Trademark minefield – You need to know the law before selling your images for commercial use.
Understanding the rules and regs about when to use a photography property release is often misunderstood, especially in how they relate to trademarks. The legal issues surrounding selling images commercially are generally grouped into three categories: photography copyright, trademark and right of publicity. Previously on this blog we covered commonly asked questions about copyright. Here in this second installment, we tackle the issue of trademarks. Remember, this is not legal advice (you should always consult a lawyer), but more a guide to help you make better decisions when shooting and submitting images.
What is a trademark?
Trademark law was developed to protect consumers. Think about it. If anyone could slap the Coca-Cola logo on a bottle of soda, consumers might easily be fooled into buying an inferior product that wasn’t “the real thing.” Trademark law prevents that from happening by protecting marks (labels, product names, images, logos etc.) so that consumers can easily make the connection between goods or services and their source.
Rights may be established in words, marks, logos, and trade dress (the overall design, look and feel of a product). To continue with the example of Coca-Cola, these rights may refer to the name and font of the words “Coca-Cola” and “Coke,” the curvy shape of the bottle, the red can with white swirl, slogans and other marks that are recognized associations with the drink. The more a mark is recognized and associated with a particular type of product or service, the stronger the claim of its owner.
Trademarks like this can present problems when appearing in images sold for commercial use.
What is trade dress?
As noted above, “trade dress” refers to the design, look, and feel of a product. The Coke bottle is a good example, but there are others that are less obvious. For instance, an iPad has a distinctive shape, so even if you can’t see the Apple logo in a photograph that includes an iPad, the Apple corporation may be able to assert that the image infringes its trade dress. A similar argument could apply to golden arches, the shape of a Delorean car or even a particular color scheme, such as an image of a donut shop that shows the pink and orange combination used by a national franchise.
High Risk – Featuring a trade dress and mark in a close up like this presents an elevated risk of confusion or false association. Removal of the “Blackberry” logo would result in this image being low risk.
Anything else I should know about trademarks?
Trademark rights can be asserted in a wide variety of contexts – going far beyond words and logos connected to consumer products. An example of particular relevance to photographers is buildings that are distinctive and/or well-known. In such cases, an image may be subject to claims of trademark or trade dress infringement. Some examples of trademarked buildings include the Flatiron and Chrysler buildings in New York City, the Sydney Opera House in Australia and the Walt Disney Concert Hall in Los Angeles. Famous signs such as those for I ‘heart’ NY and Hollywood are also trademarked.
High Risk – I <heart> NY is a registered mark of New York state tourism (not NYC), and the state is highly protective and vigilant against unauthorized usage. A close up like this would present an elevated risk of confusion or false association.
When Do I need a photography property release?
If you sell an image that includes a trademark and you do not have permission (a photography property release) to use that mark, you are at risk of infringement. That’s the bottom line. If you end up in legal hot water, your liability will hinge on the answer to this question: Is it likely that a consumer who sees your image will mistakenly believe that you (or another mark in the picture) are associated with the owner of the trademark? It’s all about the possibility of confusing consumers.
You may wonder why someone would object to having their trademark included in an image. Doesn’t that amount to free publicity for their product or service? Well, perhaps, but some trademark owners may object to the context of the image or to other elements within it. They may feel, for example, that the associations implied by the image tarnish their brand by placing it in a bad light. This is called trademark dilution. Another concern owners may have is that the association weakens the connection between their mark and their goods or services. This is called blurring.
Low Risk – In this example, I ‘heart’ NY is not a close up or easy to make out so risk of false association is diminished. However if this were used in a way that New York state tourism did not approve of, they could make a claim.
Thus, it may be very difficult for a photographer to assess whether a legal issue could arise from use of an image containing a third party mark. It all depends on whether the trademark owner chooses to assert her rights. A trademark owner may make a claim even in dubious cases of infringement. This can cost image makers and users time and money, even if the claim never goes to trial.
How do I assess risk?
