A little while ago, we got a question from one of the readers to this blog, Matthew, who asked: “Hello Jack and Ed, one of my bucket list life goals is to see the 1894, 1915, and 1939-40 World’s Fairs of San Francisco digitally reconstructed, so one could explore these bygone historical spaces virtually. Ideally, these digital models would become public domain resources, so anyone could use, and perhaps even sell them, in video games, documentaries, fiction films, even 3D printings. Would this involve any copyright/trademark claims from the World’s Fair organization, even for the buildings that are no longer a century old? Thanks in advance! “

We seem to get questions regarding the use of buildings in photographs quite often. These issues are always complicated and can’t be answered without doing research into the facts and specifics of each individual building and situation. Ed’s office works with a trademark specialist, Josh Broitman, a shareholder at the firm Ostrager Chong Flaherty & Broitman P.C., who was kind enough to provide a detailed legal answer to give an overview. Again, it’s a broad, legal “Cliff Notes” reply, remembering that each situation has its own fact set.

Here is Mr. Broitman’s reply:

The question posed by this post raises many intellectual property issues including factual issues relating to any trademark rights such as: who owns the IP rights in the buildings used during each of the exhibitions; how those rights were used since each of the exhibitions, and whether such rights still exist today.  Investigating these factual issues would take a considerable amount of time.  For now, I can provide a brief summary of the trademark law regarding building structures.

In general, the U.S. trademark law (a/k/a the Lanham Act) provides for protection of architectural features in buildings if the architectural features or the building as a whole are nonfunctional and recognizable as the origin or source of certain goods or services so that consumers are able to distinguish between similar products and services offered by different sources.

Trademark registration of a distinctive architectural design is not required as trademark rights accrue through use of the mark in commerce (not the registration process).  In most cases, architectural features are service marks typically used by restaurants, hotels, or other service-oriented businesses.  For example, in New York City, the Empire State Building (Reg. No. 2,753,356), the Solomon R. Guggenheim Museum (Reg. No. 1,962,821), and the 5 Times Square (Reg. No. 2,411,972) have all been registered as trademarks in the U.S. Patent and Trademark Office in connection with services offered in those buildings.

Other examples of registered buildings include the Wrigley Building in Chicago (U.S. Trademark Registration No. 2,037,109 for use in connection with “social clubs; providing banquet and social function facilities for special occasions”);” the Chrysler Building in New York (U.S. Trademark Registration No. 1,126,888 for use in connection with “leasing office space and attendant services to tenants”); and the Space Needle in Seattle (U.S. Trademark Registration No. 2,775,235 for use in connection with “restaurants and providing banquet facilities for special occasions”).

If the buildings in the World Fairs were protectable trademarks at the time of the fairs, the question becomes do the building owners continue to use the buildings as indicators of the source of a product or service.  If so, what product or service is being offered?  Some buildings from the 1964-65 NY World’s Fair were transported to Disney World and used for years (“Its a Small World” was just one example)  Most were destroyed, some remain and one is used as a catering facility, all of which was not the original use intended nor the original owner.

Assuming that the buildings continue to be protectable, the next question is whether the proposed use of the buildings infringes the protectable rights.  This analysis is also fact intensive and requires analysis of several factors  to determine if there is a likelihood of confusion as to the source of the junior user’s goods/services. The facts that should be considered include the strength/scope of protection of the buildings, the similarity of the junior user’s use of the buildings, whether the junior user is using the buildings to identify the source of goods/services (or in a non-trademark, newsworthy way), the channels of trade in which the goods/services are offered for sale or sold, the types of consumers that will use the products/services, and issues of good faith/bad faith, among others.

These factors are particularly relevant because the proposed use of the buildings is not for the same purpose as the buildings themselves.  The owner(s) of the buildings would have the burden to prove that the proposed use is likely to cause confusion with the owner(s)’ use of the buildings, or would dilute the distinctiveness of the owner(s) rights in the buildings.  And that burden is difficult to meet, particularly when the proposed junior use differs substantially from the actual use of the building owner(s).

For example, in Rock and Roll Hall of Fame v. Gentile Productions,  (6th Cir. 1998), the Sixth Circuit reversed a lower court preliminary injunction on grounds that the Rock and Roll Hall of Fame did not establish a protectable right in its building design that was sufficient to enjoin Gentile Productions’ use of an image of the building on t-shirts.  Similarly, in New York Racing Assoc. v. Perlmutter, the Northern District of New York held that t-shirts depicting horse racing scenes at Saratoga Race Course did not infringe the courses’ trade dress.  Trade dress is a form of trademark that involves the total image and impression of a business and may include features such as the shape and general appearance of the exterior of a building used in the business.

The bottom line is that a thorough investigation of all buildings that are proposed to be included in the digital models should be investigated.  The proposed uses should also be considered, for example, use as a historical public domain resource is likely less problematic than selling the digital models for commercial use, such as in video games, documentaries, fiction films, and 3D printings.

If the building (e.g., “Its A Small World” from the 1964 NY World’s Fair) is still in use – anywhere like Disney World or a much smaller venue, best advice is NOT to use it.  Always check to see if the building is being employed for any purpose “now” regardless of the number of years that have passed since its original use.

Additional note from Ed: Nothing in this article should lead you to believe that you can infringe upon the copyright of an existing, identical image.