My first run in with copyright / trademark issues with architecture

yorgasor

EOS RP
Oct 23, 2013
323
2
So, I had an interesting experience this past week. I thought I'd share what I learned and see if there was more wisdom from the group at large. Obviously, I am not a lawyer and this does not constitute official legal advice.

I was invited to a private girl's college to photograph a play by the director. It was my first time to the school, and I saw they had some beautiful architecture. When I was done, I took a few photographs and posted them on Facebook. They were shared with the school alumnae page, and immediately there were requests for prints and more photos. After a quick check of their policy, it looked like it was safe to sell prints of the photos as long as I didn't include their name or any of their trademarked symbols, so I went ahead and created a smugmug account and made them available for sale.

Johnson Hall by Ron Yorgason, on Flickr

There were requests on facebook for more images, and to get shots of the grand staircase inside their main building. I wanted to make sure this was permitted, so I contacted the school, showed them my work, and asked if I needed any special permission to go inside and take photos. This is what I was told:

[This] is a private college, therefore our campus is not open to vendors coming on campus without prior permission. When photographers are hired to photograph an event, such as a theater production, permission has not been granted to take photos of our campus or persons on our campus unless prior arrangement has been made through the Marketing or Events office.

Regarding the sale of any image that represents the college -- our iconic buildings (interior and exterior), fountains and other areas on our campus are licensed trademarks. All vendors must have a license from our licensing agency in order to sell any image of the college. We ask that you remove the photos from your website until you have become a licensed vendor of the college.

There are several issues at play here that I've been researching, to see if I was really in the wrong here. The easiest one to remove was copyright. They didn't make any claim to copyright in their email, but it came up in my research. In the US, architecture was permitted to by copyrighted starting Dec 1, 1990. Any buildings built after this time could theoretically make a copyright claim, but not if the building was visible from public spaces. The buildings on this campus are 70+ years old, so that wasn't an issue.

The next issue was one of trademark. Their website specifically says:

[Our] marks are any and all names, trademarks, logos, insignias, seals, designs, symbols or any combination of these that has come to be associated with [the school].

What is clearly forbidden is selling prints with the school name on it, or any symbols or marks that would specifically imply that the image is an officially sanctioned image of the school. As for the buildings themselves, if they are iconic and associated with the school, they can be trademarked. However, I should be able to use them as long as I'm not using the images to sell similar goods or services (ie, I can't use a photo of their building to promote my own school).

http://www.nolo.com/legal-encyclopedia/copyright-architectural-photos.html
In order for a trademark owner to stop you, the following would have to be true:
(1) the building would have to have an identifiable, distinctive appearance;
(2) the building would have to be publicly associated with certain goods or services;
(3) your use would have to be commercial (not editorial);
and (4) your use would have to be linked to an offer or endorsement of similar goods or services.

So far, things looked pretty good in my favor. Where things get more complicated is the case of private property. I could take photos from public land if I had a good telephoto and a clear line of sight, but it is pretty far from the road. The question is one of trespassing, and so far I don't have a good answer for that. I was specifically invited on campus to do photography,

These links have some information on a few different relevant cases:

http://aphotoeditor.com/2013/08/26/reader-question-licensing-images-shot-on-private-property/

The Food Lion case is interesting as well. People got jobs at Food Lion specifically to do an expose on how Food Lion handles food unsafely. They had permission to be at the store, but they did not have permission to photograph things. In particular, they gained permission through fraudulent pretenses. They were found guilty and charged $1 in fines.

One line that caught my attention here was:

"If you are on the property and the owner sees but doesn’t stop you from taking photos, you have implied consent to do so."

A security guard drove right by me while I was taking these photos. I wasn't asked to leave or stop taking photos. I suspect I would beat any trespass argument in court as well.

http://www.photoattorney.com/update-on-the-lawsuit-against-benjamin-ham-for-photographing-private-property/


So, I believe I am in the right, but being right does not necessarily mean I should keep selling more prints, nor that I should go back and take more pictures of their campus. For one, I've now been told that I can't take pictures without their permission. For another, I'd like to be on their good side, maybe get licensed and then be invited to take pictures of their campus on an official level. At the very least, I'd like to keep getting invited back to photograph the theatre productions.
 

privatebydesign

EOS-1D X Mark III
CR Pro
Jan 29, 2011
9,973
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I would take down all the images you have in public places, including the one above.

