Landscape Architecture in the News Professional Practice Network (PPN) News ASLA Chapter News Opportunities People New Members

LAND E-News from ASLA

Search Land

ASLA SITES Petition: Frequently Asked Questions

ASLA Statement
ASLA Petition

What actions gave rise to the current dispute?

Despite eight-plus years of joint development of SITES and ongoing recognition of SITES as a collaboration of its participants, in June, The Wildflower Center at the University of Texas at Austin (“UT”) took it upon itself to file several SITES trademark applications in its own name. These filings were made without advance notice and over ASLA’s strenuous objections.


Email Email
Print Print

When asked by ASLA to explain its actions, UT surprisingly claimed – for the very first time – that it is the sole and exclusive owner of the SITES trademarks. Even though all three participants in SITES jointly developed the SITES initiative and created goodwill regarding the SITES trademarks, UT now contends that it alone “first used” the SITES trademarks in commerce, a position that is simply wrong and contrary to historical evidence.

In its recent public statement, UT does not mention that it now claims to be the “sole and exclusive owner” of SITES trademarks – can you think of any reason why?

The SITES trademarks were developed through a partnership between ASLA, the U.S. Botanic Garden and UT. No one party separately owns the trademarks to the exclusion of the others. UT’s claim that it is the “sole and exclusive owner,” which goes to the very heart of the matter, is indefensible.

What efforts were made to resolve the issue through negotiation prior to filing suit?

ASLA attempted for more than three months to encourage UT to reconsider its sole and exclusive ownership claim and its improper trademark filings. To that end, ASLA compiled a historical chronology of public announcements, marketing materials and other documentation showing that all SITES intellectual property was first used by SITES (not UT, independently) and that all SITES-related intellectual property belongs to SITES, and not any one participant. UT refused to reconsider its position or meaningfully respond to the information provided by ASLA. ASLA disagrees with UT’s recent statement that it has “actively sought to resolve this matter.” Nonetheless, on October 21, ASLA reached out to UT yet again suggesting mediation.

What steps were taken by ASLA to understand its options?

ASLA reviewed the history of the SITES initiative, exhausted negotiations with UT, consulted with trademark experts to understand its options, and weighed the relative advantages and disadvantages of filing suit on behalf of the partnership to protect the trademarks. In the end, the ASLA Board of Trustees, acting on the advice and guidance of legal counsel, gave its unanimous consent and approval to the filing of the Petition.

What does the Petition ask the court to do?

Consistent with the history of collaborative effort of the SITES participants and joint ownership of all resulting intellectual property, the Petition simply asks the court to issue a declaratory ruling that SITES (not UT, individually) owns the trademarks, and order UT to withdraw the trademark applications that were improperly filed.

Is UT correct that simply giving ASLA a license to use the trademarks is effectively the same as joint ownership?

No. ASLA has thoroughly consulted with trademark counsel on this point. Ownership of intellectual property is much different than rights under a license for a number of reasons. For example, by granting a license to ASLA, both UT and ASLA would have the right to use the SITES trademarks but, if their use of the marks diverge (e.g., by the adoption of different standards), the trademarks could be severely weakened or lost entirely. In addition, ASLA would not have influcence over how the marks are used by UT or what licenses UT might grant in the future which, again, could significantly damage the marks. Also, because a license is only a contractual right, it could potentially be subject to termination leaving ASLA with no right to use the marks at all. There are other reasons as well, but suffice it to say that ownership of the trademarks collectively by all three participants is much different, and much more desirable to all concerned, than the limited right to use the trademarks as a licensee. In short, it is critical that ASLA retain co-ownership of SITES trademarks and other intellectual property in order to ensure that ASLA is able to continue to bring the voice of the profession to guide SITES’ future development.

It should be noted that UT itself refused to accept the role of licensee. From the outset, ASLA has advocated that the trademark applications be filed in the name of the parties, jointly. UT opposed this, instead demanding that the applications be filed solely in its own name, with a license being granted to ASLA. When, simply for the sake of highlighting the point, ASLA suggested the opposite – that the applications be filed solely in ASLA’s name, with a license granted to UT – UT refused.

Moreover, UT’s discussion of a license diverts attention from the central problem – UT’s claim of sole ownership of property that was developed collaboratively and rightly belongs to SITES and its participants. This is the core issue that UT apparently does not wish to address. UT’s recent actions are not only fundamentally inconsistent with the basic tenants of trademark law, they do not promote a collaborative and productive working relationship.

Where can I get more information about this case?

The facts of this case are concisely presented in the Petition that was filed on ASLA’s behalf. You are encouraged to read the Petition and send any additional questions to info@asla.org.

What about the future of SITES?

