Getty Images Facing Upwards To 80 Million Trademark Claims?

Readers of the blog know that the CAR FRESHNER people, owners of the mark consisting of the product configuration of a tree-shaped air freshener,  know where the court is located, having sued various third parties selling tree-shaped fresheners.  It has now sued Getty Images, owners of one of the larger stock photo agencies.  Getty maintained at least 11 images in its inventory that depicted a tree-shaped air freshener.  Car Freshner sued on multiple counts, including trademark infringement.  Getty moved to dismiss the trademark count, arguing that it was not using the mark as a trademark, and if it was, such use was either nominative or descriptive fair use.

The interesting part of the discussion begins in the NDNY decision below on page 11.  The Court held that plaintiff plausibly alleged that photos that depict the freshener (of which the one above is attached to the complaint as illustrative exhibit) are arguably trademark use of the freshener, and may possibly not be either nominative or descriptive fair use.   I note that the 11 photos attached to the complaint vary in their treatment of the fresheners, as some ‘incidentally’ depict the freshener within a photo as above, while others could be deemed to be ‘beauty shots’ depicting the freshener alone.

Given that Getty has 80 million images, it may have some agita that its fair use defense did not defeat a 12(b)(6) motion, given that perhaps some others of its 80 million photos that may depict recognizable trademarks as well.  Some may not be sad about that.

 Decision Tree Freshner Getty



14 responses to “Getty Images Facing Upwards To 80 Million Trademark Claims?”

  1. Eric Goldman says:

    Marty, I continue to insist that TM fair use defenses aren’t nearly as helpful as they should be, which is why gatekeeping doctrines like the lack of a “use in commerce” are essential to resolving TM disputes quickly.  To me, there clearly is no TM use in commerce when photographing an item already available in the marketplace and the sale is the photo, not the item itself, and the court should have found that on the 12(b)(6).  Bad decision for TM law and the purported balance between the use in commerce doctrine and the fair use defenses.  Eric.

  2. […] Car Freshner sued on multiple counts, including trademark infringement….. read on here: http://www.schwimmerlegal.com Share: Bookmark on Delicious Digg this post Recommend on Facebook share via Reddit Share with […]

  3. Robert Pierce says:

    Ironically Little Trees reaps quite a bit of publicity from these incidental uses.  They figured prominently in Seven, Repo Man, and Ocean’s 11.  For example, Little Trees was one of the few recognizable trademarks in Repo Man, a movie that was rather famous for its lack of branded goods, e.g., the supermarket where all the products are in black and white packaging and identified by the generic name alone.  I remember that they had a certain punk cache in the mid-80s because of that association.

  4. Marty says:

    Eric:  Once you go down the road to treat this as a motion to dismiss, and not a summary judgement, then all I can say is that the court took the broadest possible definition of trademark use.  Having said that, the use in commerce analysis, at least in the motion to dismiss phase, may well be different between the ‘beauty shot’ images, and the ‘incidental use’ images.

  5. Anonymous says:

    You have to get halfway through that ruling before you even get to any substantive points, after a lengthy discussion of what sorts of documents the court is permitted to rule based on, and of what documents were actually filed, or incorporated by reference, by whom and when, and what the deadlines were for filing and responding to them, and so on.  Legal wonkery at its worst.

    Once you get to the real points, I don’t particualarly agree with the court on them.  There’s a clear distinction between a product (such as a car freshener) and a picture depicting the product being used (or perhaps abused).  While it’s possible that end-users of the images might use them in a manner that infringes on the trademark (e.g., if they incorporate them in ads for different products or services), there are also plenty of possible uses (in art or parody) that wouldn’t infringe, so at most Getty might be expected to have some sort of disclaimer when they license the images to the effect that users need to consider trademark consequences of their uses.  I don’t see how Getty themselves are committing any violation.  It would open up too many cans of worms to start imposing liability on anybody who distributes photographs that might happen to depict things that are trademarked, since the world is full of them.

  6. […] Images offers 80 million stock images for sale. Eleven of those images such as this one include a picture of a tree-shaped air freshener. Car Freshner, which claims exclusive rights to […]

  7. Anonymous says:

    How you anyone trademark an image that is re-produced by mother nature millions of times each year.  They ought to move to invalidate the trademark on the grounds that it is not original, but a copy of a naturally-appearing image produced by nature.

    Can you legitimately create a Silhouette of a generic rock or, say, a dolphin, and trademark it.  I think not.  It’s an illegitimate mark.  

    If Getty’s lawyers don’t miss the forest for the trees, they should try this to a jury by challenging the originality and legitimacy of the mark. 

    • Only an air freshener in that shape would potentially violate the trademark. Trademarks are granted with respect to a particular kind of product. A similar mark would be OK if used for a  different sort of product. IANAL.

  8. IANAL. I suppose Getty Images has these photos in their inventory for potential sale or to sell the right for their use by others. From the description of those “infringing” photos, I doubt they generated much money. It seems to me it would be difficult to photograph real scenes without occasionally catching some trademark in the viewfinder unintentionally. Rarely that might have been the point of the photograph, which then becomes a separate artistic statement. The point of trademarks is to identify a product with its maker or seller. I don’t think Getty Images is trying to say that the Air Freshener people produced that photo, or to claim that image as their own trademark. The best course of action for cases like this would be to provide a “take-down” system similar to that of youtube whereby such photos could be identified and removed from inventory. To grant an $80M judgement when no damage has occurred seems nuts.

  9. Anonymous says:

    No one one seriously thinks that Getty has done any stealing here.  The only stealing going on here is a protection racket run by an air-freshener firm.  Only a mindless ideologue could possibly think that junk lawsuits like this are anything but destructive to society.

    People who bring suits like this need to be fined into oblivion and have all their precious “IP” confiscated until corporations start behaving like reasonable citizens.

  10. […] appears that the company sued Getty Images for infringing on its trademarks on those tree shaped air fresheners because a few of the stock images available via Getty Images includes the tree. Getty Images […]

  11. […] the way towards a massive expansion of how trademarks can be asserted. It appears that the company sued Getty Images for infringing on its trademarks on those tree shaped air fresheners because a few of the stock images available via Getty Images includes the tree. Getty Images […]

  12. […] stock company, the US District Court judge, in Syracuse, New York where the case was being heard, has denied the dismissal and the suit will move forward. By itself, it’s an interesting, even somewhat funny story. […]

  13. Crazy.  Makes me want to upload pictures of Little Trees to my Flickr, Facebook and 500px pages… but that would just be promoting them even more.