Topic: Trademark, Copyright
Time Investment: 5 Minutes
Suggested Product: BizRevamp®
"We would love a Minnie Mouse session!"
"Ohhh, can you do a Superman set?"
"My daughter LOVES Barbie! Can you make her Barbie?"
Creative requests from your clients are going to happen..but it is up to YOU to ensure that YOU are doing the legal thing.
Understand, we are providing this information for you, because we want you to stay out of legal hot water. Wouldn't you rather be focused on making money and developing client relationships than cleaning up a legal mess? Well, that starts with knowing the legalities before you do it.
TL;DR - Cause we know many of you want. You can do inspired sessions, but not rip offs of specific elements.
The biggest question in the room before we start....I'm just a small-time photographer. Will a large movie company really care?
Yes! Last year, the Grinch sessions were highly sought after legally. You can read more here.
- Trademarks are source indicators, like logos and names. They provide legal rights to stop someone from using the same or similar mark CONNECTED TO a same or similar goods or service. The goal? To prevent consumer confusion and protect brands.
- Copyright is protection of the artwork itself, such as logo, photographs. For a work to qualify for copyright protection under current US copyright law, it must be an original work of authorship, fixed in a tangible medium of expression. “Original work of authorship” means it must be independently created by the author and possess some minimal degree of creativity.
Professional photographers utilizing terms like “Disney”, "Marvel" or the use of the related costumes in marketing for business and/or the selling of photographs to clients will not be excepted under any standards, such as “fair use”.
Basically, you cannot use any copyrighted or trademarked material in your marketing and/or for selling in photographs to client.
Let’s dig into each of these.
Under the Copyright Act, “copyright ownership ‘vests initially in the author or authors of the work,’ which is generally the creator of the copyrighted work.” 17 U.S.C. § 201(a). The owner of a copyright has a number of exclusive rights, including the right “to prepare derivative works” based on its original work of authorship, 17 U.S.C. § 106. Not every comic book, television, or motion picture character is entitled to copyright protection. We have held that copyright protection is available only “for characters that are especially distinctive.” Halicki Films v. Sanderson, 547 F.3d at 1224.
A character may be protectable if it has distinctive character traits and attributes, even if the character does not maintain the same physical appearance in every context. As the Eighth Circuit has recognized, “the presence of distinctive qualities apart from visual appearance can diminish or even negate the need for consistent visual appearance.” Warner Bros. Entm’t, Inc. v. X One X Prods., 14 DC COMICS V. TOWLE 644 F.3d 584, 599 n.8 (8th Cir. 2011).
Bottom line: Striking similarities in the distinctive qualities used lends to an argument of copyright infringement.
The Lanham Act defines a trademark as “any word, name, symbol, or device, or any combination thereof” that a person or business either uses in commerce to distinguish their product or service from others or “has a bona fide intention to use in commerce” when they apply for registration. 15 U.S.C. § 1127. Registering a trademark with the U.S. Patent and Trademark Office (USPTO) is considered to be evidence “of the registrant’s exclusive right to use the registered mark.” 15 U.S.C. § 1115(a).
When photographers are using terms that are same or similar to a trademark in connection with photographs = federal trademark infringement. Some alternatives could be the use of things like “superhero”, where the terms are protected.
They have many other trademarks in variations for the Grinch and other Dr. Seuss popular books – ranging from titles to logos to phrases. If you want, you can take a gander at the approximately 500 entries in the federal United States Patent and Trademark database.
There are exceptions to use, such as fair use and parody.
Bottom line: Don’t advertise sessions with trademarks.
Why should photographers care?
Well, besides the obvious of receiving a cease & desist, if you don’t comply, you may owe a registered trademark holder disgorgement of your profits (yes, this could include all the monies you made on that session including any sessions and profits made during the use of those photographs in marketing) AND attorneys fees. And I’m gonna tell you now, you’d potentially have to pay your attorney AND their attorney.
It isn’t just large corporations doing this (i.e. fulfilling their duties to police or lawful enforcement of intellectual property rights), I see it daily through TheLawTog® and through my intellectual property firm. It doesn’t matter if you go viral or not. Book a session or not. If you infringe, you WILL get caught.
Finally, and maybe most importantly, we should respect other creators. As creators ourselves, we want to be able to control and have our work respected. Do it to others.
What can photographers do?
- Don’t use any trademarked or copyrighted materials in your marketing or sales to clients.
- Do “inspired” sessions – take general elements that can create a scene without infringing on the exact protected marks.
- Get permissions, if available. It seems that Counsel for Dr. Seuss Enterprises is recommending to go to Costume Specialists, an authorized character appearance vendor.
- YOU CAN STILL TAKE PERSONAL PHOTOGRAPHS OF YOUR KIDS IN COSTUME. The point of this is- you can’t use Dr. Seuss’ intellectual property for commercial gain.
How can I do Disney or comic book characters?
Create an inspired scene with color-blocking and minor elements that aren’t cumulatively distinctive. Such as, a Princess-who-lost-her-slipper shoot could contain a pale blue dress, high heels, and a blue headband. However, once you purchase or rent a costume that is very similar in the distinctive aesthetics, you begin to infringe upon potential rights.
What if the client wants and/or brings a costume to the session?
Costumes have an implied license of display. If the photographer is not soliciting the theme and/or costume, then there may be little (if any) liability to the photographer. You may be legally able to use those photographs in portfolio and marketing, but the conservative advisement is to not do it.
Can I use the costume I bought and just not charge my clients?
Potentially, but I wouldn’t risk it by posting the photographs. Just remember, even if you’re IN the right, if you get sued, you have to pay time and money to show you’re in the right.
Can I use the costume & have the sessions be a fundraiser for a non-profit?
Anything that is going to look like commercial usage is going to be at risk for potential legal issues. Non-profits are not excused from laws applied to commercial activities. Non-profits can’t claim their tax status as a defense to infringement.
Can I “wink wink nudge nudge” my clients to come in costume?
I wouldn’t. Evidence would show your “wink wink nudge nudge” as a solicitation PLUS intention to willfully hide it knowing it was infringement.
What if I buy a backdrop/costume?
Assuming the backdrop/costume doesn’t have proper licensing from the rights holder, you may be liable. If you are looking for a backdrop to do an inspired theme, watch for protected elements (i.e. book covers, characters, etc.). A general backdrop that gives an idea of “Whoville” for the Grinch may not be infringement. But an exact replica of the Who town from the movie would be infringement.
Can I make up a similar character?
Why not? So long as you’re not infringing upon the distinctive characteristics, as outlined in the analysis above, you can create new characters that don’t infringe.
What if I buy stuff for my personal photos?
See above. It’s about commercial usage. Don’t solicit infringing uses. Don’t advertise with infringing uses. Use it personally, yes.
Have more questions?
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