Legal Issues Regarding Objects, Buildings, Trademarks, Etc.

Posted on 3/30/2004 by Nancy e. Wolff | Printable Version | Comments (0)

    The following article prepared by Nancy E. Wolff, Counsel for PACA (Picture Agency Council
    of America) outlines the legal risks according to current U.S. law when photographing people
    at work or play using ordinary objects. The second part of the article also deals with
    photographing buildings, trademark protection, trade dress and fair use. This article was
    first published in the PACA newsletter and is provided compliments of PACA .

Nancy E. Wolff

One of the purposes of stock photography is to depict ordinary objects and people at
work and play engaging in typical activities. People attend theatre carrying Playbill
magazine, kids play basketball using recognizable brand products, doctors examine
patients with sophisticated equipment and lawyers work in offices lined with
bookshelves filled with casebooks. Many royalty free photographs depict individual

objects displayed against a white background. Above are examples of claim letters I
have dealt with on behalf of PACA members.

Increasingly, members are complaining that their client's are receiving cease and
desist letters from manufactures of the objects depicted in photographs. A manufacturer

will object to the end-user's use of the photograph of the object it manufactured. The
manufacture typically alleges in its letter violation of "trademark" and "asserts trade
dress infringement" or makes a vague reference to the use of the photograph "violates
intellectual property rights" because it recognizes its object in the photograph.
Whether or not the claim has any merit, it certainly causes a problem with the client,
who expects to license a photograph without any claims. In most cases, the use of a
photograph of an object will not violate any state or federal law. Nonetheless, the
claim can damage the client relationship.

This article examines what rights, if any, an owner of an object has in a photograph.

Copyright Protection

Can copyright law prohibit the reproduction of an object in a photograph by the

Copyright protects certain three dimensional works under Section 102 (5) of the
Copyright Act (Title 17 United States Code), which includes pictorial, graphic, and
sculptural works. But what ordinary objects are "artistic" enough to obtain copyright

The Copyright Act defines "pictorial, graphic, and sculptural works" to include
two-dimensional and three-dimensional works of fine, graphic, and applied art,
photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and
technical drawings, including architectural plans.

Examples of three-dimensional objects that are not mechanical or utilitarian are
globes, toys and games. This would include a toy model, such as a model airplane or
boat. A toy, such as a doll, is also a graphic or sculptural work.

The protection offered these types of works is limited to artistic craftsmanship as to
form, but not to their mechanical or utilitarian aspects. According to the Copyright
Act, "the design of a useful article is considered a pictorial, graphic, or sculptural
work only if, and only to the extent that, such design incorporates pictorial, graphic,
or sculptural features that can be identified separately from, and are capable of
existing independently of, the utilitarian aspects of the useful article."

An example of a design that is separate from the utilitarian aspect arose in an early
Supreme Court cases under the 1909 Copyright Act involving the base of a lamp that was
a sculptural figurine. The figurine, as an object if removed from the lamp, would
qualify as a sculptural work. It was therefore given copyright protection, even though
it served a functional use, as a lamp base.

But does a photograph of a copyrighted object infringe the underlying object?

Copyright protection would protect the designer of the lamp described above from having
a competitor copy the lamp and sell it. But what if the lamp was sitting on an end
table next to a couch, and was only shown in the back corner of a living room
photographed for an interior design magazine? The owner of the house could give the
photographer permission to enter her home and take photographs of the interiors.
However, merely purchasing the lamp does not transfer any copyright ownership to the
purchaser. The homeowner could not effectively give permission if it was required under
copyright law to photograph the decorative lamp.

What rights does the copyright owner have in this scenario? A copyright owner of a
pictorial, graphic or sculptural works, subject to limitations of fair use and other
statutory exemptions, obtains exclusive rights to authorize the reproduction,
distribution, display, performance and the creation of derivative works, during the
term of copyright.

What constitutes a derivative work under the Copyright Act is the subject of much
confusion and misunderstanding. The Copyright Act defines "derivative work" as a work
based upon one or more preexisting works, such as a translation, musical arrangement,
dramatization, fictionalization, motion picture version, sound recording, art
reproduction, abridgment, condensation, or any other form in which a work may be
recast, transformed, or adapted. A work consisting of editorial revisions, annotations,
elaborations, or other modifications, which, as a whole, represent an original work of
authorship, is a "derivative work".

A photograph of a three-dimensional object can be considered a derivative work under
Section 106 of the Copyright Act that lists the exclusive rights of a Copyright holder.
However, if the copyrighted object is not the predominant subject of the photograph or
if only a cropped portion of the work is displayed as part of the background of the
composition, the photograph of the interior is an independent work and is not
derivative of the copyrighted object. In this scenario, the lamp is one of many
elements in the room.

Arguably, the photograph has not adapted, transformed or recast the lamp. Another
argument is that the lamp is so incidental that the photographic representation is
minimal, or in legal terms "de minimus".

Similarly, to be a derivative work, the underlying object must be subject to copyright.
In a case involving the photograph of a Skyy vodka bottle, the court stated that the
photograph of the bottle was not a derivative work, because the bottle, even if it had
trade dress protection, was a useful object and not subject to copyright.

