|legal theory: philosophy
Felix Kent: The right to use photographs of buildings
New York Law Journal, October 16,1998
A RECENT AIRLINE commercial emphasized the number of daily non-stop flights between San Francisco and New York and visually portrayed San Francisco harbor and the Golden Gate Bridge on departure and the New York skyline on arrival. Imagine this same commercial, but as you look down on San Francisco harbor there is a big black spot where the famous BankAmerica building is and, as you arrive in New York, there are black spots in place of Rockefeller Center, the Empire State Building, the Chrysler Building and other famous New York buildings.
Have terrorists struck all these famous buildings? No, indeed, but such images may be the result if certain real estate interests were to succeed in establishing trademark rights for buildings, to the effect that any use of a building in advertising or for purposes of trade, without a license, would expose the user to damages.
New York Stock Exchange Case
A growing number of building owners are seeking to control the ways in which images and likenesses of their distinctive buildings are used by others. Last year, the New York Stock Exchange (NYSE) filed an action against the New York, New York Hotel and Casino (of Las Vegas) for building a one-third scale model of the Exchange's facade on the gambling floor. (New York Stock Exchange v. New York, New York Hotel and Casino No. 97 Civ. 2857, SDNY, filed April 21, 1997). The hotel and casino is a melange of copies of famous buildings in New York, capped by a copy of the Statue of Liberty that makes her look like a showgirl.
The NYSE complains that, among other things, the public will be deceived and confused as to source, that the building constitutes a false designation and that the NYSE's trademarks will be tarnished. Indeed, the NYSE claims that the defendant "touts the lure of gambling, the possibility of winning great riches, and the vagaries of chance and luck"; on the other hand, "in an area of vital sensitivity to the economic well-being of the United States and investors, The Exchange has provided confidence and stability to investors large and small."
A motion for summary judgment by the defendant is pending. The defendant denies that any confusion can result from its use of the facade of the New York Stock Exchange as part of the New York City theme of the hotel. The Brooklyn Bridge, the Manhattan skyline, the Chrysler Tower, the Empire State Building, Grand Central and the United Nations building are all used to demonstrate the theme.
The defendant also contends that the replica of the NYSE facade is not used as a trademark or service mark by the New York, New York Hotel and Casino and therefore cannot be an infringing use and, in any event, that it is a fair use because of its descriptive nature.
Presumably, the court will also first come to grips with the question whether
the New York Stock Exchange's facade can be a trademark that can be protected
under the Lanham Act from any reproduction. If the facade is not a trademark
and defendant's replica is not used as a trademark, there can be no trademark
infringement. We shall discuss this area in greater detail below.
Right of Publicity Argument
What is the root of the thinking that a building owner would have the right to remove his building from pictures of a skyline in advertising or on merchandise, or that a reproduction could not be used as a stage set or the like? An attorney for a prominent building owner in New York is quoted in a New York Times article "What Next? A Fee for Looking?" dated Aug. 27:
This is analogous to the situation where a celebrity or a famous person has a property right in their name or likeness that enables them to control the commercial exploitation of their identity. Why would you want to deny that kind of protection to a famous landmark?
The reference, of course, is to the developments in the area of privacy and publicity during the last 10 to 15 years, capped primarily by decisions in the Ninth Circuit such as the famous opinion in Vanna White v. Samsung Electronics, 971 F2d 1395 (9th Cir. 1992), reh'g denied, 989 F2d 1512 (9th Cir. 1993), cert. den., 508 U.S. 951 (1993), which held that a robot with a blond wig in front of a "Wheel of Fortune" -- type set, violated Ms. White's rights, and is compounded by such legislation as the Indiana Right of Publicity statute that protects against commercial use of a name, likeness, gesture, voice imitation or just about anything else to remind you of the celebrity, for 100 years following death.
These decisions and statutes have already deprived advertisers of the use of -- and the public from seeing, legitimate parodies or celebrity imitations and have reduced or eliminated the ability of advertisers to make entirely truthful, non-endorsement historical references in their advertising.
No longer can a computer-maker use the name of Albert Einstein in discussing the role of mathematics in the development of computer science, without a license from a foreign university that owns his publicity rights. No longer can one use, without licenses, the names of scientists who died in this century, such as Oppenheimer, Fermi, the Wright Brothers, Edison and others. No longer can a historical reference be made in a sports equipment advertisement to Lou Gehrig or Babe Ruth without permission from their estates.
Of course, this limits an advertiser's ability to compare records with the present players. The presence of Roger Maris's widow in a stadium does not change the fact that the statutes of various states would require the Maris Estate's approval to a historical reference to him in an ad featuring Mark McGwire or Sammy Sosa. As Judge Kozinski said in his famous dissent in the decision on the Vanna White application for rehearing, deploring the limitations placed on what he considered First Amendment rights:
Rudolf Valentino's heirs want to control his film biography . . .. George Lucas wants to keep Strategic Defense Initiative fans from calling it "Star Wars." Pepsico doesn't want singers to use the word 'Pepsi' in their songs. Guy Lombardo wants an exclusive property right to ads that show big bands playing on New Year's Eve . . .. And scads of copyright holders see purple when their creations are made fun of. Something very dangerous is going on here.
