dissenting.
I cannot imagine a more cogent explanation of the meaning of a trademark than that offered by Justice Holmes in Beech-Nut Co. v. Lorillard Co., 273 U.S. 629, 633, 47 S.Ct. 481, 482, 71 L.Ed. 810 (1927).
A trademark is not only a symbol of an existing good will, although it is commonly thought of only as that. Primarily it is a distinguishable token devised or picked out with the intent to appropriate it to a particular class of goods and with the hope that it will come to symbolize good will.
Id. Because I believe that the Museum has devised a distinguishable token, appropriated that token to a particular class of goods and plainly demonstrated quantifiable good will, I respectfully dissent.
The majority could have scarcely chosen a better analogy to adopt than that of the Coca-Cola bottle. Doubtless no symbol in the world is so readily recognized. This famous form serves two purposes: it allows the consumer to identify immediately what’s *757inside the bottle; it also serves a utilitarian function by containing the Coca-Cola Company’s primary product — Coca-Cola. Just as with a Coca-Cola bottle, more than one mark can serve to identify a single item. For example, the words “Coca-Cola”, the signature script and the distinctive bottle shape are all trademarked. See, e.g., Coca-Cola Co. v. Alma-Leo U.S.A., Inc., 719 F.Supp. 725, 726 (N.D.Ill.1989) (noting trademark of bottle shape); Coca-Cola Co. v. Gemini Rising, Inc., 346 F.Supp. 1183, 1186-87 (E.D.N.Y.1972) (noting trademarks in product name and stylized script). All can be found on one product.
The Coke bottle analogy is significant for another reason. The trademarked shape of the bottle has three dimensions. Regardless of the angle from which it is viewed, it is still recognizable as a Coke bottle. When a Coke bottle is photographed it loses a dimension, but the subject of the picture remains recognizable as one of a trademarked, three dimensional figure. If a photograph of a trademark — for example, one of a Coke bottle — can be sold by the owner of the trademark in a poster form, that poster naturally must be recognized as one of the owner’s “goods”, albeit a derivative good.
In this case, the physical structure of the Museum, the I.M. Pei-designed building, is “the Coke bottle.” Webster’s defines token as “an outward sign or expression; symbol, emblem.” Webster’s New Collegiate Dictionary 1227 (1977). The Museum claims, as I am persuaded, that its building symbolizes something unique and protectable under the trademark laws of the United States. What that something is will arouse different feelings in whomever views the Museum, whether in person or through artists’ renderings or photographs. Beyond embodying “the freedom, youthful energy, rebellion and movement of rock and roll music,” the Museum building serves a utilitarian function. Like the Coke bottle, the building is also a container. Instead of containing a soft drink, the Museum envelops an array of tangible and intangible elements. It embraces nostalgia; it shelters memorabilia from one of this century’s cardinal art forms; it also harbors a bazaar selling snow domes and postcards, T-shirts, baseball caps, and posters — souvenirs for the pilgrims of popular culture. It is this amalgam, of which posters are but a part, that is “the good itself.” In short, it is the Coca-Cola in the bottle.
Nobody disputes that the Museum is “unique and distinctive.” I.M. Pei may well be the only living architect whose name would be recognized by more than a handful of Americans. Were the Rock and Roll Foundation to have sought only an attic in which to store its artifacts, it might have leased a warehouse with substantially more space at a fraction of the cost.
Moreover, an effort by the Museum to register a warehouse as a mark would have failed. As we have previously said, a purely functional design is incapable of serving as a trademark. WSM, Inc. v. Tennessee Sales Co., 709 F.2d 1084, 1087 (6th Cir.1983). The Museum enabled its building to serve as its mark by constructing a signature edifice so unique as to offer instant recognizability. This is no underground operation; as a tourist destination, and a non-profit one at that, perpetual promotion is the Museum’s lifeline. Through the marketing of the tehotchkes described above, the Museum not only garners revenue, it also helps to expand the renown of the Rock and Roll Hall of Fame. As much as admission receipts, merchandise sales — some $15 to 20 million annually for the Museum- — quantify the “good will” of which Justice Holmes wrote.
This controversy is before us because two parties are selling what is substantially an identical product. See Scarves by Vera, Inc. v. Todo Imports Ltd., 544 F.2d 1167, 1174 (2d Cir.1976). “The only competition between the parties, fair or unfair, can be that where some common market exists for their respective products. The products need not be identical; it is enough that they are so closely related as to confuse consumers in the marketplace.” Id. The majority concludes that Gentile’s use of the caption “ROCK AND ROLL HALL OF FAME” accompanying the photograph of the Museum “would be nothing more than a description of his own ‘good,’ ” and that, “in Gentile’s poster, the Museum’s building strikes us not as a separate and distinct mark on the good, but, *758rather, as the good itself.” Such a conclusion exposes what I see as the flaw in the majority’s premise. Gentile’s poster is not a photograph of “the good,” but rather, a photograph of “the mark.” Applying the majority’s reasoning to the issue before us, the Museum sells buildings; Gentile sells photographs of buildings. I am certain that regardless of who produces it, the good is the poster.
