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Wal-Mart Vies for Right to Put On a Happy Face

A Frenchman's trademark claim forces the retailer to go to bat for `Mr. Smiley,' its version of a '70s icon.

May 07, 2006|Abigail Goldman | Times Staff Writer

For decades, this feel-good symbol has encouraged millions to smile.

The happy face and "Have a Nice Day " helped to define the '70s. With two dots and a pencil stroke, schoolchildren have brightened handwritten messages by filling in their O's with mini-smileys. These days, nary a cheery e-mail is complete without a typographical smile.

But now a bitter legal battle over smiley could be enough to make the happy little symbol .

Wal-Mart Stores Inc., which uses a yellow happy face to try to put its shoppers in a carefree mood, is saying -- with a straight face -- that it has exclusive rights to the familiar image, at least among retail department stores.

The world's largest retailer is fighting a French native who has earned millions in licensing fees on smiley's back since the early 1970s, when he began securing trademarks for the happy face around the world.

It's the case of Mr. Smiley vs. le smiley.

The two sides are expected to wrap up their cases before the U.S. Patent and Trademark Office this summer, with a ruling sure to bring a smile to one side or another.

If Wal-Mart prevails, it could keep its competitors from festooning the symbol on plastic bags, name badges, balloons, handbags and just about anything else sold in stores, as well as the ads used to promote them.

The Frenchman, Franklin Loufrani, responded bluntly, sans happy face: No comment .

But Wal-Mart spokesman John Simley, not to be confused with , was happy to.

"It is kind of ironic that this whole dispute is about a smiley face," he said. "But in the end, it is what it is: It's a mark that we have a tremendous investment in and is very closely identified with our company."

Wal-Mart has invested billions of dollars through the years, Simley said, linking its name to the yellow circle with two dots for eyes and a cartoonish grin.

The company says it has officially been using what it calls Mr. Smiley since 1996 and in more limited ways long before that. But the company didn't move to register the trademark until someone else threatened to do so first, Simley said.

That was Loufrani, who began registering the happy face around the world more than 30 years ago and set up a company in London, SmileyWorld Ltd., to police its use.

Many people have claimed to have invented smiley. If you believe the movies, the title character in "Forrest Gump" inspired the icon when he wiped his muddy face with a T-shirt and gave the imprint to a struggling businessman who exploited the mark.

But, truth be told, the man widely credited with creating smiley was the late Harvey Ball, a Massachusetts graphic artist who was commissioned by an insurer in 1963 to reduce bad blood among employees after the company merged with a rival.

The original concept was just for the smile. Ball told the Telegram & Gazette of Worcester, Mass., in 1997 that he added the eyes so that a disgruntled employee couldn't turn the smile upside down to make a frown.

For his efforts, Ball earned little more than a song and a smile: $45.

By the time Ball thought to copyright the design in the 1970s, his happy face had already been reproduced at least 50 million times, making it part of the public domain. Since then, Kentucky has added smiley to its license plate, and the U.S. Postal Service issued a smiley stamp in 1999 as part of a tribute to the '70s.

But that was just in the United States.

Loufrani, who has claimed that he created le smiley after the 1968 student riots in Paris as a way to designate positive news stories, has trademarked the symbol in at least 80 countries, his lawyer said. So every time a happy-face button, T-shirt, face cream or hat is sold in those places, Loufrani, who his lawyer said was in his 60s, is supposed to get a cut.

It wasn't until 1997 that Loufrani applied to control the symbol in the United States. The patent office told him he couldn't claim the happy face, ruling that the mark was a widely used decorative symbol. So Loufrani went ahead with a request to trademark the word "smiley" coupled with the symbol.

Wal-Mart said it had no choice but to oppose Loufrani and seek to register Mr. Smiley for its use. Loufrani, in turn, filed legal papers opposing Wal-Mart's claim.

"For those of us who just live in the world, maybe it looks silly, but for those who are reaping a financial benefit, I think it's very important," said Steven Baron, Loufrani's Chicago-based attorney. "My client has spent lots and lots of time and his own money developing rights around the world in his mark, licensing those rights and earning a living from it. Wal-Mart has the market power basically to blow that out of the water."

Although all of this may sound a bit like registering sunshine or rainbows -- or, for that matter, the ampersand -- trademarking a ubiquitous symbol isn't necessarily frowned on, legal experts said.

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