State Politics

Idaho House member tried trademarking your license plate image; the owner threatened to sue

You may know Idaho’s red, white and blue license plates were created to celebrate its centennial in 1990.

What you may not know is that for every Idaho license plate sold featuring that same iconic mountain and forest image, 50 cents goes to the Idaho Heritage Trust to protect historic places in the Gem State.

But in 2018, one Meridian lawmaker tried to introduce a bill that would strip the state’s requirement to pay that fee in an effort to halt what he characterizes as hundreds of thousands of dollars worth of “inappropriate payments” to the nonprofit — and he tried to personally trademark the same image used on the license plates.

That landed him in hot water with fellow lawmakers and the Idaho Heritage Trust itself.

“The Idaho Heritage Trust is a 501(c)(3) private organization (one of over 6,000 in Idaho) and not a government entity,” Rep. Steve Harris, R-Meridian, told the Statesman in an emailed statement. “As such, they should not enjoy the special privilege of receiving taxpayer’s money in this way. Taxpayers shouldn’t be funding non-profits or their activities through taxes or fees, no matter how worthy, without their consent.”

Harris said he has no plans to introduce a similar bill this session. But he still thinks it is inappropriate for state law to require payment to a nonprofit organization, and said the arrangement is unfair to residents purchasing standard license plates because they may not want their money going to an organization they do not support.

He thinks Idaho Heritage Trust should be required to do what other special interest groups and organizations do — get their own specialty license plate.

The history of the trademark

In preparation for Idaho’s 1990 centennial celebration, the state created the Idaho Centennial Foundation, which, among other things, created the the tri-color mountain and forest image used on the commemorative license plate. The foundation trademarked image in 1987.

When the state wanted to use that design on all standard license plates, it passed a law in 1988 requiring a “50 cents per plate fee designated to the Idaho heritage trust for use of the copyrighted design.”

The state also uses the image on highway signs, warrants and other state products, but the state does not have to pay a royalty for those uses.

The trademark fee, which now provides about $400,000 to the Idaho Heritage Trust annually, goes into an endowment account for the trust. Per state law, interest generated from the endowment is used to support historic buildings, sites and artifact collections throughout Idaho, including such recent projects as the 1920 Schubert Theater in Gooding, Syringa Hall in Sweet and Warren Guard Station in Idaho County.

Harris said this arrangement is a “ploy” in which the trust is guaranteed — by law — state-funded assistance, something other nonprofit organizations do not get.

Harris develops his remedy

That’s when Harris came up with his plan. He put together a bill to put an end to the 50-cents-per-plate fee by removing it from state law.

While drafting the bill, Harris went to the Idaho Secretary of State’s Office to research the trademark.

Under Idaho law, a trademark registration is valid for 10 years. Harris learned that the then-Idaho Centennial Foundation registered the image in 1987, and the Idaho Heritage Trust re-registered it in 1997. Harris said he could not find a subsequent registration. He said he confirmed his finding that the trademark expired in 2007 with secretary of state trademark staff.

“Assuming the trademark had lapsed, I quickly registered the trademark” on Jan. 25, 2018, he said. He applied as an individual using his home address. The trademark application includes an affidavit that the applicant “swears” that no other entity has a right to the image.

Harris said he trademarked the license plate image for two reasons. Since his bill was raising the trademark issue and the fee was wired into state law, he did not want the Idaho Heritage Trust to “discover the lapse and quickly re-register.”

Additionally, since the trademark had lapsed, it would make it easier for the state to stop the payments and possibly even get back the $1.5 million in fees it had paid the trust since the trademark lapsed, Harris said, noting that his intent “was to assign the trademark again back to the state where it belongs.”

About 10 days after registering the image, Harris introduced his bill in the House Transportation and Defense Committee to remove from state law the requirement that the state pay Idaho Heritage Trust a royalty. The committee agreed to print the bill and hold a hearing on Harris’ bill on Feb. 16.

When Harris and other committee members showed up for that hearing, they were given a strongly worded letter from an attorney representing Idaho Heritage Trust stating that the new trademark registration should never have been issued “for a number of violations” of state law.

The attorney recommended that the nonprofit file a lawsuit seeking an injunction and cancellation of Harris’ trademark for several reasons, including fraud, because Idaho Heritage Trust has a current trademark registration valid through 2021.

After the testimony

Following testimony on the benefits of Idaho Heritage Trust and the possible legal complications of removing the statute, along with a brief mention of Harris’ illicit trademark application, the committee voted 10-6 to kill the bill.

Harris said at the time of the hearing that he was not aware Idaho Heritage Trust had renewed the trademark.

“Once I discovered, during the bill hearing, that the trademark was indeed registered by the Idaho Heritage Trust in May of 2011, I immediately terminated my claim,” Harris told the Statesman. He canceled his trademark filing on Feb. 20, 2018.

Harris also learned that the nonprofit has a 2016 licensing agreement with Idaho Department of Parks and Recreation pertaining to use of the trust’s trademarked image.

During the hearing, Idaho Heritage Trust board member John Taylor told the committee that the entire ordeal could have been avoided had Harris simply contacted the nonprofit.

When asked by a committee member whether he had communicated with Idaho Heritage Trust, Harris responded that he had not.

Idaho Statesman investigative reporter Cynthia Sewell was named Idaho Press Club reporter of the year in 2017 and 2008. A University of Oregon graduate, she joined the Statesman in 2005. Her family has lived in Idaho since the mid-1800s.