I would write to them and explain the error that had been made and make a charitable donation (tax deductible) to the order of the money you had made.

I would ask that they accept your application to be an official vendor and point out the interest your images have already created and that yu have nothing but respect for the institution and their rules.

Sound over the top? Think of it like this, if I was on the application committee and saw this thread with another, in their eyes, unauthorised image I'd ban you from the grounds.

As you say, being in the right doesn't make much difference when there is a future you would like that includes further dealings with a private entity.
 

yorgasor

EOS RP
Oct 23, 2013
323
2
privatebydesign said:
I would take down all the images you have in public places, including the one above.

I would write to them and explain the error that had been made and make a charitable donation (tax deductible) to the order of the money you had made.

I would ask that they accept your application to be an official vendor and point out the interest your images have already created and that yu have nothing but respect for the institution and their rules.

Sound over the top? Think of it like this, if I was on the application committee and saw this thread with another, in their eyes, unauthorised image I'd ban you from the grounds.

As you say, being in the right doesn't make much difference when there is a future you would like that includes further dealings with a private entity.


I've only removed the images from Smugmug as that was the only site where you could buy prints. I think they'd have a hard case to make that you couldn't take pictures for personal/non-commercial use. However I did ask them for clarification on that. I'll see what they say.
 

privatebydesign

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Jan 29, 2011
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It isn't about making a case, it is about peoples feelings. They feel they 'own' the college, sure in the real world they don't, but you pointing that out is not going to make for a successful foundation going forwards.

If I were them then I'd look at you being a trouble maker who is more interested in your rights than the college's image, I wouldn't want you anywhere near the premises.
 

tpatana

EOS 5D Mark IV
Nov 1, 2012
1,546
269
yorgasor said:
So, I believe I am in the right, but being right does not necessarily mean I should keep selling more prints, nor that I should go back and take more pictures of their campus. For one, I've now been told that I can't take pictures without their permission. For another, I'd like to be on their good side, maybe get licensed and then be invited to take pictures of their campus on an official level. At the very least, I'd like to keep getting invited back to photograph the theatre productions.

This chapter is exactly correct. You might be right, but no point pushing it.
 
P

Pookie

Guest
In the states it is a very explicit law when on private land. Either you get a property release or prepare for court. I shoot for many companies here in the bay area (Google, Apple, Boeing, etc) and I will tell you these are very litigious entities. They can and will check. Most of my corporate clients make this very well know... no pictures of badges, whiteboards, office space etc. This is also true of many wedding venues, as a rule of thumb I always get releases for both property and people.

Where you royally screwed up was taking the images on private property first and then asking afterwards. If you had asked first and had a property release with you, perhaps you could have gotten the ok. After the fact, the answer will almost universally be no. Now that you are on there radar, I'd be very careful. Ignorance of the law is not going to fly in court. I see you still have them up on Flickr... perhaps they won't find them but if they do and they have told you to take them down, you could already be facing an escalation. It's up to you but the cost of court will ruin most peoples day.

The other aspect of this situation... it looks bad for all photographers and this is why often you'll find specific signage at once "open" sites as they (the property owners) have had to deal with photographers like you at sometime in the past. What happens then... they ban all cameras on site. Essentially it's bad form on your part and you ruined it for everyone after you.

Check with ASMP as they have a very good outline of why you need release. It has nothing to do with you selling images or "peoples feeling". It actually the law...

https://asmp.org/tutorials/using-property-releases.html
 

old-pr-pix

EOS RP
Dec 26, 2011
425
64
I agree with PBD... if you think this is a good business opportunity, pursue it as such. I assume their license requirement is intended to provide them with a royalty as well as establish a definitive set of rules. Find out what their requirements are. If reasonable, sign up -- especially if you can get exclusive access in some cases. Maybe you can leverage this into doing more PR work for them. (But watch out for "work for hire" clauses that would give them ownership of the images!)

Even if you are right, you don't want the cost and time that proving it in court will entail. If you win you likely lose any future business opportunity here, so what exactly is the gain? Plus, word will spread and it could impact other unforeseen opportunities.

Having worked as PR photog at a University I fully understand where they are coming from. At the same time I suspect you are partly right. Some of what they think or claim is protected by copyright or trademark probably isn't. It's their opinion, but it's also their property. Respect it, don't fight it.
 

yorgasor

EOS RP
Oct 23, 2013
323
2
Pookie said:
*snip*

Check with ASMP as they have a very good outline of why you need release. It has nothing to do with you selling images or "peoples feeling". It actually the law...

https://asmp.org/tutorials/using-property-releases.html

This link states:

"...Property has none of these rights. So why should you go to the trouble to get a release?

