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Tuesday, April 19, 2005

Using photos of trademarked items

On Apr 4, 10:29am, doug@artmechanica.com wrote:
Dan, I'm writing to ask if you have any passing familiarity with getting licensing for selling photos/artwork of trademarked items. I do automotive subjects, and now find some indication that many mfrs such as GM, Rolls, Porsche, etc "go after" sites like mine that try to sell photos of their products or logos. I assume that consists of a stern cease and desist letter along with a demand to buy a license. So far my website has no visibility and is well below their radar, but the issue seems certain to come up in the future if my changes are effective. I sincerely hope they want only a piece of the pie rather than an up-front payment, for obvious reasons.

On a couple of occasions I emailed the people involved and asked if I could license their trademark for purposes of using an image of their property for a specific use. I only got a response that amounted to, "sure, but don't ask for a license...that'll just involve more work than either of us want to deal with." In other words, more often than not, people like me are beneath their radar. Obviously, I did not request the kind of open-ended use you're probably looking for, which is where the question is more apropos. What it is you want to do with your images is another thing entirely. If you just have images for general stock requests, then you can simply follow the same guidelines discussed in http://www.danheller.com/model-release, which I think you've already done. That is, it depends on any given use of an image whether a release is necessary (trademark notwithstanding). Here's where it DOES apply to your situation. Now, there's good news, bad news and worse news.

Good news:
Unless and until they actually show that you HAVE licensed an image in a manner that violates their trademark, you haven't done anything wrong. You are not obligated to take down images on your site because there are legitimate editorial uses for images that do not require releases, thereby making it perfectly legal to show such images are for sale.

Bad news:
If you shot the images in a private setting, such as if you bought a ticket to an event where they expressly prohibit the use of photography (whether or not they actually enforce it), then you violated another contract, which they can enforce.

Worse news:
Even if you shot pictures in open public space, and have every right to shoot the pictures and put them online, that doesn't stop a very aggressive company from overstepping their bounds and try to get you to stop doing "whatever" with those photos, even though they have no right to do so. If you were to put a lot of money into defending yourself, you would probably win under these circumstances (again, provided you have not actually licensed such images to a client who would use them in a way that would violate the trademark's protection). The question is whether you will have the resources to match theirs, or even the guts. Most people don't, so they back down. (I've done it too.) But, that does NOT make them correct in their legal interpretations, and you shouldn't take it for granted that because this happens a lot, that it has set some sort of precedent. (Many people on the net are misinformed about such matters because they assume that because such circumstances exist, that the law must be on the side of the litigants.)

Your questions:
I sincerely hope they want only a piece of the pie rather than an up-front payment, for obvious reasons.

No -- they have no interest in a piece of your pie. There are many reasons for this. The simplest is that the administration and policing of that "pie" costs far more than what they would receive from you (not just monetarily, but in the resources they'd have to allocate to you in its various forms, such as software, legal oversight, frame of mind, etc.). Since it's not their business model to administer such a thing, it's even less of an incentive, unless you were a major clothing manufacturer or something like that. Another huge reason is perhaps that if they allow you, then they will do that with others as well, which, unless very carefully monitored, will likely yield a more serious trademark infringement. Worse, defending this would be harder because they'd already have set a precedent for allowing flexible and probably indiscriminant uses that (in all likelihood) were hard to monitor. (Remember, winning a case against trademark infringement requires having shown a history of your trying to _protect_ your mark in the first place.)

Lastly, and probably the most important reason for not allowing any old use of their mark is that name-brand recognition is vitally important, and anything that may diminish that--such as letting you sell pictures of their trademarked products--can be extremely costly in the long run if some of those uses (which they can't monitor) devalue the "impression" of their logo.

Should I contact them first, or wait until the various hammers drop? Better to act like I want to be on the up & up, or live with a negative or semi-hostile first contact? What would you do?

I would avoid stirring the hornet's nest. If they contact you, see what they have to say and why, etc. If you well-versed with the ideas presented here, you may be easier to deal with or negotiate around for several reasonable uses. Note: it would help your appearance if you had certain disclaimers and trademark notices next to (or somewhere near) pictures of such.

