My design firm is doing a campaign (trade show booth, brochure, web site, etc.) for a software company, and we’re using some royalty-free stock photos. One of the photos, featured quite prominently, is of a laptop. The laptop is recognizably a Mac laptop, but there is no visible Apple logo or anything. Do we risk trademark infringement (from Apple) of any sort by using this image in the client’s promotional materials? I don’t think the laptop, Mac or no, is nearly as distinctive as, say, the old Bondi Blue iMacs or anything, so the look and feel argument is pretty thin.
If they are royalty-free stock photos, you’re probably in the clear. It’s unlikely Apple with make a stink, but if they did, you can prove you acted in good faith in using an image you thought you had every right to use. It’d be up to a court, but it seems unlikely they’d do anything more than to tell you to stop using it.
Hmm. Except that a cease-and-desist could, apart from any court issues, cost our client thousands of dollars in printing and development costs alone (i.e., if they have to re-do all of their promotional materials). We’re trying to avoid that.
if there is no link to Apple- no Icon- No TM- No R- and they are registered than you don’t have anything to worry about. What would be an issue…scanned photo’s, downloaded photos, anything TM or R, or logo’d, or a signature “brand” identity somewhere- without that there is nothing that could happen.
Well, theoretically, the company providing the clip art has dealt with any trademark issues before selling the art. You could contact them, but odds are you’re in the clear.
But, of course, it all depends on what Apple wants to do about it.
Good point. They’re a pretty big photo house, and would presumably have either good vetting beforehand or good attorneys to defend them later.
Many people here seem to believe that the ® trademark symbol serves the same function as the © copyright symbol. This is not true because trademark law is not the same as copyright law.
Copying an image of a product with a trademark symbol is not a violation of trademark (or any other) law in the way that copying a copyrighted document is a violation of copyright law. Trademark law gives the trademark holder the exclusive right to use the mark in business, but does not prevent people from making or copying images of the trademark or trademarked products. If you called your company the Apple Software Company, or started using an apple logo to identify it, the real Apple Computer Company might have a trademark violation case against you.
Now, entirely apart from trademark law, a company may (and probably would) copyright its logo or even the design of the computer cases, and in the latter example might attempt to pursue a copyright infringement action in the situation the OP describes, even in the absence of a logo or ® mark. But I think this is fairly unlikely if the image was obtained from a reputable provider of stock images.
I think this is the key to the OP’s problem. Look at the small print of the purchase agreement for the stock images. The provider should guarantee that there are no intellectual property violations in the images, and should indemnify the purchaser from any allegations of IP infringement.
Of course, if the OP uses an image that is recognizably a Mac to create a brochure that defames or insults Apple, you can expect to hear from Mr. Job’s lawyers even if you have an airtight defense against copyright violations.
Have you thought of contacting Apple?
This is a complex question, and one that should be answered by your own lawyer.
There are some issues here –
The fact that it is a royalty-free stock photo only refers to the copyright issues with regard to the photo itself. It means you have permission to use the photo without infringing the rights of the person who holds the copyright in the photo. So there are probably no copyright problems here.
As to trademark issues regarding items depicted in the photo, it’s not so simple to talk about, especially without actually looking at the photo and examining how it fits into the context of your presentation.
Trademark law doesn’t allow Apple to prevent depictions of people using its products. Unless you are taking nature photographs, nearly any photograph is going to depict things that were made by somebody and might be recognizable. Is that a Chevrolet car in the background? Is that an Aeron chair? Is that a Tommy Hilfigger shirt? Are those Nike shoes on the model’s feet?
However, depending on context, including the composition of the photograph, the prominence and recognizability of the product, and how it fits into the overall presentation, there is a chance that it might look like the picture is about the Apple laptop and Apple might argue that it looks like you’re saying that your service or product is affiliated with, authorized by, or sponsored by Apple. The key question here is what are consumers who see the photograph in context likely to think. It’s a pretty big stretch though.
Toadspittle you have a quandry of issues which deeply affect your business, of which I am sure you are already cognizant of. Primarily, if you are hit with a cease and desist letter, your client is going to have to redo the whole ad campaign. If you didn’t disclaim warranties of noninfringement and if you agreed to third party indemnification of IP rights in your agreement with your client, your ad campaign is in a whole world of trouble when a cease and desist letter comes your way.
The problem with using stock images is you have to figure out if the IP rights have been cleared with the owner. As someone already suggested, the reputable the firm, the more likely it will be. However, some firms specifically state in their license agreement that they do not warrant against noninfringement, and may cap their damages to indemnification at fees paid. The cost of your ad campaign and any possible law suit, along with attorney’s fees if you lose such suit will greatly exceed the fees you paid to use those images in the campaign.
