Trademarks Logos and The Big Game

I am writing this as the Super Bowl® approaches. Every year around this time I hear lots of commercials that refer to the Super Bowl but that don’t use that name. Instead, they refer to “The Big Game” or some other substitute. The reason is that the companies that sponsor these commercials are afraid of being sued by the National Football League for trademark infringement, since the NFL owns the trademark rights to the “Super Bowl.”

All of that got me thinking about the potential problems related to photographs that show trademarks and logos. Obviously, it must be legal to make and license at least some uses of photographs showing trademarks and logos, or else you would never see photographs taken in places like, say, Times Square, which is just wallpapered in trademarks and logos. On the other hand, if all of these advertisers are afraid even to refer to the Super Bowl by name in their commercials, they must have some good reason to be afraid. So, what are the rules, or at least the guidelines for using trademarks and logos?

In order to understand and be aware of the issues, you first need a tiny bit of Trademarks 101. Generally, trademarks are marks (usually names, phrases, logos and designs) that are actually used in trade and that serve to identify the source of a product. For example, if you see a soda bottle in the shape of the traditional Coca-Cola® bottle that is filled with brown liquid, you are usually pretty sure that it’s really a Coke® and that it came from the Coca-Cola Bottling Company. There is about zero chance that you were confused as to the source of the beverage or that you reasonably thought it came from Pep-
siCo® or some other soda manufacturer.

Obviously, that kind of brand recognition has great value to the brand owner. Interestingly, though, trademark law did not originate as a way of creating intellectual property for the trademark owners. Rather, it was intended, and serves, as a form of consumer protection. By being able to rely on trademarks and logos to assure you of the source of a product, you can buy with some confidence. That is why trademark owners and the government—and most consumers—tend to be very unhappy when trademarks are pirated and goods are counterfeited.

All of this may be very interesting to intellectual property lawyers, but what does it have to do with photography? In terms of making photographs, really very little. However, when it comes to using and licensing the use of those photographs, it has a lot to do with whether you end up receiving a cease and desist letter from some huge law firm, or even worse, end up getting sued by one of them. This is where it becomes important to have at least some idea as to what you may and may not do.

Let’s say you bought a bottle of Crystal Head® Vodka—a skull-shaped bottle that is protected by trademark laws—at the liquor store and thought it would make a really nice photograph if you lit it just right. So you put it on a light table, hit it with the perfect lighting and gels, and voilà: a spectacular photo! But what can you do with that spectacular photo, besides hanging a print in your studio?

Can you put the photo on your Web site and/or in your portfolio without bringing down the wrath of the law firm of Dewey Cheatem & Howe and/or Dan Aykroyd (who is actually one of the principals of the company that makes Crystal Head Vodka)? As I always like to say, the answer to every question ever posed to any lawyer is—it depends. In this case, it depends on exactly what your Web site and your use of the photo look like. If someone looking at the photo on your Web site would reasonably, but incorrectly, get the impression that there was some relationship between you and the makers of Crystal Head Vodka, e.g. that they approved of the use, that you were Crystal Head’s photographer, etc., then you could have a real problem on your hands and would be well advised to hire some good legal representation fast. However, if it looked as if your Web site were simply a virtual art gallery, not an advertising vehicle for your business, and no reasonable person would assume that there was some relationship, affiliation or other connection between you and the makers of Crystal Head Vodka, you would probably be home safe.

What else can you do with it? Because of our First Amendment right of free speech, you can license it for editorial uses. However, you could not safely license it for any commercial use that might make it appear that the photograph or the permission to use it came from the makers. For example, you could probably license it to your client to produce a calendar illustrated with beautiful photographs of interesting bottles. Most people would not assume that there was any relationship between you or your client and the owners of any trademarks involved. However, if you licensed it to be printed on a line of martini glasses, you might well have some trouble on your horizon.

There are lots of other questions relating to the intersection of trademark law and photography, but space limitations force me to save discussing them for a future column. In the meantime, I hope you enjoyed “The Big Game.” As for me, my favorite teams all got bounced in the playoffs, so I will have had to watch it with purely academic interest—and a cold glass of Crystal Head Vodka in my hand.

Victor S. Perlman, Esq. is General Counsel to the ASMP. He has also served on the Boards of Directors of the Media Photographers Copyright Agency, Inc., the Copyright Clearance Center (CCC) and the Philadelphia Volunteer Lawyers for the Arts. Victor has frequently appeared as an author in various publications, including Communication Arts and Popular Photography and is co-author of Licensing Photography, (Allworth Press). He has testified in Congressional hearings and proceedings held by the U.S. Copyright Office and the U.S. Patent and Trademark Office.