ASLA Files Petition to Protect SITES Rights

DirtSITESSurvey
The American Society of Landscape Architects (ASLA) yesterday filed a legal challenge to a claim of sole ownership of the Sustainable Sites Initiative (SITES) trademarks by the Lady Bird Johnson Wildflower Center (WC) at the University of Texas at Austin (UT). The petition, filed in the District Court of Travis County, Texas, seeks declaratory rulings and a court order requiring that trademark filings by UT be withdrawn.

Although the partners—ASLA, WC, and the U.S. Botanic Garden (USBG)—have worked together productively over the years, a dispute over SITES’ trademarks arose earlier this year. Despite joint development of the trademarks and the parties’ oft-stated joint ownership of all SITES intellectual property, UT took it upon itself to file applications for registration of the trademarks in the name of the University of Texas Board of Regents. This unilateral action was undertaken over the strenuous objection of ASLA. Upon being pressed for the basis for its action, UT has taken the position that it is the sole and exclusive owner of the trademarks. This assertion is factually and legally wrong and cannot stand. In an effort to avoid legal action, ASLA has made numerous attempts to resolve the issue with the Wildflower Center and UT leadership and legal counsel. However, UT has refused to withdraw the trademark filings and reconsider its claim of sole ownership.

The Sustainable Sites Initiative has the potential to affect a significant market transformation and inspire a new, collective ethic of environmental stewardship in land planning, design, construction, and maintenance. We particularly regret this unfortunate distraction as the SITES project is now at a pivotal moment in its development, with the release of SITES v2 and the beginning of open project certification scheduled for later this year. ASLA is committed to working on the SITES project in partnership with the Wildflower Center and U.S. Botanic Garden. However, we cannot accept the improper trademark filings or UT’s claim of sole and exclusive ownership of property that rightfully belongs to the SITES members, jointly.

A copy of the ASLA filing can be read online.

The Sustainable Sites Initiative is dedicated to fostering resiliency and transforming land development and management practices towards regenerative design. The SITES Rating System is a voluntary set of guidelines and performance benchmarks to assess the planning, design, construction, and maintenance of sustainable landscapes. The central message of SITES is that any landscape holds the potential to both improve and regenerate the natural benefits and services provided by ecosystems in their undeveloped state. To date, 23 projects have received certification under a pilot program, and some 60 are continuing to work towards that goal. With the release of the new guide, anyone will be able to pursue certification.

We regret the need to take this action. We look forward to a quick resolution and a successful rollout of SITEs v2.

This message is by Nancy C. Somerville, Hon. ASLA, ASLA Executive Vice President and CEO, and Thomas R. Tavella, FASLA, ASLA President

11 thoughts on “ASLA Files Petition to Protect SITES Rights

  1. Heather Venhaus 10/16/2013 / 5:33 pm

    Having worked for many years on the SITES project, I can tell you there are two sides to this story. To gain a full understanding, I recommend readers also review UT/Wildflower Center official statement – http://www.wildflower.org/press/index.php?link=press&id=288

    I question ASLA’s judgement on this issue. Is this a good use of the society’s money? How does this lawsuit benefit ASLA members? SITES is at an important juncture, SITES v2 is scheduled for release and in the next couple months open certification for all project will begin. ASLA is risking the last seven years of work and progress. Landscape Architects have given time and expertise with the hopes of creating a better, more sustainable future. If SITES is shed in a negative light, ASLA members can thank their leadership.

    • Ed Davis 10/24/2013 / 11:31 am

      I agree with your comment Heather…and I like your question “How does the lawsuit benefit ASLA members?” And personally, I won’t be renewing my ASLA membership.

  2. Danielle 10/17/2013 / 7:04 am

    Please read the University of Texas Statement on the Trademark for the Sustainable Sites Initiative:

    The University of Texas is disappointed that the American Society of Landscape Architects (ASLA) has chosen to file a lawsuit over the trademark for the Sustainable Sites Initiative (SITES).

    UT has actively sought to resolve this matter more amicably and hopes this legal action doesn’t hurt the future or viability of SITES, which has already had a significant impact in promoting sustainable landscape design.

    UT has never had a formal partnership or any legal agreement with ASLA, despite our efforts over the past two years to develop one.

    Nonetheless, since 2006, UT has collaborated informally with ASLA (as well as the U.S.Botanic Garden) to develop the SITES program for sustainable landscape design. With the additional support and technical contributions from the U.S. Botanic Garden, that collaboration has been both productive and successful.

    Because of this success — and in response to several instances of unauthorized third parties using the SITES name — UT decided to protect that name by registering the trademark for SITES early this year.

    UT initially considered registering the trademark jointly with ASLA and the US Botanic Garden, but this was not feasible for a variety of legal reasons. Instead, UT sought to register the trademark in its name and then license all the rights associated with the trademark to ASLA at no cost and with no restrictions. Our intention was to grant a permanent license to ASLA that would essentially convey rights identical to the rights owned by UT. The U.S. Botanic Garden agreed to this arrangement, ASLA did not.

    Instead, ASLA objected to UT’s filing to register the SITES trademark, wrongly asserting that UT was trying to limit or undermine its rights to the SITES mark.

    ASLA’s concerns are unjustified and its legal claims are unsupportable. UT has never and is not now trying to limit or withhold ASLA’s use of the SITES trademark.

    The University of Texas hopes this can be resolved quickly so the important work of the SITES program can continue.

  3. Nathan Hunter 10/17/2013 / 1:00 pm

    “not feasible for a variety of legal reasons”

    Such as…. ?

  4. Ray Mims 10/17/2013 / 4:06 pm

    Actually WFC didn’t take it upon themselves. There was lots of discussion and much time. And after Two of the three partners and three of the four executive directors had agreed with WFC to move forward with the copyright.

  5. Sue 10/18/2013 / 7:54 am

    I’ve read the statement from each side and both are understandable and would seem to be somewhat justifiable. However, it seems that all sides should have worked harder to find a solution before taking the step of filing for trademark, which has set into action the ASLA action. There is always a way to work things out if given enough time and commitment to finding a solution. It seems that a threat of having someone misuse the SITES name is not nearly as distracting, expensive, and a drain of valuable time and resources as doing this. Certainly WC would have anticipated and planned for a reaction by ASLA, knowing the devotion and commitment of resources ASLA has given over the years leading up to this. I personally would not have even heard of SITES if it weren’t ASLA. Two sides to the story, yes, but in the spirit of true partnership, little good can come from one side making a lateral decision without the other’s support.

  6. Heather Venhaus 10/18/2013 / 8:10 am

    Nathan – Because ASLA has brought lawyers into this discussion, I doubt you will get your answer outside of court. Litigation is not a productive form of communication and the parties involved must be cautious in order to avoid statements being used again them. It is crazy to think that ASLA will most likely give more money to the lawyers than they ever donated to SITES. I’m not sure how that benefits the profession or helps us achieve our goal of a more sustainable future.

    • Nathan Hunter 10/19/2013 / 10:00 am

      Heather,

      I agree I will likely never know what legal reasons make this collaboration not feasible, but the point I was trying to make is that the University of Texas does not make their reasoning for filing for trademark any stronger through their statement. It’s just run around. I understand why they choose not to elaborate but it doesn’t win me over to their side.

  7. Stephen Cook 03/27/2014 / 8:50 am

    What is the status of the petition?

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