What should you know about copyright and photographs?

Either you are a photographer or someone who wants to use such works for commercial purposes, it is a good idea for you to know the bare minimum about the copyright protection that every image has.

Why is this so important?

The brief answer is that this can save you from all sorts of legal conflicts especially if you want to use photographs for your business.

Many people regard copyright law as something complex appropriate only for lawyers. But that’s not the case. The copyright basics are easy to be understood and can be quite helpful for every one of us.

So without further ado, what are the main characteristics of the copyright protection of photos:

  1. Copyright protection over images arises automatically – this happens at the moment when a photo is taken, provided that all criteria necessary for receiving protection are fulfilled, that is to say the photo is original, and it is fixed on a medium – print, digital etc.
  2. Who owns the copyright over a photo – this is the photographer that took it. However, in case the photo is made for hire or  in the course of employment, then the copyright can belong to the Commissioner or the employer ( in most of the countries this means mainly that the commercial rights for use of the photo belong to the employer or the Commissioner, the photographer remains the author of the work and keeps some of the moral rights).
  3. What copyright does a photographer have? – these rights are separated into two groups
    • Economic rights – these are rights for commercial exploitation of the photo. This means that every time someone wants to use a photo commercially, permission from the author is required. These rights include:
      • reproduction of the photo in various forms, such as printed publications etc.;
      • to distribute copies of the photo to the public by sale or other transfer of ownership, or by rental, lease, or lending;
      • public display of the photo;
      • broadcasting or other communication of the photo to the public including transmission over the internet etc.
    • Moral rights – they are recognizable in most of the countries around the world including in the US where, however, moral rights are possible only for visual art. Their scope can vary in the different countries but we can summarize the most essential of them such as:
      • the right to claim authorship;
      • to prevent any intentional distortion, mutilation, or other modification of that photo etc.
  4. Fair use of photos – some uses cannot be prohibited by the photographer which means that the relevant photo can be used for free. This includes:
    • Use of photos for non-commercial and private study;
    • Use for non-commercial research;
    • Criticism, quotation, review, and reporting current events;
    • Teaching;
    • In case of supporting disabled people;
    • Parody and caricature;
  5. Duration of copyright over photos – in most of the countries around the world copyright duration over photographs is the life of the photographer + 70 years when his/her hires can benefit from these rights.

That’s it. It wasn’t so bad. Of course this was only some of the most essential moments but nevertheless knowing them is a good first step to avoid potential legal disputes especially from a business point of view.

In case you want to learn more and to be better prepared you can check this new Udemy course: Photography & Copyright: A Complete guide for photographers.

It discusses all the above and even more, topics such as how to license a photograph, what is a Creative Commons license, what photographers should bear in mind when taking pictures and how they can enforce their rights if needed.

Bentley won a dispute against Bentley Life in Japan

The UK Arthur Brand Management Company Limited filed a trademark application in Japan for the following sign in Class 41 – health club services [health and fitness training]; club services [entertainment or education]; teaching and educational services; organization of competitions [education or entertainment]; presentation of movies:

Against this mark an opposition was filed by Bentley Motors Company based on the following earlier trademarks registered in Japan for Class 12 – vehicles:

In addition, the company claimed that these marks have a strong and longstanding reputation in the country which is the reason who the applicant try to take advantage of it by copying the marks and free-riding in general.

The Japan Patent Office upheld the opposition. Although the services in class 41 are completely different from the goods in class 12, the applied for sign and the earlier once are almost identical. This in conjunction with the high level of acquired reputation by the Bentley Motors’ trademarks since 1920, can mislead and confuse the consumers to believe that the later mark has a relation with the Bentley Motors’ business.

Source: Masaki MIKAMI, Mark IP Law Firm.

How weak is a trademark with a low distinctive element?

The General Court of the European Union has ruled in case T–602/19  Eugène Perma Franc v SPI Investments Group.

This case shows the risks when you want your trademark to include common, low distinctive words.

