Nominative Fair Use of Trademarks

I have pursued copyright infringement multiple times. It is an unfortunate requirement in a field where we must display our work on the internet to remain competitive. I get all the usual responses and threats, but I ultimately get my desired outcome. Over the course of time I have grown confident and knowledgeable about copyright infringement with the help of my excellent attorney. Last year I experienced a new defense tactic that I want to share.

I photographed a local cover band performing at a local club purely for my own pleasure. I documented the performance. I had no prior agreement with the band, but I photograph bands a this venue often so I know well that as a policy photography is permitted. Upon arrival at the venue, I spoke to one of the band members informing them I would be photographing their performance and gave them my business card. They seemed happy to get the free publicity. Two days after the performance I received an e-mail from a member of the band asking where they can see the photographs. I sent them a link to the gallery on my professional website, and expressed an interest in working with them professionally. They sent me an e-mail thanking me for the link and stated they would share the link with fellow band members. I never heard from them again.

A week later I was informed by a considerate third-party that all 20 pictures from my gallery were on the band’s website and in the band’s MySpace photo albums. No one had asked for my permission to use my photographs. This was outright copyright infringement. I did my normal diligent collection and documentation of evidence, sent the band a letter demanding removal or payment of a license fee, and threatened to file a copyright infringement case if I didn’t get action within three business days. I was extremely angry. That came through loud and clear in my letter.

Later that day I received a response from the band saying there must have been a mix-up in communication and that my photographs had been removed. That I expected. What came next was not expected. In the same message the band demanded I destroy all my photographs of them. They argued that their name, logos, etc, and all derivative works thereof, were their trademarked intellectual property. Essentially, they considered my photographs to be derivative works of their trademark, that as such they owned them, and therefore I must destroy them at their request. This was entirely wrong. After careful research, I provided the band with the legal basis that invalidates their argument and have had no further correspondance with them.

This is the legal basis that invalidates the argument for trademark violation. First, I am absolutely certain my photographs were not derivative works of their trademark. A photograph of a live performance is a new work of art. Second, there is a “fair use” rule for trademarks like there are for other forms of intellectual property. It is called “nominative fair use” (see “Fair Use – Lawful Use of Another’s Trademark” for more details). Here is an excerpt from the linked page.

Nominative fair use occurs when one party uses another’s trademark to refer specifically to the latter’s product. In this situation, there is no other reasonable way to refer to the plaintiff’s product other than through use of the trademark. Thus, a defendant may lawfully use the plaintiff’s mark accurately to refer to the plaintiff’s product.

There would be no publicity for music artists if displaying photographs of a band’s performance or naming them in an article was a violation of use of their trademark. Even competitors can use one anothers’ trademarks when making a statement about the other’s product. Have you seen the Apple advertisements? They mention Microsoft Windows. Mobile phone carriers mention each other or show each other’s logos in their advertisements. Fast food chains reference one another.

Nominative Fair Use benefits the music industry. It allows the music press to generate publicity for music artists.

Author: Walter Rowe | Category: Business, Legal | Comments(0) January 2009