It’s a good question, but one that requires a complicated answer. ASMP has never seen a statute or a legal case that requires a release for property. The recommendation that you get one is based upon two legal theories."

This sounds less like "get a release because it's the law" and more like "we recommend getting a release because the law in these matters isn't well established"
 

Mt Spokane Photography

I post too Much on Here!!
CR Pro
Mar 25, 2011
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What is all boils down to, is that its private property and not public. You can likely take photos of a friend at their request where a building is incidental to the photo, but they own image rights to photos of their buildings.

I would do as suggested. If they decide to make a legal case out of it, you may have to plan on a $25,000 down payment to your attorney to fight it. If you don't, then whatever claim they make for damages is automatically awarded.

Do as others suggested, make a friend of them, donate some money.

When I went to take photos of my son in his college play, I ran into the same issue. They have a photographer contracted to take the photos and when they saw my professional equipment, they were concerned that I'd be selling prints. I explained that the photos were for my personal use, and they grudgingly allowed me to continue.
 

scottkinfw

Wildlife photography is my passion
CR Pro
quote author=privatebydesign link=topic=27708.msg547337#msg547337 date=1442434549]
I would take down all the images you have in public places, including the one above.

I would write to them and explain the error that had been made and make a charitable donation (tax deductible) to the order of the money you had made.

I would ask that they accept your application to be an official vendor and point out the interest your images have already created and that yu have nothing but respect for the institution and their rules.

Sound over the top? Think of it like this, if I was on the application committee and saw this thread with another, in their eyes, unauthorised image I'd ban you from the grounds.

As you say, being in the right doesn't make much difference when there is a future you would like that includes further dealings with a private entity.
[/quote]
 

scottkinfw

Wildlife photography is my passion
CR Pro
As a disinterested third party with no formal legal training, I think that this is excellent advice. You may make a friend oout of some of the powers that be (maybe even send them a print for their next admissions cycle), and turn this into a profitable venture for your.

On the other hand I have never had a professional encounter with an attorney that was enjoyable.

sek

scottkinfw said:
quote author=privatebydesign link=topic=27708.msg547337#msg547337 date=1442434549]
I would take down all the images you have in public places, including the one above.

I would write to them and explain the error that had been made and make a charitable donation (tax deductible) to the order of the money you had made.

I would ask that they accept your application to be an official vendor and point out the interest your images have already created and that yu have nothing but respect for the institution and their rules.

Sound over the top? Think of it like this, if I was on the application committee and saw this thread with another, in their eyes, unauthorised image I'd ban you from the grounds.

As you say, being in the right doesn't make much difference when there is a future you would like that includes further dealings with a private entity.
[/quote]
 
yorgasor said:
Pookie said:
*snip*

Check with ASMP as they have a very good outline of why you need release. It has nothing to do with you selling images or "peoples feeling". It actually the law...

https://asmp.org/tutorials/using-property-releases.html

This link states:

"...Property has none of these rights. So why should you go to the trouble to get a release?

It’s a good question, but one that requires a complicated answer. ASMP has never seen a statute or a legal case that requires a release for property. The recommendation that you get one is based upon two legal theories."

This sounds less like "get a release because it's the law" and more like "we recommend getting a release because the law in these matters isn't well established"

Except they're not assuming you are taking a picture on a private property...

As PBD and others have stated, irrespective of whether you think you are in the right (and I personally don't think you are, you would lose in court), rather than take a short-term view, taking the longer term view and follow the approach outlined.

Btw, you have no proof that a security guard saw you unless you have a photo of him looking at you when you were taking the photo and can prove that you yourself at that same time were using photographic equipment. Finally, how would a security guard know if you were authorised or not? The college would say it is not his duty...
 

Hillsilly

EOS R
Oct 16, 2010
1,100
2
I really only have experience with Australia intellectual property law, but US principles aren't that dissimilar. You'd have to do some checking to see exactly what they have trademarked. Just because their website says they've trademarked something, doesn't mean they actually have. There are also different classes of activities that their trademark application will relate to. Learning to research the USPTO database is a starting point. But assuming that they've been very thorough with their application, they might have a good argument. If you're happy to spend money on legal fees, you might have a good defence. But like most legal disputes, most trademark matters are eventually "won" by the party with the deepest pockets. Is that you? Does it mean that much to you?