ASLA remains fully committed to SITES and the advancement of the project in partnership with UT and the U.S. Botanic Garden. ASLA’s preference has been and remains to resolve the dispute informally and quickly. We are confident that we will get past this issue. In the meantime, ASLA will continue to do all it can to further the SITES mission and to minimize any impact that the court proceeding might otherwise have on the SITES project.

Comments
brianem@gmail.com October 22, 2013 4:58 PM
I'd like to know how ASLA plans to move forward in partnership with UT and the US Botanical Garden despite this issue. From where I'm sitting, lawyers poison everything and this would have been better let go than become toxix. Issues like this should have been sorted long ago before anything was finalized. I can tell you that my organization does not pay my dues so that ASLA can file petitions like this. I feel like I'm receiving less than half of the story from ASLA, too. This "FAQ", is makes the questions sound incredibly biased.
scottesmith@gmail.com October 22, 2013 5:10 PM
Why does the Landscape Architecture Profession need SITES? Can it really afford to administer or manage a tedious measurement program? Because SITES certification recognition does not offer financial benefits for development, that-for example- the USGBC enjoys through LEED certification, why not take advantage of UT's proposition. The SITES program is not likely to endure in a profession which itself struggles for purpose and identity.
thomaswoodfin@yahoo.com October 22, 2013 5:32 PM
Why isn't US Botanic Garden part of this petition? Are they okay with what UT did? And if so, why is ASLA acting the victim in this instance?
ct3@landarch.net October 22, 2013 6:21 PM
Was SITES not set up as a separate, legal entity with all three organizations equal partners each with a defined 1/3 interest? Has there been too much water under the bridge to effect that?
lsugreenlaws@aol.com October 22, 2013 9:34 PM
Without the support of the nation's landscape architects SITES has no future. Community landscape codes and zoning, perhaps starting with a city in New Jersey, can turn cities toward landscape sustainability. But without the involvements of landscape architects cities will not take advantage of SITES and the science and design that has gone into it. Gardeners can not support it. Architects will not support it. Engineers will just sit back and say, what? Resolve this issue to the benefit of all three parties. The only profit goes to the earth. Not to any organization or to any individual. This is not a time for greed, attitude or hurt feelings. We love you all. BA+
mehieber@hedev.com October 23, 2013 11:50 AM
SITES is such an important opportunity to elevate all parties into a national dialogue about best practices in the sustainable design of sites and hopefully to serve as a fulcrum to enhance awareness, design and construction practices for sitework both nationally and worldwide.
hvenhaus@hotmail.com October 23, 2013 5:34 PM
Publicly airing dirty laundry is rarely a good idea. Landscape Architects and many others in the site design industry have worked tirelessly to prove our value to the green building industry/movement. This whole mess makes us all look foolish and certainly not capable of being productive team members working towards a more sustainable future. So much energy and money is going towards this mess. I wonder, what would happen if we put that towards our mutual goal of getting SITES fully launched?
abowden@landconcern.com October 23, 2013 5:36 PM
I have read through the petition and it appears very evident by the statements being presented that there was a breach of trust by UT. If all that is being stated in the petition is indeed true and factual, then ASLA should do everything possible to fight for joint ownership of the intellectual property rights and trademarks. This is too important to 'just let go'. I support ASLA's actions regarding this issue and appreciate all that is being done on behalf of the entire membership. I expect nothing more from the professional organization that represents my interests, and will accept nothing less.
adriansmithnyc@gmail.com November 9, 2013 8:55 AM
It is extremely unfortunate to feel forced to file a lawsuit to achieve our goal; however by doing so, it has forced a more open discussion of the issue which may be a good thing. It doesn't have to be an airing of dirty laundry. Instead, it can be a professional discussion of the good faith efforts and goals all 3 parties share so a quick resolution can be found. It seems clear to me that mediation is the best way forward. Still I question why there were no agreements over the course of the development process to date - 8 years is a long time to be working together without some formal memo of understanding or any other type of agreement. This issue should have been one of the first things to be resolved process of developing SITES as a joint produce. And if it wasn't being resolved, a red flag should have been raised sooner and maybe a lawsuit could have been avoided. We need to resolve this issue amicably and quickly. Our profession and society is known for leading teams of widely disparate people/consultants on complicated project. SITES is a complex project and we have some of the most creative thinkers in the world in our ranks. We need to tap into their talent, seek their help, resolve the issue and move forward toward a successful full launch of SITES.
Leave a Comment
name (required)  

email address (required)  
website
 

RSS

Read the Feed

What is RSS?

Sign Up For LAND








Featured Jobs:
Check back next week - system is being upgraded.

Landscape Architecture Magazine

Landscape Architecture Foundation



© 2014 All rights reserved.