A local small stock photo house may have an interest in my work, and asked me to contact them once I get a quantity of images rolling.

I seriously doubt anything will come of this for several reasons. First, that house is going to request usages that will far exceed what the company will likely release. Note: they license their pictures themselves, so anyone that wants them usually goes to them first. If a stock agency has rights too, that imposes competition you just don't need. (This is why I don't have stock agencies represent my images either--same rationale.)

If that's not reason enough, even if you were to get some authorization for any kind of use, the stock agency is going to ask you to sign an indemnity clause protecting them ("hold harmless") against any claim from the manufacturer against them for any reason. So, for example, if the stock agency were to license an image to a client that uses it for a legitimate purpose, but then their graphic designer steals the image and uses it for some other, unrelated piece, then the manufacturer will go after you. Why YOU? Because they'll start with the stock agency, and they'll show them the indemnity clause, and that will point them back to you. Then YOU have to show that the designer stole the image, etc... You don't want to have to spend your time doing all that.

(Hint: you might want to consider having your OWN indemnity clause in any of your licensing agreements that says that the licensor indemnify you against any claim of THEIR use of the image. A stock agency would never sign up for that, as just noted, but a licensing client might.) (or might not.)

You might want to see: http://www.danheller.com/biz-trademarks


Anonymous Anonymous said...

Come on, Dan!!!

Do you ask your plumber for automotive advice? Do you ask your electrician for financial management advice? Do you ask your kids little league coach for help in diagnosing medical conditions that require MRI or CAT scans?

Why do photographers always want to ask other photographers Legal advice?

At LEAST advise these people to seek LEGAL counsel on trademarks, copyright, etc.

- BTW - you completely failed to mention anything about class status.

3:49 PM  
Blogger argv said...

While I agree with the sentiment that people shouldn't necessarily ask photographers about legal advice, it's a natural assumption to think that photographers have had some experience facing certain circumstances (as the poster here asked), and, in turn, it would be reasonable to expect them to have empirical wisdom, if not authorotative truths.

Legal issues regarding trademark and copyright law are not only extremely complex, but they are vaguely written because it's hard to codify precisely where one person's rights end and where another's begins. Hence, any given lawyer's "advice" is only as good as his ability to defend his position in court.

And, unlike plumbers, auto mechanics and electricians, the legal realm requires extremely specialized knowledge and experience as a subset of "law" itself, so just "asking a lawyer" is more likely to yield just as inaccurate truths as asking photographers who have not had the empirical experience either. (The difference being that lawyers will sound a lot more convincing when they give advice on an issue they may actually know little about.)

In the end, by the time you get that far, you will have spent many thousands of dollars, thereby making it seem all the more reasonable again to have just asked an experienced photographer the question in the first place.

Unfortunately, the net sum of this is that, unless someone is really experienced on the matter -- and lets face it, most lawyers are no more experienced at it than most photographers -- asking ANYONE about subjects like this is risky. It is for this reason that the nature of my post is not so much legal "advice," but more of a pragmatic look at the business realities that you may face. You'll note that I didn't give "legal advice" at all; instead, I present business strategies based on possible legal scenarios.

I might also point out that I rarely advise people to talk with lawyers. It's not just for the reasons noted above, but also because of this catch-22: any photographer far enough along in his career that really does need important legal advice is advanced enough that he'll either already have such a relationship, or knows that he'll need one. People who ask other photographers questions like this are invariably going to be newly emerging photographers, or those who are beginning to evolve and are just now thinking about possible issues they may soon face. Asking other photographers is sort of like dipping toes in the water: it's a taste of what's to come. If/when the day ever comes when they really will need a lawyer, they may be armed with good preliminary info they get from sources like [my blog].

As for your comment regarding "class status"--I have absolutely no idea what you're referring to.


ps. although your note was clearly written in a snide, condescending manner, I replied to it because underneath it all, your fundamental question ("Why not ask a lawyer?") was worthy of a response.

4:55 PM  

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