Court Says No To Trademark Infringement!

The issue of whether use of a photo of a building in an advertisement without the consent of the owner constitutes trademark infringement is still unresolved, and depends upon the facts inherent in each case. Therefore there is currently no bright-line rule to guide photographers.

A recent Federal Court case in New York is a good example of how important the facts can be, and how difficult it is to predict the outcome of use without authorization.

In Cecere v. R.J. Reynolds Tobacco Co., R.J. Reynolds and its advertising company created a "Joe Camel" ad for camel cigarettes, which was superimposed on the side wall of plaintiffs' landmarked Classic brick building in Greenwich Village.

The owners alleged trademark infringement, contending that the ad constituted a false representation of the building and that it could hamper their ability to use this wall in the future to obtain advertising revenue from others because of the confusion the ad supposedly created.

The Court said no - and threw out the case. It found plaintiffs had not alleged "sufficient likelihood of commercial injury" in order to prevail, by "failing to articulate any concrete economic loss suffered to date" or "any theory of commercial harm."

Plaintiffs had apparently never rented the wall in the prior 36 years (!) they owned it nor stated any intent to rent it in the future. The Court discussed the need to establish the existence of an actual commercial asset, and not just a potential one.

Since the ability to rent the space remained "fundamentally unimpeded", more than a subjunctive belief that plaintiffs were likely to be injured was needed. Allegations, and of course, eventually proof, of actual harm is necessary. Here such proof was utterly lacking.

Of course, we do not know what the result would have been if such evidence did exist - and that certainly is the problem that continues to face photographers.

This case therefore highlights the problem; without supplying any solution.