In the case at hand, Eugène Perma Franc applied for the following European trademark for Class 3 – Cosmetics and hair lotions:

Against this application an opposition was filed by SPI Investments Group based on an earlier trademark for the same class:

The EUIPO ruled that both signs are similar to average degree for identical goods and upheld the opposition.

In the appeal, the Board of appeal confirmed this decision stating that although NATURA has a weak distinctiveness, from visual and phonetic point of view the signs are similar for identical goods.

The decision was appealed again.

The General Court, however, disagreed with the EUIPO’s position.

According to the Court, the first part of the signs NATURA, which constitutes 60% of the marks, is a low distinctive element that is used by many companies in relation with cosmetics. Taking into account this, the end of the words “_NOVE” и “_LIUM” being completely different, create an independent impression which overcome the possibility for confusion even in the case of identical goods.

According to the court: “it is clear from the decision-making practice of the Boards of Appeal of EUIPO and the case-law of the Court that, although a company is free to choose a trade mark with a low degree of distinctiveness and use it on the market, it must accept, however in doing so, that competitors are equally entitled to use trademarks with similar or identical descriptive components”.

Migraine and trademarks – an EU Court decision

The European Court has ruled in two cases related to an attempt by Teva Pharmaceutical Industries to register the following European trademarks:

– Moins de migraine pour vivre mieux ( in French – Less migraine to live better)

– Weniger Migräne. Mehr vom Leben ( in German – Less migraines. More from life)

Both marks are applied for in classes:

– 16 Printed materials relating to the treatment of migraines.

– 44 Providing information relating to the treatment of migraines.

The EUIPO refused to register these slogans as trademarks based on absolute grounds – lack of distinctive character. According to the Office these slogans cannot indicate source of trade origin because they have clear and direct messages related to the goods and services in their applications.

Teva appealed before the European Court arguing that both sign are distinctive for these specific goods and services and adding the fact that the company already have registration for a similar slogan but in English – LESS MIGRAINE, MORE MOMENTS.

The EU Court upheld the EUIPO decision as correct. Although it is typical slogans to convey a message to consumers, they can be trademarks only in case they have the necessary level of distinctiveness.

In the case at hand, both slogans have a clear messages that suggests an alleviation of the migraine pain.

In contrast, the English slogan has more blurred and unusual nature which requires additional considerations by the consumers. That’s why it can serve as a trademark sign because it doesn’t provide a direct and clear meaning related to the goods and services.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB за Lexology.

Lehman Brothers trademark is still alive and kicking

One interesting trademark dispute from the United States shows how one trademark protection can be still viable even though it’s owner is not operational.

The case at hand concerns the well-known former investment bank Lehman Brothers and its trademarks. After the bank’s bankrupt in 2008 its Lehman Brothers trademarks were transferred to Barclays Capital which licensed them back to the bank for the purpose of the liquidation procedures.

In 2013, Tiger Lily Ventures Ltd applied for a trademark Lehman Brothers for beer, spirits, and bar and restaurant services.

Meanwhile all Lehman Brothers trademark owned by Barclays expired and they applied for a new trademark Lehman Brothers later in 2013. In the use, trademark rights rise based on real market use of a sign.

Barclays filed an opposition against the Tiger Lily Ventures’ application claiming:

  • a prior trademark use for Lehman Brothers and the fact that the later mark application can cause consumer confusion;
  • that LEHMAN BROTHERS mark was famous and Tiger Lily’s use diluted its distinctive quality;
  • that Tiger Lily’s LEHMAN BROTHERS mark falsely suggested an association with Barclays
  • that Tiger Lily did not have a bona fide intent to use the LEHMAN BROTHERS trademark.

Tiger Lily Ventures counter opposed the Barclays’ later Lehman Brothers mark claiming that all previous marks were abandoned.

The Trademark Trial and Appeal Board concluded that Barclays’ Lehman Brothers marks weren’t abandoned. The reason was that they were licensed back and used for the liquidation of the bank which encompasses different financial procedures and assets deals.

