Photo Attorney

Jan 5, 2006

Trademarks in Photographs

Photographers often take pictures that contain trademarks or trademarked items. Trademarks are words, symbols, packaging, colors, sounds, scents or a combination of these that allow people to identify the source of goods or services. So when you include a trademarked item in a photo, have you infringed the trademark? The University of Alabama apparently thinks so.

Daniel Moore is well known for painting some of the greatest moments in Alabama's football history. They usually include one of Alabama's trademarks - a script "A," Alabama's mascot (an elephant), or the words "Crimson Tide," "Bama," and "Roll Tide." Moore's prints have increased in value over the years, with some now worth $2,500. He has a strong following of Alabama fans. But he has sold his artwork for years without a licensing agreement with the University. After several threats, the University sued Moore this past spring, demanding that he pay royalties on all of his paintings.

Licensing of trademarks is a source of tremendous income for many businesses, especially sports teams. Further, the University claims that Moore's failure to pay royalties dilutes the value of their assets.

In a similar case in 1998, Tiger Woods sued Rick Rush's company for selling copies of a print of the golfer without his permission. The artist successfully claimed that First Amendment rights trumped the celebrity's ability to enforce the rights to his likeness. But that case turned on an analysis of Woods' rights of privacy/publicity. Here, the issue is whether trademarks have been infringed.

Trademarks are infringed when there is a "likelihood of confusion" as to the source, affiliation, or sponsorship of the good or service. The evidence often used in such cases is an extensive survey of consumers as to whether they are confused about who is the source of the product. According to polls taken by the University of Alabama, more than 10 percent of those asked believed that the school was sponsoring or approving some of Moore's unlicensed work.

"All this is hurtful to Daniel because they've made it seem as if he has made himself wealthy by traveling on the tradition of Alabama as if he is a hitchhiker who has no merit of his own," said his attorney, Stephen Heninger. "Both Daniel and the University have benefited from his work."

Moore has promised other artists that he will not settle the case if it infringes upon his First Amendment rights. If he loses, he'll have to pay three times the amount of royalties he would have paid the University if he had licensed the prints. Interestingly, the University has not sued other artists who have produced work without the University's approval.

It will be some time before the court issues its opinion. In the meantime, be aware that when you sell photographs of trademarks or trademarked items, the trademark owner may aggressively attempt to stop you from selling your work or seek licensing fees from you.

Take my advice; get professional help.