Likewise, in a case involving a photographer who created photographs of a company's
decorative frames, who thereafter sued when the company used the photographs beyond the
intended scope without consent, succeeded in a copyright infringement claim against the
manufacturer. The manufacturer tried to defeat the infringement claim asserting that
the photographs were derivative works because the photographs merely depicted the
manufacturer's frames. The court disagreed and found that the photographs were original
works subject to copyright protection.

In the case of a work lawfully reproduced in useful articles that has been offered for
sale or other distribution to the public, copyright law does not include any right to
prevent the making, distribution, or display of pictures or photographs of such
articles in connection with advertisements or commentaries related to the distribution
or display of such articles, or in connection with news reports.

However, photographs that contain predominant elements of a copyrighted work may be
considered infringing as derivative works. Stock images should not include full images
of toys, dolls or model cars and planes (i. e. where the toy is the sole or primary
subject of the photograph) that could be protected by copyright. In addition, stock
photographs should avoid depicting obvious works of art. For example, a Gap
advertisement featured a person wearing very distinctive eyewear, akin to jewelry. The
creator of the eyewear sued The Gap alleging copyright infringement based on the
photographic reproduction of the eyewear in the photograph. The Gap lost its argument
that the use of the eyewear in the photograph was de minimus because the eyewear was
shot head on and was the "center" of the photograph. (The author of the eyewear had not
registered the work before the infringement occurred so damages were limited to actual
damages or the fair market value of a license to wear the eyewear.)

An open legal issue is whether a photograph that includes outdoor art or sculpture can
be licensed without the permission of the artist. Many cities have outdoor art on
buildings and sculptures that have become so identified to the city that it is
difficult to depict the city without reference to the art or sculpture. If the art is
part of the cityscape, is the reproduction de minimus, so that the photograph is not an
infringement, or is the outdoor art the "central focus" of the photograph such that its
inclusion in the photograph creates a derivative work? There is not enough consistent
case law to support the reproduction of artwork to advise stock libraries to include
these photographs in their collection.

Artwork or sculpture that is incorporated as part of the architecture of a building may
be freely photographed under a provision of the Copyright Act that protects
architectural works. Section 120(a) provides that "the architectural work copyright
does not include the right to prevent the making, distributing, or public displaying of
pictures of the work if the building is ordinarily visible from a public space".
Relying on this provision, Warner Bros. defeated a claim of copyright infringement by
an artist who created sculptural towers that formed part of the structure of a very
distinctive building featured in the film Batman Forever. Permission from the building
owner was obtained but not the artist.

Copyright © 2004 Nancy e. Wolff. The above article may not be copied, reproduced, excerpted or distributed in any manner without written permission from the author. All requests should be submitted to Selling Stock at 10319 Westlake Drive, Suite 162, Bethesda, MD 20817, phone 301-461-7627, e-mail: wvz@fpcubgbf.pbz


Be the first to comment below.

Post Comment

Please log in or create an account to post comments.

Stay Connected

Sign up to receive email notification when new stories are posted.

Follow Us

Free Stuff

Stock Photo Pricing: The Future
In the last two years I have written a lot about stock photo pricing and its downward slide. If you have time over the holidays you may want to review some of these stories as you plan your strategy ...
Read More
Future Of Stock Photography
If you’re a photographer that counts on the licensing of stock images to provide a portion of your annual income the following are a few stories you should read. In the past decade stock photography ...
Read More
Blockchain Stories
The opening session at this year’s CEPIC Congress in Berlin on May 30, 2018 is entitled “Can Blockchain be applied to the Photo Industry?” For those who would like to know more about the existing blo...
Read More
2017 Stories Worth Reviewing
The following are links to some 2017 and early 2018 stories that might be worth reviewing as we move into the new year.
Read More
Stories Related To Stock Photo Pricing
The following are links to stories that deal with stock photo pricing trends. Probably the biggest problem the industry has faced in recent years has been the steady decline in prices for the use of ...
Read More
Stock Photo Prices: The Future
This story is FREE. Feel free to pass it along to anyone interested in licensing their work as stock photography. On October 23rd at the DMLA 2017 Conference in New York there will be a panel discuss...
Read More
Important Stock Photo Industry Issues
Here are links to recent stories that deal with three major issues for the stock photo industry – Revenue Growth Potential, Setting Bottom Line On Pricing and Future Production Sources.
Read More
Recent Stories – Summer 2016
If you’ve been shooting all summer and haven’t had time to keep up with your reading here are links to a few stories you might want to check out as we move into the fall. To begin, be sure to complet...
Read More
Corbis Acquisition by VCG/Getty Images
This story provides links to several stories that relate to the Visual China Group (VCG) acquisition of Corbis and the role Getty Images has been assigned in the transfer of Corbis assets to the Gett...
Read More
Finding The Right Image
Many think search will be solved with better Metadata. While metadata is important, there are limits to how far it can take the customer toward finding the right piece of content. This story provides...
Read More

More from Free Stuff