A Lawyer’s Random Musings on Intellectual Property and Other Legal Stuff, Mainly for Visual Artists and Occasionally for Other Creative People.
Question: Malls, shopping centers, and similar places typically prohibit photography to protect the copyrights and trademarks of stores, vendors and manufacturers that are prominent in such places. I photographed a public event in such a location, by invitation and permission. Many of my photos show signs and trademarks in the background. Some photos were used in news reports and reproduced online and in print. Some will be used by the event organizer for future publicity.
I wish to use some on my website and in printed material for soliciting photo assignments. I expect to author a book about my work and expect to include some of these images. Which of these uses can be considered problematic and might arouse claims of improper use.
Answer: Wow. That’s a lot of questions. I’ll try to break the analysis down into digestible portions. My initial reaction is, unless the photos are “works made for hire,” or you sold (or otherwise transferred) the photos along with exclusive copyrights, you are probably ok using your photos however you like. But do read the rest of the article, because there are actually some possible issues. The signs and logos could present trademark infringement issues, but not if they are, as you say, in a cityscape background stuffed full of other trademarks and signs.
Private or public space: You are taking photos in a shopping center. The basic rule is you can take photos from a public place. However, if you are in a privately owned space, and shopping malls are usually privately owned, the owner can, to some extent, limit your freedom of speech, and place limits on other activities that happen on their property, but they can’t limit everything. See this article for a quick review and explanation of some of the relevant cases:
Because of the use by the public for shopping, eating at establishments that sell food, and so on, it is a private/public mixed space. Your photography rights may vary from state to state, depending on the constitutional and other law of that particular jurisdiction. It’s a fuzzy area of law, but this probably is not an issue you need to worry about, since you were invited to be there with your camera. It appears you probably have permission to take photographs in the mall, at that event.
The invitation to take photos. Let’s take a quick look at agency law. Let’s assume that to begin with, the mall Owner is the only person who has the right to give you permission to do photography in the mall. Let’s also say that Owner delegated to Mall Manager authority to manage the mall, and as part of the management contract, Mall Manager has authority to permit photography (or deny permission). Perhaps Event Planner didn’t think about making sure the event contract included photography rights, so in this hypothetical situation, photography is not addressed in the event contract.
Who has actual authority to invite you take photos, in this situation? Owner or Mall Manager, but possibly not Event Planner. I expect that usually event planners do make sure they have the photography rights covered in their contracts, but you don’t know unless you see the contract, or at least ask. Chances are whoever invited you to take the photography did have authority to do so.
However, it might be good for readers who want to do event photography to keep in mind that if they ask permission to do photography, they need to make sure they receive permission from someone who is authorized to give it. It is probably not enough to walk into the nearest store and ask the store clerk if it’s ok to take photography in the mall. The store clerk may not know the answer, or have the authority to tell you that photography is ok.
Work “Made for Hire” and copyright law. If the mall, or someone else hired you to take photos, you might not own the copyrights to the photos. You will know if you are doing a work made for hire because there will be a contract in place, either an employment contract, or another form of contractual relationship.
“A copyrightable work is “made for hire” in two situations: • When it is created by an employee as part of the employee’s regular duties • When a certain type of work is created as a result of an express written agreement between the creator and a party specially ordering or commissioning it. When a work is a made for hire, the hiring or commissioning party is considered the author and the copyright owner.” https://www.copyright.gov/circs/circ30.pdf
If you don’t own the copyrights because your photography is a work made for hire, then you have to treat the photography as somebody else’s copyrighted work. You may need to ask, and receive, permission from your employer or client to use the photos you took on your website / printed / promotional materials. For the rest of this article, let’s assume your photos are not works made for hire.
News articles, etc. and copyright law. Under fair use, newspapers can probably use your photos with their articles. They especially can use the photos if they asked you for them, and you gave them permission to use the photos. Unless you sold the photos, and you sold the exclusive copyrights along with the photos, you still own the copyrights to the photos.
Under the copyright statute, exclusive rights means whoever owns the copyrights (that’s you) can exclude everyone else from using the photos, as follows:
“106. Exclusive rights in copyrighted works
Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following:
(1) to reproduce the copyrighted work in copies or phonorecords;
(2) to prepare derivative works based upon the copyrighted work;
(3) to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending;
(4) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and motion pictures and other audiovisual works, to perform the copyrighted work publicly;
(5) in the case of literary, musical, dramatic, and choreographic works, pantomimes, and pictorial, graphic, or sculptural works, including the individual images of a motion picture or other audiovisual work, to display the copyrighted work publicly;…”
Of course if whoever invited you to do the photography did not expect you to exclude them from using the photographs, you might have a very upset person on your hands if you fully exercise your copyright law based rights to exclude.