After that, the Board considered both marks as identical. For the goods and services similarity assessment, the Board concluded that even though Barclays’ Lehman Brothers marks had been used for financial services, their is a risk of consumer confusion. The argument for this is that many big companies use their brand for different goods and services apart from their main activities. For example for foods, drinks and for different advertising and merchandising products.

In that regard, it is possible the Tiger Lily Ventures’ consumers to think that there is a link with the famous Lehman Brothers bank taking into account its still existing reputation in the market.

Source: Ira S. Sacks and Rachel B. Rudensky – Akerman LLP 

To what extent decorative signs can be trademarks – an EU Court decision

The European Court has ruled in case C‑456/19 Aktiebolaget Östgötatrafiken v Patent- och registreringsverket.

This case concerns a dispute from Sweden with the following background:

The appellant in the main proceedings is the proprietor of figurative marks registered at the PRV under Nos 363521 to 363523 for services provided by means of vehicles and transport services falling within Class 39 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended.

Those figurative marks are represented as follows:

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On 23 November 2016, the appellant in the main proceedings filed three trade mark applications with the PRV for various services provided by means of vehicles and transport services falling within Class 39 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.

Those three applications were accompanied by the following description: ‘Colouring of vehicles in the colours red, white and orange, as shown’. The appellant in the main proceedings also specified that those applications did not concern the actual shape of the vehicles or the fields of the colour black or grey covering that shape.

By a decision of 29 August 2017, the PRV rejected those applications on the ground that the signs for which registration was sought under trade mark law were merely decorative, that they could not be perceived as signs capable of distinguishing the services covered by those applications and that they were therefore devoid of distinctive character.

The appellant in the main proceedings challenged that decision before the Patent- och marknadsdomstolen (Patents and Market Court, Sweden).

In support of its action, it stated that the marks applied for constituted ‘position marks’, consisting of ellipses of different sizes and in the colours red, orange and white, with a specific size and placed in a specific position on buses and trains used for the provision of transport services.

It provided the following images of the marks applied for, showing the outlines of the vehicles in dotted lines in order to make it clear that the protection applied for does not concern the shape of those vehicles:

The appellant in the main proceedings also submitted that the marks applied for created an impression comparable to that created by the marks registered under N 363521 to 363523 and that the distinctive character of the former should not be assessed differently solely on the ground that they were intended to be placed in a specific manner on the vehicles used for the transport service. More generally, it added that the various transport companies affix their own graphics or colouring to their vehicles, so that users of the services which they provide regard those graphics or colourings as indicators of commercial origin.

The PRV, for its part, argued that protection of the figurative elements of the marks at issue in the main proceedings was sought not in an abstract manner but in order to have those figurative elements appear on the vehicles used by the appellant in the main proceedings. Since the assessment of distinctive character must be carried out as a whole and since commercial transport vehicles are often decorated with coloured motifs, consumers would have to have familiarised themselves with such elements beforehand in order to regard them as a trade mark, failing which they would regard them as decorative elements. In view of the diversity in the colouring and decoration of the transport vehicles used in the economic sector concerned, the signs at issue in the main proceedings could be perceived as an indication of commercial origin only if they differed sufficiently from the norm or customs in the sector, which is not the case.

By judgment of 29 March 2018, the Patents and Market Court dismissed the action brought by the appellant in the main proceedings on the ground that the evidence adduced did not suffice for a conclusion that the colours and shape of the signs for which protection under trade mark law was sought departed to such an extent from the manner in which other undertakings decorate their vehicles, with the result that the view could not be taken that those signs are perceived by the relevant public as an indication of commercial origin.

The appellant in the main proceedings appealed against that judgment to the Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm, Sweden.

That court notes that the fundamental requirement laid down in Article 3 of Directive 2015/2436 is that, in order to be a trade mark, a sign must be distinctive.