Any unauthorized use of a trademark presents risk. The more famous a mark is and the more prominently it is featured in an image, the higher that risk is. (See below for sample illustrations and risk assessments.)
So what should I do?
- Remove or significantly blur any trademarks in post production, before presenting the images for commercial use.
- Be especially careful of trade dress, even if no logos are used.
- Only use or present images where trademarks are truly background elements. The less prominent, the less risk.
- Always make it known in writing that a trademark is present and that it is up to the advertiser to either remove it or use it in a way that won’t present a problem.
- In the case of ImageBrief, as long as a photographer uploads the image and specifies that the image has “No Release Available” you will not be liable for trademark infringement. To boost the chances of your images being viewed or purchased make sure you remove trademarks before submitting.
We wanted to create a comprehensive list of examples to illustrate the degree of risk in each image. Take a good look and you should be a pro on this law by the end!
High Risk – Featuring a very recognizable trade dress like the iPad’s presents an increased risk of confusion or false association with that product. “Trade dress” is, essentially, the term used to refer to a recognizable product design. Note: A more “generic” looking tablet computer would likely be fine.
Low Risk – This risk here is much lower because this tablet is not “featured” like the one above and is not immediately recognizable as an iPad (no “Apple” logo visible). In addition, the Frank Gehry building and the new World Trade Center building in the background are very minor aspects of the image. The Brooklyn Bridge is fine to use commercially.
High Risk – Featuring a mark like this presents an elevated risk of confusion or false association. Such closeups should really be avoided completely. Avoid professional sports league logos/trade dress unless you have express permission.
Medium Risk – This image features many highly recognizable marks, but the context makes it less likely any particular mark will cause risk of confusion or false association. Also, if there exists any copyrighted works (e.g., M&M characters) in the shot, then permission is likely needed. See copyright post.
Low/Medium Risk – GAP and Boots are part of the background although GAP is quite distinctively shown. If this were used in a way that GAP did not approve of, they could make a claim.
High Risk – Featuring a shop or location name is likely a trademark and in a close up shot like this presents an elevated risk of confusion or false association.
High Risk – Featuring a prominently featured mark as the focus of an image like this presents an elevated risk of confusion or false association.
Medium Risk – Risk of confusion or false association presented by this type of use (the uniform of a trademarked character) is lower but still may present issues.
Medium Risk – Risk of confusion or false association presented by this type of use is lower but still may present issues. Note that “Hello Kitty” character may be protected by copyright.
Medium Risk – The H&M logo and idea of shopping are central to this image and can quite clearly be made out.
High Risk – Logos of U.S. professional sports teams should be avoided. They are highly litigious.
High Risk – You may recall this one from our last post on copyright as this is a heavily designed building by a famous architect. In addition, the owners may assert trademark rights in a distinctive landmark like this Gehry concert hall.
High Risk – The Empire State Building asserts trademark rights in images and may well do so in this case because it is the main focus of the shot.
Low Risk – The Empire State Building asserts trademark rights in images, but does not do so with respect to skyline shots where the Building is only a small part of the picture. In general, if the Empire State Building constitutes less than 20% of the total picture, no permission is needed for such a usage.
High Risk – Eiffel Tower illuminations are subject to both copyright and trademark. Note that an image of the Eiffel Tower by day may be used without permission.
High Risk – The Chrysler Building’s design is trademarked. This would be high risk as the building is the central focus making confusion more likely.
Medium Risk – The Chrysler Building is known to assert trademark rights. In this case the Building is not the center of this image, but it is featured prominently enough that a claim could be made.
High Risk – The Flatiron building’s design is trademarked and this places the building as the central focus. Note this image also has a trademark for NYC Taxi.
Medium Risk – Even though the Eiffel Tower is an exact replica of the original and therefore is likely not protected by copyright itself, Bally’s may claim that the general layout of the tower plus its fountains and buildings is a protectable trademark.
High Risk – Disney is highly litigious. Anything Disney related is high risk and should be avoided without a property release.
Low Risk – Although the Hollywood sign is trademarked, just a small part of it here would likely not present a problem.
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