However, I do know that Getty images are pretty reputable, so that is a risk that you have to consider. My company only uses Getty, but even then, we had to really hammer out a fair license agreement.
The other left field issue is that the laptop may have trade dress protection. Trade dress is when the packaging, name, series name, or title of product makes it known to the public that it comes from a certain manufacturer or producer.
Off hand (from what I can remember as I hack away at my keyboard), trade dress protection was established in the Landham Act (sect 1125, or something like that), whereby the plaintiff (Apple) will have to prove beyong a preponderance of the evidence that (1) the trade dress has established secondary meaning (i.e. it is identified with a certain manufactuer); and (2) that the trade dress of two products is confusingly similar; and (3) the trade dress qualities or attributes in question have no primary functional capacity.
The ‘secondary meaning’ requirement is what the courts call “likelihood of confusion.” This means that the public believes that the mark’s owner is associated or otherwise approved of the mark/trade dress in question. To establish this concept, the court focused on 8 factors, the strongest being the first (however, these are not requirements, nor is the list exhaustive, just concepts to look at):
- strength of the mark
- relatedness of goods
- similarity of marks
- evidence of actual confusion
- marketing
- likely degree of public scrutiny (i.e. the public relies on the brand in their decision making)
- defendant’s intent in selecting the mark
- likelihood of expanding the product line (i.e. sony making vcr and then making video tapes)
So, apply these factors in your current situation, and you can see what risks your are undertaking. I’m not going to do that for you because that includes real legal work, speaking of which, I am very behind on my actual legal work. Good luck.
Toadspittle, consult a lawyer. What you read here is only going to confuse you. The basic things to understand are that: (1) Yes, there might be some legal issues for which you should be adequately prepared and (2) People are creating advertising campaigns all the time – it’s more than likely that there are standard procedures to get through these kinds of things.
I don’t think it means what you think it means.
I don’t think you know what Toad’s client is going to have to do. Toad should consult his own lawyer here, but it seems to me that the incidental appearance of an Apple computer in an illustration is not likely to upset Apple very much. Of course, as I said, it’s hard to say anything without looking at what Toad’s actually doing with the picture, which is something that a competent lawyer would do before giving any advice.
No, trade dress has to do with the design features of a product or its packaging (like the shape of the Coca-Cola bottle), not to do with names or titles. Even if Apple has registered trade dress in the design of its laptop, trade dress infringement is not a factor here, because the thing depicted actually is an Apple laptop.
Lanham Act
“Secondary meaning” and “likelihood of confusion” are two completely different freaking things. And I don’t know why you’re going into this, because the question is not whether Toad has copied Apple’s protected trademark or trade dress but whether he can use an image of an actual Apple computer in his presentation.
Thanks for setting out the eight-part Sleekcraft test. Can you explain to me how is it going to apply to Toad’s situation? These factors ask you to compare two products or services and the marks used in conjunction with them. Toad is using a picture of an actual Apple computer.
Out of curiosity, do you practice trademark law?
The basic thing you need to avoid is looking like your using Apple to promote your product. If this in anyway seems to be true, or if you show the pictures and people would infer that Apple someway endorses your product than you can’t use it.
One thing I’ve dealt with is companies will routinely send out notices even if they have no right to. I had this happen and I knew I was right, I checked it with my lawyer, and I said “go head sue,” they didn’t but in a way I was lucky.
You don’t have to be right to win a copyright case, all you do is have to have more money than the other guy to sue him into the ground.
Best to get Apple to clear the use of the image in writing or just alter photo. I’ve worked with photoshop and it’s very easy to do. And if you don’t have a lot of internet cafes will have it.
Here are some things to think about, Toad:
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How many ways are there to show someone using a computer program without showing an actual computer? Is it logical, when showing use of a computer program, for there to be a computer visible in an image? In your experience, is it common or uncommon to see images of computers in relation to depictions of people using software?
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Is it likely to upset or be disconcerting to a computer manufacturer that a depiction shows someone using the manufacturer’s computer to make use of software? How would a computer manufacturer react to a depiction that implies (a) that its computer is capable of being used with such software, (b) that its computer actually is used by people using such software, © that its computer is actually used by people in the industry targetted by the software developer, (d) that its computer is used in business settings, (e) that its computer is useful for anything at all?
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Does your depiction imply sponsorship or affiliation with the computer manufacturer? Does your depiction imply a false, derogatory statement about the computer manufacturer? (Note, this last is a matter of defamation law rather than trademark law.)