In that regard, it points out that, in accordance with the settled case-law of the Court, the perception of the distinctive character of a sign by the relevant public is not necessarily the same in relation to a three-dimensional mark consisting of the appearance of the product itself as it is in relation to a word or figurative mark. Indeed, since average consumers are not in the habit of presuming the origin of goods on the basis of their shape or that of their packaging, it may be more difficult to establish the distinctive character of a three-dimensional mark than that of a word or figurative mark. That is why, as the Court has held, a sign which is indistinguishable from the appearance of the product can be regarded as having distinctive character only if it departs significantly from the norm or customs of the economic sector concerned.

As regards a trade mark designating a service, the referring court states that the Court, in paragraph 20 of its judgment of 10 July 2014, Apple (C‑421/13, EU:C:2014:2070), held that the layout of a retail store can also be capable of distinguishing the products or services of one undertaking from those of other undertakings when the depicted layout departs significantly from the norm or customs of the economic sector concerned.

The referring court observes, however, that, in that judgment, the Court did not specify the conditions under which the requirement for a significant departure from the norm or customs of the sector must be applied in respect of a mark designating a service.

Moreover, it points out that, in that same judgment, the Court did not examine whether the mark at issue was not independent of the appearance of the material objects which enabled performance of the services in respect of which that mark had been registered.

Thus, the national court entertains doubts regarding whether, for an assessment of the distinctive character of signs intended to be affixed to certain parts of the vehicles of a provider of transport services in order to distinguish that provider, such signs must depart significantly from the norm or customs of the economic sector concerned.

In those circumstances, the Svea hovrätt, Patent- och marknadsöverdomstolen (Svea Court of Appeal, Patents and Market Court of Appeal, Stockholm), decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

(1)  Must Article 4(1)(b) of [Directive 2015/2436] be interpreted as meaning that, in the case of an application for registration of a trade mark which designates services and where the application relates to a sign, placed in a particular position, which covers large areas of the physical objects used to perform the services, it must be assessed whether the mark is not independent of the appearance of the objects concerned?

(2) If the first question is answered in the affirmative, is it necessary for the trade mark to depart significantly from the norm or customs of the economic sector concerned in order for the mark to be regarded as having distinctive character?

The Court’s decision:

Article 3(1)(b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the distinctive character of a sign for which registration as a trade mark in respect of a service is sought, which sign is composed of coloured motifs and which is intended to be affixed exclusively and systematically in a specific manner to a large part of the goods used for the provision of that service, must be assessed by taking into account the perception of the relevant public of the affixing of that sign to those goods, without it being necessary to examine whether that sign departs significantly from the norm or customs of the economic sector concerned.

A UK trademark dispute over “FIT KITCHEN”

One interesting trademark dispute from the UK gives us some valuable insights about the UK practice and legislation subtleties when it comes to trademark invalidation.

In the case at hand Fit Kitchen Limited is the owner of the registered FIT KITCHEN trademark used for website food delivery services.

Another UK company Scratch Meals started to use the same mark for ready meals distributed to supermarkets.

A lawsuit followed. The Scratch Meals defense position was that there is no trademark infringement because the earlier mark was registered in bad faith. The argument for this was the fact that Fit Kitchen Limited applied for the mark six days before to be dissolved as a company.

Fit Kitchen Limited, however, proved that they weren’t aware of that fact because they didn’t receive the official notice for this. What’s more immediately after being informed they applied to restore the company.

Scratch Meals than claimed that in a case where a trademark was filed by a dissolved company it has to be owned by the Crown.

However, the court dismissed this claim because it wasn’t stating initially.

Finally the court considered that the earlier mark wasn’t filed in bad faith. From that point of view the mark was valid and taking into account that it was identical to the later mark, for identical and similar goods and services, there was a trademark infringement.

One strong point for this conclusion was evidence submitted by Fit Kitchen Limited for consumers who were confused between both brands in the market.

This case shows clearly how important is a preliminary trademark clearance search. The search has to be done before the relevant brand is launched in order for any legal conflicts to be avoided.

If you are interested to learn how you can conduct such searches on your own, check this Udemy course – Complete course on trademark search, for example.

Source: Simon Bennett and Scott Steinberg – Fox Williams LLP for Lexology.