With trespassing, the fact that a security guard drove past you doesn't give you implied consent. Rules vary from place to place, but if you are found to be trespassing it will likely follow that you won't be able to profit from your activities. But it sounds like you were invited on to the campus and had a legitimate reason for being there. Once again both the college and yourself would probably have arguments supporting your cases.

The big question is what are you going to gain by making an issue of this? Privatebydesign's first post is the right answer.
 

jd7

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Feb 3, 2013
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http://www.canonrumors.com/forum/index.php?topic=25855.msg510103#msg510103
 

jd7

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Feb 3, 2013
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Hillsilly said:
With trespassing, the fact that a security guard drove past you doesn't give you implied consent. Rules vary from place to place, but if you are found to be trespassing it will likely follow that you won't be able to profit from your activities. But it sounds like you were invited on to the campus and had a legitimate reason for being there. Once again both the college and yourself would probably have arguments supporting your cases.

The big question is what are you going to gain by making an issue of this? Privatebydesign's first post is the right answer.

To the extent trespass is the issue, seems clear the OP had a licence to come on to the premises. The question is whether the licence extended to permitting him to take the photos he did. If it did not, he became a trespasser when he took the photos.

That said, the school will no doubt say now the licence didn't extend to the OP taking the photos because with the benefit of hindsight that is what they would have said if they had specifically turned their minds to it. That doesn't necessarily decide he question of what the scope of the licence actually was.

From a practical perspective though, PBD's answer may well be the most pragmatic and sensible. If it was me though I'd be tempted to work out whether what they claim really stacks up and if not, tell them to go jump!
:)
 
jd7 said:
Hillsilly said:
With trespassing, the fact that a security guard drove past you doesn't give you implied consent. Rules vary from place to place, but if you are found to be trespassing it will likely follow that you won't be able to profit from your activities. But it sounds like you were invited on to the campus and had a legitimate reason for being there. Once again both the college and yourself would probably have arguments supporting your cases.

The big question is what are you going to gain by making an issue of this? Privatebydesign's first post is the right answer.

To the extent trespass is the issue, seems clear the OP had a licence to come on to the premises. The question is whether the licence extended to permitting him to take the photos he did. If it did not, he became a trespasser when he took the photos.

That said, the school will no doubt say now the licence didn't extend to the OP taking the photos because with the benefit of hindsight that is what they would have said if they had specifically turned their minds to it. That doesn't necessarily decide he question of what the scope of the licence actually was.

From a practical perspective though, PBD's answer may well be the most pragmatic and sensible. If it was me though I'd be tempted to work out whether what they claim really stacks up and if not, tell them to go jump!
:)

It does stack up. He was there with a specific brief and on private property to conduct that brief. It's "white list" as opposed to "black list". If had taken it from public space, then reasonably ok. He didn't so unless the States has some wacky interpretation, then I don't see where the argument is.

The OP has, no doubt innocently, taken shots of the building as it is photogenic.

If no one had been interested in purchasing, and the college had asked him to take them down, he probably would have complied....

It's because there is now a value to those shots that he wants to see if he can find a way to make money from his talent without registering.
 

awinphoto

EOS 5D Mark IV
Aug 26, 2010
2,091
0
www.reno-photography.com
Here is my 2 cents as I have done a lot of commercial architecture work... Any time your on public lands, you are safe to do as you see fit, BUT, increasingly professional photographers are being targeted by the police citing the need for city permits to take photos on public land... so, if you can get the shot done without drawing attention to yourself, all the better. Anytime your on private property, then you run the risk of trademark and licensing and other claims to your work. If you want to show off the buildings on your personal pages, websites, etc to show off your skills, you have a case saying you own copyright, and in those cases, it's almost easier to do it and apologize later... Getting permission before hand, especially to a new vendor, can almost be like pulling teeth. And maybe if you sweetly come back to them with your final work, showing the best of the best that you can do of their property, maybe offering them a few complimentary wall prints, you can sweet talk your way into getting a fast track pass into being a new vendor. But selling the prints and then asking for more may have rubbed a few feathers the wrong way if you know what i mean.
 