If you sold the photos, but you did NOT expressly sell exclusive rights, then you still own the copyrights. Unless you transfer exclusive rights, you can allow anyone to use your photos without destroying your own ability to use the photos, and without destroying your right to keep third parties from using the photos.
“Transfer of Copyright Ownership Any or all of the copyright owner’s exclusive rights, or parts of those rights, can be transferred. The transfer, however, generally must be made in writing and signed by the owner of the rights conveyed or the owner’s authorized agent. Transferring a right on a nonexclusive basis does not require a written agreement. You can bequeath a copyright by will or pass it along as personal property under applicable state laws of intestate succession. It can also be conveyed by operation of law. You can “record” a transfer of copyright ownership with the Copyright Office through its Office of Public Records and Repositories. Although recordation is not required to make a valid transfer between parties, it does provide certain legal advantages. For more information, see Recordation of Transfers and Other Documents (Circular 12).” https://www.copyright.gov/circs/circ01.pdf
Basically it works the same way for everyone who used your work for something, the newspapers, the event organizers, the everyone who tacked photocopies of your photos to telephone poles and scattered your photos far and wide for all the world to see and post, and re-post on every social media site known to man. They did whatever they did with the photos, and presumably you’re ok with that, but unless you somehow let them have exclusive rights or you expressly abandoned your work (you would know if you did either of those things), you continue to own the copyrights to your photos.
“First Published” date. I assume you’re not planning to sue any of these people for copyright infringement. It might be legal for you to do that, but that would not be very nice thing to do, and it might put an abrupt end to you ever getting invited to shoot public events again. If you do have ideas about going that route, suing people for copyright infringement, you will need to register your work with the Copyright Office at some point in order to get some things like statutory damages and attorneys’ fees. You may want to consider registering your work anyway. Be aware that the “first published” date starts some clocks, both for how you prepare your application package for registering your work with the Copyright Office, and for enforcing copyright infringement.
“What is publication?
Publication has a technical meaning in copyright law. According to the statute, “Publication is the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display constitutes publication. A public performance or display of a work does not of itself constitute publication.” Generally, publication occurs on the date on which copies of the work are first made available to the public. For further information see Circular 1, Copyright Basics, section “Publication”.” https://www.copyright.gov/help/faq/faq-definitions.html#publication
Now let’s look at all those signs and buildings with trademarks in the background that sneaked into your event photography. Trademark doesn’t work the same way as copyright law.
I think of a trademark as similar to an artist’s signature on a painting. The trademark, like the signature, tells everyone who looks at the product, or the painting, who made it. That’s not anywhere in the law, that trademarks are like signatures, it is a helpful way to understand why trademark law is fundamentally different from copyright or other areas of intellectual property law, and to understand when you’re likely to run into trademark issues.
For a trademark infringement to exist, there must be some form of “likelihood of confusion.” That means the public might get confused about who made, or who authorized, the product. There is no bright line rule regarding how prominent the image needs to be to create “likelihood of confusion.” It’s more of a continuum, with obviously infringing images on one end, and obviously not infringing images on the other, and a very big gray area in the middle.
The short, simple answer is if you took a photo that has a cityscape (or similar) in the background, and there are all kinds of little tiny logos and signs in the background, you’re probably not going to have trademark infringement problems. Nobody will get confused and think that your photo was taken or authorized by any one of the firms whose logos appear in the picture.
If, instead, your photo features one logo prominently, or otherwise presents a firm’s trademark in such a way that a viewer could get confused, could think that maybe the firm took the photo, or authorized the photo, then you might end up falling foul of trademark law.
If you’re worried about whether one or more of your photos has a trademark in it that might cause “brand name confusion,” then some possible ways to approach the problem might be:
(a) simply ask the trademark owner for permission to use the photo (with the logo in it);
(b) don’t use the photo, pick a different one;
(c) use a photo editor to blur out the logo / other trademarks; or
(d) obtain the services of a lawyer to look at the photo and provide you with an opinion regarding whether you are likely to get sued if you use that particular photo with the trademark in it for X purpose.
The bottom line is these are your photos, unless they are works made for hire, which you probably took with the permission of the venue. You only really need to worry about what the newspapers and everyone else did with the photos if you sold (or otherwise transferred) the *exclusive* rights to the photos to a newspaper or someone else, and you will know if you did that. Other people’s use of your photos could impact the publication date of your photos, which could possibly affects copyright registration paperwork, and some litigation deadlines, so you might want to be aware of who published your work first, and what date that happened.
As far as the signs and logos are concerned, under trademark law, if all you did was capture some trademarked logos and signs in the background, and there is no possibility that how you included the trademarked material makes it look as if one of the trademark owners is the photographer or authorized the photograph, then chances are you won’t run into trademark infringement issues. If, on the other hand, you prominently featured a trademark in your photo, then you might want to think about whether how you captured the trademark could cause “likelihood of confusion” sufficient to support a trademark infringement claim.
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