The Mean Green Viral Legal Machine - Don’t be a grinch
So, we've seen it go viral in the photography industry. The cute Christmas photographs with the mean green guy. Yes - the really grinch-y one.
Super cute photos? Sure.
Super cute cease and desist received? Not so much.
There is major upheaval in the photography community the last few weeks about legal issues surrounding these photographs, the legal rights and what to do now.
This article is from THE legal resource for photographers (HINT: No one else is a lawyer/photographer and dedicated to bringing you this information). As an intellectual property attorney and photographer, this information is my jam.
This information is from what we have been able to gather from the internet and community groups. At this time we have not discussed with Dr. Seuss Enterprises, nor any of the photographers in question. Take this educational information to learn how to have fun with sessions in future without infringing upon another's intellectual property rights.
Once you've read this blog, it's time to enroll in Legally Cover Your (Social Media) Assets so you don't get a visit from the mean one!
Recently, a photographer went viral with beautifully done photographs (featured places such as People.com).
The first legal issues that started popping up were other photographers taking and using these photographs to advertise "Grinch" sessions to their potential clients. (Yes, that's copyright infringement of that photographer). But to add more to this, upon further digging it seems that some of these original photographers photographing the "Grinch" sessions were committing some of their own intellectual property violations.
Then what happened?
Emails have been sent and received from Dr. Seuss Enterprises corporate counsel, Ms. Nicole Gates. Yes, lawyers do email. We no longer use carrier pigeon or corked bottles in the ocean to send official communications.
I have not yet verified the legitimacy of this notice. However, I have verified by LinkedIn that Ms. Gates is Corporate Counsel for Dr. Seuss Enterprises and this cease & desist is very similar to what one would receive as a legitimate demand.
This email was received, photographers freaked out.....and here we are!
Dr. Seuss History Lesson
The originally published book “How the Grinch Stole Christmas” was written in 1957 by Theodor S. Geisel (pseudonym Dr. Seuss). The copyright in the original book is owned by the publisher, Random House Inc. The animated television special was created in 1966 by Metro-Goldwyn-Mayer, Inc (now, Turner Entertainment, Inc.). In 2000, the movie rights were acquired by Universal and the copyright in the movie “Dr. Seuss’ How the Grinch Stole Christmas!”, directed by Ron Howard, is owned by Luni Productions, a Universal production company.
At the time of publication, there is debate as to what parties have the legal rights and enforcement rights of specific marks and copyrightable works. The Cease & desist came from Dr. Seuss Enterprises but there exists potential that some enforcement is more properly to be enforced by another party.
A Peek at the Legalities
Before I can tell you who is right or wrong, you need to understand how trademark and copyright laws work. Being that we are THE go-to legal resource for photographers we have free videos and guides on this.
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I know you don't have time to watch those, so here is a super high-level crash course.
- 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.
As professional photographers utilizing terms like "The Grinch" or the use of the Grinch costume in marketing for business and/or selling of photographs to clients that 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.
Copyright Issues (The Grinch Character)
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).
The Grinch costume in question undoubtedly looks very similar to the distinctive qualities in the Jim Carrey Grinch movie character of the Grinch, released in 2000. There's even great argument that the copyright protections could be bestowed from the original publication of the Grinch, assuming the protections were maintained properly, but we will focus from the most recent and most relevant (The Jim Carrey version).
There is no mistake that the costume in the linked session above is very well made and recreated the essence of the Grinch. Even with slight variations in green toning and the fingers, there is no mistake what character this would be. Combining the distinctive elements of santa suit, green fur, clearly disgruntled face, etc. all lead to potential conclusive that this setup is not an "inspired" set but, rather, starts creeping into a direct infringement through the realistic portrayal of distinctive qualities that makes the Grinch unique.
This set up of the Grinch also is strikingly similar to the currently used Grinch in Grinchmas at Universal.
Bottom line: Striking similarities in the distinctive qualities lends to an argument of copyright infringement.
As with any legal discussion, there are arguments for all sides. We welcome them - but first keep reading!
Trademark Issues (Use of the word mark "The Grinch")
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).
Dr. Seuss Enterprises is the lawful trademark owner of the Word Mark "The Grinch" connected to many things, including photographs.
When photographers are using terms that are same or similar to "The Grinch" in connection with photographs = federal trademark infringement. Some alternatives could be the use of things like "the mean green one", where the terms are protected.
I do think that perhaps that there wouldn't be confusion that a solo-photographer is Universal, as they have a yearly Grinchmas.
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 entires in the federal United States Patent and Trademark database.
There are exceptions to use, such as fair use and parody. You can find where parody prevailed over the Grinch here.
Bottom line: Don't advertise sessions with trademarks.
Is Dr. Seuss just "a mean one"?
Nope, guess what y'all? Besides the fact that they are serious about their legal rights, under trademark law, they have a requirement to police their marks. In contrast, copyright does not have this requirement. However, here at TheLawTog®, we believe all creators should take intellectual property serious, stand up and enforce the rights they are provided by law - whether required or not.
Photographers need to refrain from using costumed characters and any protected marks without permission.
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 www.costumespecialists.com, 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.
Why doesn't Dr. Seuss give out permissions to photographers?
A few photographers reached out to the licensing department at Dr. Seuss enterprises and were informed that they could not get permission. Why? Aren't they the ones that give permissions? Yes. They are, but they have to consider existing contractual licensing agreements with current licensees who produce items in those categories.
They also provide permissions as identified in the FAQ: "Random House Children’s Books is pleased to offer full character costumes to bookstores and libraries for three classic Seuss characters—The Cat in the Hat, The Grinch, and The Lorax. To rent a costume, or for more information, please contact Costume Specialists at 1-800-596-9357. You can view the costumes at www.randomhouse.com/kids/costumes/"
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 but 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 not to.
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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At this time, I'm waiting on Dr. Seuss Enterprises' corporate counsel to respond to my email for comment. Understand, there is a lot of additional legal information to provide on this but would overwhelmingly burden this article.
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