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Thursday, May 24, 2007

Trademark Two-Step

Changes in the law could make it more necessary than ever for professional photographers to pay attention to what's in the frame before shooting

What has the coalition still worked up is that buried deep within H.R. 683 is a slight language change that effectively leaves out non-commercial use and other protections used to defend trademark infringement cases today. So if you're less vulnerable to being sued for dilution, you're still open to infringement, and one claim can lead to the other.

Alabama artist Don Stewart knows just how open his work is to a lawsuit under this new legislation. Earlier this year, Volkswagen of America threatened to sue him over a drawing he created in 1992.

Stewart drew a picture of a classic Volkswagen Beetle made out of different kinds of insects. For years, he's used the image as a teaching tool in English and art classes. He also sold some of the drawings. In January, Volkswagen's lawyers sent Stewart a cease and desist letter, demanding that he destroy all existing copies of the image and pay damages for diluting the company's trademark.

“They were threatening to sue me by saying I was taking money out of their pocket and using their image to make money,” Stewart says. “I tried to make a show of acquiescing by taking the image off of my Website, stirring up a letter-writing campaign to show them I had been acting in good faith. But I wasn't sure I had done anything wrong. This was the company telling me I had done something wrong, not a judge.”

Paul Alan Levy, an attorney with the Public Citizen Litigation Group in Washington, D.C., heard about Stewart's case and took it on pro bono. Levy told Volkswagen that Stewart's image was protected squarely under the fair use section of the trademark law. Stewart hasn't heard from Volkswagen since, but he and Levy say that if the remaining loophole in the Trademark Dilution Revision Act isn't closed, artists will become far too vulnerable to costly lawsuits.

“The bill is certainly better than before,” Levy says. “But it still eliminates a protection that people have enjoyed and that has kept them from getting sued for non-commercial uses.”

Professional photographer Jack Reznicki says if the bill passes, it will change the way he works, and especially if an artist gets sued and loses his or her ability to make a statement. He says the bill would give corporations the legal opening needed to take control of any image using their trademark and limit the use of what are now considered utilitarian objects, like a model leaning against a car or a toaster in a kitchen, because that toaster would no longer be just an object in a photo.

“It would be a trademark that would give them control over the image,” Reznicki says. “Where does it stop? Levi's objecting that a model is wearing their jeans in a photo? It's a very slippery slope.”

To that end, the lengths that photographers could start going to for fear of getting sued are endless. This is mainly because of how easy it could become for corporations to sue and how costly trademark cases are to litigate. Ed Greenberg, a lawyer who represents many photographers and artists, said that at an absolute minimum, expect to shell out $10,000 to $20,000 in a trademark lawsuit—and that's before trial.

So if H.R. 683 makes its way back out of the House and onto the President's desk for signing, Greenberg offers this advice: be careful. “Avoid use of any extraneous signage, corporate logos or products not absolutely necessary for the shot,” he says. “Be overly safe. It's not unlike doctors ordering 10 million tests that they know aren't necessary—it's all just to cover their butt.”

The House and Senate still have to work out the differences in each version, but H.R. 683 is expected to be signed into law. While it's unlikely that companies are going to bring an onslaught of lawsuits against all photos past and present, it's also unclear what kind of impact the bill will have on how trademark regulation is handled presently. For now, this is all a matter of interpretation, with the courts ultimately having the final say.




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