{"id":2047,"date":"2020-07-10T15:58:05","date_gmt":"2020-07-10T19:58:05","guid":{"rendered":"https:\/\/thecopyrightzone.com\/?p=2047"},"modified":"2020-07-10T15:58:05","modified_gmt":"2020-07-10T19:58:05","slug":"trademarks-copyrights-and-photographing-buildings","status":"publish","type":"post","link":"https:\/\/thecopyrightzone.com\/?p=2047","title":{"rendered":"Trademarks, Copyrights and Photographing Buildings"},"content":{"rendered":"

A little while ago, we got a question from one of the readers to this blog, Matthew, who asked:\u00a0\u201cHello Jack and Ed, one of my bucket list life goals is to see the 1894, 1915, and 1939-40 World\u2019s 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\u2019s Fair organization, even for the buildings that are no longer a century old? Thanks in advance! \u201c<\/em><\/p>\n

We seem to get questions regarding the use of buildings in photographs quite often. These issues are always complicated and can\u2019t be answered without doing research into the facts and specifics of each individual building and situation.\u00a0Ed\u2019s 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\u2019s a broad, legal \u201cCliff Notes\u201d reply, remembering that each situation has its own fact set.<\/p>\n

Here is Mr. Broitman\u2019s reply:<\/p>\n

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.\u00a0 Investigating these factual issues would take a considerable amount of time.\u00a0 For now, I can provide a brief summary of the trademark law regarding building structures.<\/p>\n

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.<\/p>\n

Trademark registration of a distinctive architectural design is\u00a0not\u00a0required as trademark rights accrue through use of the mark in commerce (not the registration process).\u00a0 In most cases, architectural features are service marks typically used by restaurants, hotels, or other service-oriented businesses.\u00a0 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.<\/p>\n

Other examples of registered buildings include the Wrigley Building in Chicago (U.S. Trademark Registration No. 2,037,109 for use in connection with \u201csocial clubs; providing banquet and social function facilities for special occasions\u201d);\u201d the Chrysler Building in New York (U.S. Trademark Registration No. 1,126,888 for use in connection with \u201cleasing office space and attendant services to tenants\u201d); and the Space Needle in Seattle (U.S. Trademark Registration No. 2,775,235 for use in connection with \u201crestaurants and providing banquet facilities for special occasions\u201d).<\/p>\n

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.\u00a0 If so, what product or service is being offered?\u00a0 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)\u00a0 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.<\/p>\n

Assuming that the buildings continue to be protectable, the next question is whether the proposed use of the buildings infringes the protectable rights.\u00a0 This analysis is also fact intensive and requires analysis of several factors\u00a0 to determine if there is a\u00a0likelihood of confusion\u00a0as to the source of the junior user\u2019s goods\/services. The facts that should be considered include the strength\/scope of protection of the buildings, the similarity of the junior user\u2019s 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.<\/p>\n

These factors are particularly relevant because the proposed use of the buildings is not for the same purpose as the buildings themselves.\u00a0 The owner(s) of the buildings would have the burden to prove that the proposed use is\u00a0likely to cause confusion with the owner(s)\u2019 use of the buildings, or would dilute the distinctiveness of the owner(s) rights in the buildings.\u00a0 And that burden is\u00a0difficult\u00a0to meet, particularly when the proposed junior use differs substantially from the actual use of the building owner(s).<\/p>\n

For example, in\u00a0Rock and Roll\u00a0Hall of Fame v. Gentile Productions,\u00a0 (6th\u00a0Cir. 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\u2019 use of an image of the building on t-shirts.\u00a0 Similarly, in\u00a0New 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\u2019 trade dress.\u00a0 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.<\/p>\n

The bottom line is that a thorough investigation of all buildings that are proposed to be included\u00a0in the digital models should be investigated.\u00a0 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.<\/p>\n

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.\u00a0 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.<\/p>\n

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.<\/em><\/p>\n","protected":false},"excerpt":{"rendered":"

A little while ago, we got a question from one of the readers to this blog, Matthew, who asked:\u00a0\u201cHello Jack and Ed, one of my bucket list life goals is to see the 1894, 1915, and 1939-40 World\u2019s Fairs of San Francisco digitally reconstructed, so one could explore these bygone historical spaces virtually. Ideally, these […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[151,1,613,15,4,20],"tags":[811,46,814,620,817,807,754,816,808,805,815,812,809,806,813,810],"class_list":["post-2047","post","type-post","status-publish","format-standard","hentry","category-be-aware","category-copyright-info","category-lawyers","category-legal","category-releases","category-stuff-you-should-know","tag-chrysler-building","tag-copyright","tag-disney-world","tag-intellectual-property","tag-its-a-small-world","tag-josh-broitman","tag-lanham-act","tag-new-york-racing-assoc-v-perlmutter","tag-ostrager-chong-flaherty-broitman-p-c","tag-photographing-buildings","tag-rock-and-roll-hall-of-fame-v-gentile-productions","tag-seattle-space-needle","tag-service-marks","tag-trademarks","tag-world-fairs","tag-wrigley-building"],"_links":{"self":[{"href":"https:\/\/thecopyrightzone.com\/index.php?rest_route=\/wp\/v2\/posts\/2047","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/thecopyrightzone.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/thecopyrightzone.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/thecopyrightzone.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/thecopyrightzone.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2047"}],"version-history":[{"count":2,"href":"https:\/\/thecopyrightzone.com\/index.php?rest_route=\/wp\/v2\/posts\/2047\/revisions"}],"predecessor-version":[{"id":2049,"href":"https:\/\/thecopyrightzone.com\/index.php?rest_route=\/wp\/v2\/posts\/2047\/revisions\/2049"}],"wp:attachment":[{"href":"https:\/\/thecopyrightzone.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2047"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/thecopyrightzone.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2047"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/thecopyrightzone.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2047"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}