The majority is unable to “conclude ... that the Museum has established a valid trademark in every photograph which, like Gentile’s, prominently displays the front of the Museum’s building, ‘no matter how dissimilar.’ ” But who disputes this? Not the Museum. It is not Gentile’s photograph of the building that infringes on the Museum’s mark; it is his use of that photograph — and more precisely, his use of the protected mark that unfairly competes with the Museum. The Museum does not imply that a poster of the Cleveland skyline, of which the building is now a part, would infringe upon the Museum’s mark. Certainly any visitor to the City of Cleveland could walk up and take a picture of the Museum. Any artist could sketch the building freely. Indeed, the Museum would be powerless to protest. These depictions are not “uses in commerce” until they are offered for sale. We reaffirmed in Esercizio v. Roberts, 944 F.2d 1235, 1243 (6th Cir.1991), that “[wjhere the copying by one party of another’s product is not done to deceive purchasers and thus derive a benefit from another’s name and reputation, but rather to avail oneself of a design which is attractive and desirable, a case of unfair competition is not made out.”
Furthermore, not only may Gentile take a photograph of the building, he can sell a photograph of it — the Lanham Act only prevents him only from “using in commerce” his photograph of the trademark in such a way as to cause a “likelihood of confusion” in the market place. It is not our place to try to list, even if we could, every commercial possibility for the work of a professional photographer of obvious talent. Merely selling a poster of its own trademark does not give the Museum the right to enjoin every duplication of its mark, only those that compete directly with its own product in similar channels of commerce. See, e.g., Boston Athletic Ass’n v. Sullivan, 867 F.2d 22, 35 (1st Cir.1989)(acknowledging that trademarks create no “right in gross” yet confusing uses are en-joinable); Boston Professional Hockey v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir.1975) (holding duplication and sale of trademarked hockey team emblems as “products” violated Lanham Act).
Although the majority rejects the idea that the Museum “uses its building design as a trademark,” the plain meaning of the wording of the Lanham Act suggests otherwise. As the majority notes, the law provides no trademark protection absent that mark’s use in commerce. The statute provides:
[t]he term “use in commerce” means the bona fide use of a mark in the ordinary course of trade, and not merely to reserve a right in a mark. For purposes of this chapter, a mark shall be deemed to be in use in commerce—
(1) on goods when—
(A) it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto ... and
(B) the goods are sold or transported in commerce
15 U.S.C. § 1127 (1994)(emphasis added). The same section of the Act provides that
[t]he term “trademark” includes any word, name, symbol, or device, or any combination thereof—
(1) used by a person, or
(2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter,
to identify and distinguish his or her goods, including a unique product from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.
15 U.S.C. § 1127 (1994).
The majority’s doubts that the Museum “use[d] its building as a trademark” can be answered by sequence of events in this case. *759The architect and building design were approved years before the Museum’s building came into being. According to the Museum, “versions of the building shape [were used] on T-shirts and a wide variety of products, including posters, since as early as June, 1993.” Such use predates the opening of the Museum by more than two years; the Museum would have then been not a public landmark, but a construction project. As properly noted by the majority, there can be no trademark without a dependent product. If the Museum was using its trademarks before the building was completed, what were its “goods”? The goods were the promotional material it published and sold, which announced to the public the coming of a place where not only could they measure their own lives by the evolution of rock music, they could also buy more promotional material to show for their visits. Whether viewed as a “service” or an intangible “good” any museum provides a place where the public can come to appreciate the theme promoted by the museum’s sponsors. As we have seen, however, provision of such an intangible need not be the museum’s exclusive good.
The majority is also troubled by the various “versions” of the Museum’s likeness. Yet, if as the majority concedes, the Museum building is unique and distinctive, should it matter from what angle the building is depicted? The building itself is fixed in location; any change in perspective depends on the viewer. Again, here the Coke bottle example is helpful. If Coca-Cola came in a ten-story high bottle, would the trademark enjoy any less protection? A photograph of that bottle would still be of a photograph of a trademark. The Coca-Cola Company could not only sell posters of its giant bottle, it could enjoin others from doing so. If a particular photograph of the bottle were not recognizable, that would not impair the protection of the bottle itself as a mark. If a photograph was not recognizable as one of a trademark, there would be no likelihood of confusion and thus no controversy to litigate.
The record includes official certificates for five trademarks and two service marks registered with the State of Ohio. All seven certificates describe the registered mark as being the “Rock and Roll Hall of Fame and Museum Building” or the “Rock and Roll Hall of Fame and Museum Building Shape.” Some version of the Museum’s shape appears in each of the exhibits of the T-shirts, snow dome, and posters supplied in the record. That the impressions of the building differ from product to product is not inconsistent with the mark’s registration.
The majority’s observation that “[a] picture or a drawing of the Museum is not fanciful in the same way that a word like Exxon is when it is coined as a service mark,” could not be more accurate or less relevant. Moreover, I think such a deduction ignores the sound reasoning of the Supreme Court’s holding in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995). In Qualitex, the plaintiffs distinctive green-gold color was held to be a valid trademark, even though it had a functional use beyond that of identifying the product. “Since human beings might use as a ‘symbol’ or ‘device’ almost anything at all that is capable of carrying meaning, [the language of 15 U.S.C. § 1127] read literally, is not restrictive.” Qualitex, 514 U.S. 159, 162, 115 S.Ct. 1300, 1302-03 (1995).
There is no meaningful legal distinction between a three-dimensional and a two-dimensional trademark. I believe the Museum has a valid trademark in its building, and that a photographic image of the museum building could qualify as a trademark on merchandise. I do not read the Lanham Act to mean that simply because a trademark is also the subject of a poster it should enjoy any less protection.
I therefore respectfully dissent.