2006-12-18 Lighted Sign Regulations• '
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Memo
To: Albertville City Council; Larry Kruse, City Administrator
From:. Mike Couri, City Attorney
Date: December 18, 2006
Re: Lighted sign regulations and Trademark protection.
We have conducted some limited research into the federal cases dealing with a
City's ability to require a business to modify its logo's trademarked colors as
part of the City's sign regulations without violating the Federal Latham Act,
which protects Federally-issued trademarks. While this issue has arisen in the
9~' Circuit Court on the West Coast and in the 2nd Circuit Court on the East
Coast, it has not arisen in the 8d' Circuit, which is Minnesota's jurisdiction.
Without an 8d' Circuit case on this issue, there is no clear controlling law in
Minnesota.
To make matters even less clear, the ap~ellate courts in the 2nd and 9d' circuits
came to different conclusions. In the 9 circuit, the court ruled that the city's
ordinance requiring a different color logo in an outdoor sign than the color
trademarked constituted a violation of the Latham Act for trademark violation
and also constituted a violation of the company's civil rights, potentially
making the city liable for payment of attorney's fees. In the 2nd circuit, the
court ruled that a similar ordinance requiring the changing of the company's
logo colors did not violate the Latham Act.
This split among the courts makes it very difficult to predict how our circuit,
the 8d' circuit, may rule on this issue.
In light of this, and given the potential to be forced to pay attorney's fees if our
ordinance were found to violate the Latham Act, I would advise that the City
change its ordinance in a manner that would not require a change. in a
company's logo colors but which may achieve the same result of reducing the
glare coming from on premises signs at night. This can be achieved in a
number of ways, from limiting the candle power from a sign at a measured
• distance to limiting the wattage and number of light bulbs per square foot of
sign space.
27 EXHIBIT C