Sporgon

5% of gear used 95% of the time
CR Pro
Put it down to E for experience. You were on private property and hadn't been invited in to take pictures of the buildings. If you have had interest in the images from your on line account Private's advice makes sense. But don't be disappointed when the college want to take a large cut out of it.
 

yorgasor

EOS RP
Oct 23, 2013
323
2
And just to be clear, this isn't my attempt to "stick it to the man." I have absolutely no intention of drawing this out into a big legal battle, and I've specifically told them I've removed the images from SmugMug and asked for clarification as to whether this requires removal from Facebook & Flickr. I have also asked specifically if their photography rules apply only to selling prints or whether it is ok to take photos there for personal use. I'm trying to learn their unwritten policies so that I don't run into these issues again, and so I can be a good visitor.

This was however, my first run in with the idea that I couldn't take pictures on semi-public land. Semi-public, meaning there are thousands of people on the premises and they specifically state on their website that they welcome visitors, and I found no rules posted online or on the premises that photography was not allowed. I have friends that currently attend and graduated from there, and they had no idea such rules existed.

Since this was my first run in, I wanted to find out what the laws state so I can reduce the number of conflicts in the future. I've been doing photography for a couple years and haven't come across a situation where I needed to learn these, so I thought I'd share my research, post the sources, and see if my actions could be defended by current law. I obviously have no intent on defending my position in a court of law, that would be financial suicide, and if that were my intent I would be talking to actual lawyers instead of reading articles and generating discussions here. So, with that out of the way, let me try and guide this discussion back to what I was hoping photographers more experienced in this area might shed some light on.

As I mentioned in the original post, in a hypothetical legal case, the stickiest part of this situation is the part of private property. In the Food Lion case, people lied about their intent to gain employment to gain access to areas of the store not allowed by others. Their intent was to defame the store and cause financial and reputational harm. They were found guilty, but only fined $1. In my case, I was invited on campus specifically as a photographer and took photos of the open campus that anyone could see and were invited to visit.

In the case regarding the photographer who took photos of the trees, he specifically climbed over a fence and passed multiple "no trespassing" signs. In this case, they tried to charge him with conversion (this is one of the two reasons given as a recommendation for getting a property release signed), where conversion is one person getting financial gain off of another person's property. This is how the judge ruled on this issue:

[T]he court simply cannot see how the gravamen of the conversion claim is not simply this: that Defendant unlawfully photographed an image belonging to Plaintiff and is now commercially distributing it. Plaintiff has not asserted that Defendant took any tangible object, so the only possible property of Plaintiff’s that Defendant is alleged to have converted is the image of “Plantation Road.”Disputes over ownership, use, or distribution of photographs and images are properly the realm of federal copyright law.

As I mentioned in the original post, buildings older than Dec 1, 1990 cannot be copyrighted. It's a trademarked building (I'm sure the main building is trademarked, I really doubt but have not verified that the other buildings are trademarked), but since I'm not using their building to promote similar goods and services, and I'm not using official names or seals on the photos, no one is likely to be confused that I'm selling officially licensed goods.

So, this boils down to the subject of trespassing. If two people walk uninvited to a spot on private property that says "visitors welcome," one takes a picture and the other doesn't, does that make the photographer a trespasser and the other innocent? What if one person takes a photo with a big scary professional camera (the "assault rifle" of cameras) while the other person takes a picture with his cellphone. Are they both trespassers now?

Here's another scenario. A person is invited onto private property to take a picture of a tree. In the invitation, he was not given any type of warning that he was expressly forbidden from taking any other kinds of pictures. After taking a picture of a tree, the person sees a really cool rock. If he stops to take a picture of the rock, is he suddenly trespassing?

Earlier in this thread, Pookie stated, "Ignorance of the law is not going to fly in court." In the case of trespassing, my understanding is that ignorance is very much a defense. If you walk on someone's land, they tell you to leave, and you leave. You can't be charged with trespassing unless you stay or return, knowing that you've been told that it's not allowed. In my case, I was invited onto the property to take photos without being told I wasn't allowed to take photos of other things. There are no rules posted on the grounds or anywhere on their website. It's not a law that says I can't take photos of their buildings, it's their own private rules, and I can't be held liable for them unless they tell them to me. However, now that I've been told, I would very much be trespassing if I took additional photos of their buildings without permission.

I haven't researched trespassing yet, so I'm going off of my base understanding. If these are incorrect, I'd very much like to be informed, and if you have sources to quote, then even better. I'm more interested in increasing my understanding and sharing the value of that understanding with others rather than beating others into submission with my ignorance :)
 
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