated on Pebble Beach Co. property, she says she’s surprised that if what she's doing is wrong, no one from the company has commented on it. "They're very aware of who I am and what I do here," she says. "I've never had the Pebble Beach Company contact us about paintings. I was always under the impression it was artistic license. Maybe I'm a little bit naive.
Pebble Beach Co. maintains its control over its free by issuing permits and licenses to photographers and artists through its marketing department. Most of those are one-time permits for a specific use, says Steve Willie, the company's senior vice president of marketing. Willie says he receives "60 or 70" requests for such permits every year. About one-third are approved.
Unrestricted, ongoing licensing agreements with photographers are much more rare. Willie says there are currently only "eight to 12" such licensed photographers.
They must submit all photographs they take to Willie's department for approval, and those images that are approved may be sold by the photographer according to his or her agreement with the company.
Lots of folks would like that prized licensing agreement. One is Carmel Valley photographer Jay Murray. The week of April 16, 1997, when the Hale-Bopp comet was streaking across our nighttime skies, Murray shot some stunning sunset pictures of the comet from several vantage points in Pebble Beach. One of those vantage points was in front of the Lone Cypress.
Murray's intention, he says, was to use the photograph to convince Pebble Beach Co. to offer him a licensing agreement. Unfortunately for him, it didn't turn out
On April 23, 1997, right about dusk, Murray was down on the visitors' platform in front of the Lone Cypress, taking photographs. As he walked back up the stairs towards his car, he saw two Pebble Beach Co. security vehicles waiting for him, lights a-flashing.
"They asked what I was doing, and he said, I'm taking a picture of the tree with the comet," Murray says. "They asked, `Is this for commercial use?' I said, `I'm taking it in hopes of getting involved with Pebble Beach Co.' I thought they'd flip out over the pictures. Then they said, `Well, you're a professional photographer, you can't take this picture."'
The security vehicles had Murray's car blocked in. Not wishing to provoke an altercation, Murray says he handed over the film in his camera. He retrieved it the next day from Kim Calanes, Pebble Beach Co. licensing manager.
On April 30, Murray received a "permit for photography" form from Canales. On the advice of his lawyer, he signed and returned the permit, mistakenly believing it was a prelude to a licensing and marketing arrangement with Pebble Beach Co. In fact, it was a retroactive agreement allowing him only to take that one photograph, and restricting its use "for editorial uses only, i.e. newspapers and magazine articles." He may not use or sell the photograph in any other way without the company's written permission.
Still, Murray believed that once Pebble Beach execs saw his photographs, they'd be so impressed that they'd want to market them. He brought the pictures back to Canales, who showed them to her superiors. "They looked at the Lone Cypress picture and said, `It's kind of grainy, we can see the cables. We don't feel it has any aesthetic value."'
Today, almost two years later, Murray is still holding photographs the Pebble Beach Co. doesn't want for itself, but which he is enjoined from utilizing. "I'm between a rock and Pebble Beach," he mourns.
Joann Dost, a former golf pro, is one of the handful of photographers working under license to Pebble Beach Co. Her pictures are published in golf magazines the world over, and she says that the arrangement Pebble Beach Co. makes with its licensed photographers is "very different" from those she encounters at other golf courses.
But Dost is not complaining. "I'm real happy with the arrangement," she insists. "If I didn't have a license, I wouldn't be able to take the images. Those are the rules of the game."
