The phrase "Pizza Rat" was a trademark years before the Internet-famous rodent dragged its slice of pizza down a flight of subway stairs, according to a San Francisco-based entrepreneur who said he was ahead of the curve.
In the summer of 2009, Eric Stone launched a computer and mobile phone app to help diners check inspection scores for restaurants in cities across the country. The free app, released only a year after Apple opened the iPhone app store, was basic in design but promised to fill a gap that Yelp hadn't.
Stone initially called it "Restaurant Scores." That was descriptive, but not catchy.
So he asked himself, what kind of food did most people like eating? Pizza. And what would they hate to find scampering anywhere near their pizza? A rat.
And thus the name "Pizza Rat" and the complementary logo — an image of a pizza-eating rat — were coined.
Six years later, Stone, 43, has taken to task businesses hoping to capitalize on the popularity of last month's viral "Pizza Rat" video that tag their products with that name, alleging a violation of federal trademark law.
"I'm really upset that a lot of people think they own this thing called 'Pizza Rat' and they’re going to make billions off it," he said. "They can make it off ‘Pizza Mouse,' or 'Pie Rat,' or 'Rat Pie,' or 'Rat with Pizza,' or 'The Pizza and the Rat,' but please not 'Pizza Rat,' guys.”
Stone filed for official registration of the "Pizza Rat" trademark through the U.S. Patent and Trademark Office on Oct. 5, 2015, yet he said his app earned the common law trademark in 2009 as the first product to use the distinctive phrase in commerce. (A professor at the New York University School of Law confirmed that Stone's interpretation of trademark rights is accurate, but it is difficult to verify the claim that no product before the advent of the Internet used the name before the app.)
When the Pizza Rat video went viral, the servers that maintain Stone's app website alerted him Sept. 21 to a mystifying bump in traffic. Stone said that, prior to that traffic surge, he would have been surprised if even 10 people visited PizzaRat.com in one day.
He soon realized that Internet users searching for footage of a pizza-schlepping rat owned by the viral video outfit Jukin Media — and later hunting for a sexy "Pizza Rat" Halloween costume sold by the lingerie retailer Yandy.com — were arriving at his site instead. Stone's site is the first result on Google when you type the words "pizza" and "rat" into the search engine.
"Thousands, not millions" of people, discovering the "Pizza Rat" app by accident, were now downloading it, he told DNAinfo.
"Obviously there’s confusion; they’re looking for a Halloween costume or a cute animal," Stone said. "It’s driving me bananas."
Consumer confusion is the standard for proving trademark infringement, according to federal law. However, "the protection for a trademark is always going to be in connection with the particular goods or services, or ones that are close to those goods and services," said June Besek, executive director of Columbia Law Schools' Kernochan Center for Law, Media and the Arts.
"If you have a trademark for something like window cleaner, and somebody uses it for shoes, then you’re generally not going to be able to stop them," Besek said.
If Stone really wanted to prove that customers buying "Pizza Rat" T-shirts, from online shops like Zazzle, mistakenly believed his app had authorized them, he'd have to present as evidence compelling survey results or emails sent to his address requesting the shirts, Besek said.
That strategy wouldn't work with Jukin Media, the company that acquired the rights to the "Pizza Rat" YouTube video and titled it "New York City rat taking pizza home on the subway (Pizza Rat)."
Stone contacted several members of its staff on Oct. 21, asking them to "remove all URL and titles/products containing our trademark immediately," according to emails DNAinfo acquired from a Jukin company spokesperson.
Jukin is standing on solid ground, the company says.
"With respect to your trademark claims ... it appears that both registrations ... are limited to the description of 'computer application software for computers and mobile phones, namely, software for identifying restaurant cleanliness and health,' which does not relate in any manner to the above-referenced video," wrote Joe Moschella, the head of business and legal affairs at Jukin.
Stone's efforts to protect his trademark may be at odds with another law called the Digital Millennium Copyright Act.
The DMCA, passed by lawmakers in 1998, protects online service providers from liability for copyright infringement. It requires the providers to immediately remove any material that a copyright holder claims, in a "takedown notice," is encroaching on his ownership rights. However, a phrase like "Pizza Rat" can't be copyrighted because the law doesn't protect names, titles, phrases or short expressions.
Sending out copyright infringement notices to websites when they're not actually infringing a copyright makes an accuser "liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer," according to the DMCA.
When DNAinfo asked Stone about the caveat via email, his response was to write that his lawyers were "in caucus and not going to comment on our legal position."
Stone may be working to protect his rights as rigorously as he can, but that doesn't mean he's lost his sense of humor about the viral vermin that allegedly threatens them. He told DNAinfo he was planning on dressing as the Pizza Rat from Jukin's video this Halloween: "I’m going to make my own costume of course," he said. "I thought handing out pizza as Pizza Rat would be a good thing, so I'm going to get some pies and see how long they last me."
Imagine it: Pizza Rat as the mascot for a pizzeria that brings your pies to you. "Pizza Rat," in the opinion of David Linderman, group creative director at the Brooklyn-based advertising agency Huge, "would make a much better pizza delivery service [than an app.] If you had a pizza delivery service right now called 'Pizza Rat,' you would just kill it."