Building Owners Assert Claims to Profit from Imagery

 Imagine you are a photographer or an artist who captures cityscapes and skylines, or a publisher who publishes prints that encompass a variety of buildings. What if someone told you that you had to get permission from the owner of every single building whose images appeared in your painting, photograph or print?

You might think it us ludicrous, and it might be, but there are number of building owners who are trying to assert claims that, if accepted, would require permission from scores of building owners before being allowed to portray a skyline.

Why has this situation developed? The underlying motivation is money. Owners of buildings today believe that they can license the image of the building on a variety of products, thereby obtaining revenues. As a result, they wish to stop anyone else from reproducing their buildings unless they are paid a licensing fee.

That's the easy part; now for the more difficult part - the legal issues. Several legal theories come into play in this discussion: copyright, trademark and the right of publicity.

Copyright Protection for Buildings

Copyright does not apply to useful objects. Therefore, a lamp does not enjoy copyright protection. However, if the base of the lamp is a sculpture, then that base can be protected as sculpture even though it is incorporated into a useful object. A beautifully designed chair, cleverly crafted pens, fascinating looking couches, are in their own rights works of beauty, but are not copyrightable because they are useful objects.

For many years, architecture was universally considered a useful object and thus precluded from copyright protection. Architectural drawings, on the other hand, have always been protected as drawings. While it is very difficult to copy a building without copying its drawings, if someone simply looked at a building, took its picture and then copied the actual structure of the building, they could duplicate it with immunity. That changed in the 1980's with modification of the copyright law, which granted protection to architectural work such as buildings.

The idea was to protect architects from being ripped off by buildings, not to limit the ability of people (including artists) to capture the architectural works in their photos, prints or paintings. So if you can see the work from a public place (that probably includes using a telephoto lens), then it is fair use to reproduce the building in a photograph or on artworks.

Right of Publicity

At times people or entities have tried to protect the buildings with a claim of some form of property right, similar to a right of publicity claiming, "It's my building and therefore you can't copy it or include it in your artworks." After discussion over the years with a number of attorneys who have sent these types of letters to my clients, no one was ever able to provide me with any legal basis that those rights in fact existed.

Rights of publicity are generally limited to the name and likeness of an individual. I have never heard of a building that so identifies with a specific individual that its usage would violate their right of publicity. So for the present, it is safe to say it can not be done.

Trademark Law

Trademark law, I believe, is going to be an ever growing problem area. Periodically, trademark law has overlapped with the arts.

There are two parts to trademarks. The first part is that a trademark is supposed to identify the source of origin of a product. In other words, you cannot put the well-known scripted "Coca-Cola" on the bottle of another soft drink, because the people will believe that soda came from the Coca-Cola Company in Atlanta, and that would be misleading.

The other element, which often comes into play, is Section 43(a) of the Lanham Act, provides that you cannot have a misdesignation of association or affiliation sponsorship. This means that you cannot use somebody's trademark in a manner which is likely to confuse the public into thinking that the product is somehow affiliated with, licensed or sponsored by another entity. The test - will people who look at the product think it is licensed?

Trademark Cases of Note

Out of the blue came the Rock and Roll Hall of Fame case. In it, a photographer named "Charles Gentile" took a picture of the Rock and Roll Hall of Fame in Cleveland, and made a poster out of it. The museum was upset since it sold its own posters, and it sued. In a decision that surprised many of us, the trial court granted an injunction in favor of the museum, claiming that the building was the museum's trademark and to have it in the photograph violated their trademark rights.

While it is clear that the drawings or photograph of a building can be used as the trademark of an institution, taking a picture of a building and making a poster has never before been considered a trademark infringement. The case was appealed and was recently overturned. The Appellate Court stated "a picture of the museum on a product might be more readily perceived as ornamentation than an identifier of the source." The court also found that since the museum used various drawings of the building in its promotional campaign on its products, no single view of the building was identified as its trademark.

But, alas, the New York Stock Exchange recently sued the New York New York Hotel and Casino in Las Vegas. The façade of the building looks like the New York skyline, and included in the casino's building is a one-third scale replica of the New York Stock Exchange façade. While the lawyers for the Stock Exchange were willing to admit that "we have never taken the position that someone who walks in off Las Vegas Boulevard will think that they are in the Stock Exchange," somebody may believe that the Casino's use is licensed.

Even more troubling is the Chrysler Building's recent activities. They have sued Fish Eddy, a tableware store, and demanded that they stop selling a line of dishes. At issue is the circular border of a plate which contains the New York city skyline, with the Empire State building, Citicorp, Chrysler Building, Brooklyn Bridge, Grant Central Station and so forth. The Chrysler Building is depicted in a very rough silhouette, yet Chrysler, which has registered its trademark in the building design, is claiming that it has a "responsibility to the ownership to protect the goodwill that is symbolized by the mark."

Back in 1979, the owners of the Chrysler building registered the spire as a trademark. While it is clear that buildings can enjoy trademarks status, the question is can or should a trademark owner be allowed to preclude anyone from including the building in artworks?

If in fact Chrysler and the Stock Exchange prevail in their arguments, it will produce a ludicrous result in which reproductions of the skyline of major cities will have to be devoid of their most prominent features. The mere fact that a building is registered as a trademark or uses its owners in the building as a trademark, again, should not preclude its inclusion in artworks.

In the Chrysler Building situation, where they are licensing the image, it might give rise to an argument that people who see the Chrysler Building in an artwork photo will now assume that it was licensed and therefore, there is a relationship between the Chrysler building owners and the artworks. A weak argument but one nevertheless. I will be watching these cases carefully in the hopes that this nefarious trend is nipped in the bud.