DISCLAIMER: THIS IS NOT LEGAL ADVICE. I AM NOT A LAWYER. DO NOT DEPEND ON THIS.
Why Do Companies Care?
Companies care deeply about their trademarks. Why? For several reasons:
- Branding. Brands are very valuable business properties, which are carefully built and managed. The unauthorized use of a brand may dilute its value, confuse the public, and harm a company’s reputation.
- Endorsement. If you use a brand in a photo, it looks like the company may have endorsed you and/or whoever is using your photo. Companies have to be careful who the brand is associated to avoid harming the brand.
- Consistency. To remain a trademark, owners must ensure that the brand is used in a consistent manner. Companies have detailed guides on how and how not their brands can be used. If a brand appears in your photo, it can ruin its consistent use and possibly lead to loss of trademark status.
- Law. Under trademark law, an owner must actively defend a registered trademark, otherwise the registration can be lost forever. As an example, Xerox is no longer a registered trademark as the company did not prevent its use to describe general copying. So there are legal teams poised to jump on any potential misuse.
What are “Registered” Trademarks?
Any mark used consistently in business can become a common law trademark. But this is limited to the geographic area in which it is used and only protected under state law, if there is one. To gain national protection under statutory law, a trademark has to be approved by the U.S. Patent and Trademark Office. A trademark owner can then use the ® symbol and enjoy substantial additional rights not available under common law.
For example, my brand, PHOTOSECRETS®, is a registered trademark ( see the details online here). The registration cost me time and money but I can now use the big stick of the law to stop other people from using the same trademark.
|℠||Service mark, for services||℠|
Do I Have To Use the Registered Trademark Symbol?
No, usually. As long as your use of someone else’s trademark does not suggest a connection between you and its owner, then you do not need to include the ® symbol. But if your use could imply some connection, it is wise to clarify things with a disclaimer. For example:
Coca-Cola® is a registered trademark of The Coca-Cola Company.
Do I Have To Write All Trademarks In Uppercase?
Press releases often do this, some companies say you should. But this is not necessary. The owner of a trademark may often display the trademark in uppercase to clearly show what the trademarked text is. For example, as we’ve just found out, my tradedmarked text (or “the Mark in words only”) is PHOTOSECRETS.
Rock And Roll Hall of Fame v Gentile, 1998
Fortunately for us photographers, there happens to be a precedent court case regarding scenic photography and trademark infringement. The court essentially ruled that pictures of buildings do not violate trademark.
The distinctive building of The Rock and Roll Hall of Fame and Museum was approved as a trademark in the state of Ohio in 1996. Also in 1996, photographer Charles Gentile started selling posters featuring his photo of the building. The Museum filed for trademark infringement as well as unfair competition, false or misleading representations, and false designation of origin.
The U.S. Sixth Court ruled that while the Museum’s trademark “might be asserted to prevent the construction of a confusingly similar building,” it was unlikely that the photographer had “made an infringing trademark use of the Museum’s name or building design…” Thus the case was vacated and the photographer could continue to sell the posters.
Case: Rock & Roll Hall of Fame & Museum v. Gentile Prods., 134 F.3d 749 (6th Cir. Ohio 1998).
Other Landmark Cases for Trademark and Photography
Case law has provided for photographers some other examples of what can and cannot be protected by trademark law.
Can be protected by trademark:
- Car shapes. The distinctive appearances of Ferrari automobiles were upheld as trademarks (Ferrari S.P.A. Esercizio Fabriche Automobile Corse v. Roberts, 944 F.2d 1235, 6th Cir., 1991).
- Posters. A parody of “Enjoy Coca-Cola” that read “Enjoy Cocaine” was ruled to be trademark infringement (Coca-Cola Co. v. Gemini, 346 F. Supp. 1183, E.D.N.Y., 1972).
Not protected by trademark:
- Celebrities. You are free to photograph celebrities without infringing a trademark as “[not] every photograph of [Babe] Ruth serves [the] origin-indicating function.” (Pirone v. MacMillan, 1990, and also Estate of Presley v. Russen, 1981).