989 F2d at 1512-13.
If indeed building owners succeeded in controlling all commercial uses of
pictures of their buildings, there would have to be substantial changes in practices
that are commonly followed by the advertising industry. For instance, it is
a common practice in New York to pose models in front of such buildings as the
Plaza Hotel, the Lever or Seagram buildings on Park Avenue or the Flatiron Building.
Absent a negotiation for licenses, much photography in the future would have
to be in front of unrecognizable and uninteresting buildings.
While we are unaware of any precedent that would permit any building owner to demand that a commercial user brush out the picture of any building in a photograph or collage showing a street scene or a skyline, there are cases relating to the rights of certain types of building owners in commercial context.
In White Tower System Inc. v. White Castle System etc. 90 F2d 67 (6th Cir. 1937), the court held that the White Castle restaurant building style could be protected under general principles of unfair competition. In another case involving the use of a distinctive architectural feature or decoration as an identifying feature of a business, a preliminary injunction was issued against a Chinese restaurant that placed two massive marble lions outside its door. The plaintiff's Chinese restaurant 150 yards away was also fronted by two lions. The court held that the lions could cause customers to think that the two restaurants were affiliated or under the same management. House of Hunan Inc. v. Hunan At Pavilion, 227 USPQ (BNA) 803 (D.D.C. 1985).
It should be noted, however, that these cases were decided on principles of unfair competition. The court in White Tower System, stated: "Unfair competition is a convenient name for the doctrine that no one should be allowed to sell his goods for those of another." Id. at 69. The defendant in this case did this by deliberately imitating characteristics of the plaintiff's business including using the same style of building.
Thus, clearly this line of cases cannot serve as a precedent for the non-competitive
use of a building design.
The Rock and Roll Hall of Fame and Museum Inc. v. Gentile Productions, 134 F3d 749 (6th Cir. 1998), is a recent case discussing whether the design of a distinctive building can serve as a trademark. The Rock and Roll Hall of Fame and Museum, which opened in 1995, is a highly distinctive building designed by world-famous architect I. M. Pei.
Defendant Gentile, a professional photographer, sold posters featuring a photograph of the museum against a colorful sunset. The photograph was framed by a black border; in gold lettering on the border underneath the photograph, the words "Rock and Roll Hall of Fame" appeared above the word "Cleveland." Gentile's signature also appeared beneath the picture, together with a copyright notice for Gentile Productions.
The museum filed a complaint contending that Gentile had used its registered service mark, "The Rock and Roll Hall of Fame" and its trademarked building design and that Gentile's poster infringed on, diluted and unfairly competed with these marks.
The District Court granted a motion for a preliminary injunction on various grounds and, most particularly, on the ground that the trademark on the building's design secured by the museum could be protected and that there was a likelihood of confusion as to the source of the Gentile poster. (934 F. Supp. 868, N.D. Ohio 1996). The Sixth Circuit reversed, with an opinion that has been widely praised or condemned.
(For a discussion urging the Court of Appeals to reverse the District Court, see Tara S. Goldsmith, Note, "What's Wrong With This Picture? When the Lanham Act Clashes With Artistic Expression," 7 Fordham Intell. Prop. Media & Ent. L.J. 821 (1997). For an article highly critical of the Court of Appeals' decision, read "Is Sixth Circuit Off Key?" by Joseph R. Dreitler, The National Law Journal, May 18, 1998, at C25.)
The museum had submitted in evidence to the District Court various items sold by the museum, such as versions of the building shape on T-shirts, postcards and posters, drawings of various sorts, paperweights and other things, all depicting the museum. The posters and postcards contained different photographs of different parts of the building, e.g., the front or the rear, at different angles, and so forth. Gentile's poster was not substantially similar to posters sold by the museum. Gentile testified that his photograph was "his own interpretation of the sky, the wood, the feelings of the night."
Gentile argued that his photograph of the museum was not a trademark use of the museum's building design and that his use of the words "Rock and Roll Hall of Fame" was a non-trademark use that simply and accurately described his non-infringing photograph of the museum.
Essentially, the court held that the museum did not have a monopoly on all photographic images of it and that the design of the Museum was not a protectable trademark:
A trademark is a designation, . . . which serves "to identify and distinguish the goods [of the mark's owner] . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." . . . In order to be protected as a valid trademark, a designation must create a separate and distinct commercial impression which . . . performs a trademark function of identifying the source of the merchandise to the customers.
134 F3d at 753.
In substance, the court denied that there is such a thing as property in a trademark, except as a right pertinent to an established business or trade in connection with which the mark is employed. Although the court does not refer to the White Tower decision, in our view it confirms it with the above definition. Critics of the opinion contend that it overruled White Tower.
The court found no evidence in the record to document or demonstrate that the public recognized the museum's building design as a trademark. The court was influenced by the fact that the museum made disparate uses of several different perspectives of its building design and thus did not create a consistent and distinct commercial impression of an indicator of a single source of origin or sponsorship. The court could not conclude that the museum had established a valid trademark in every photograph that, like Gentile's, prominently displays the front of the museum's building.
The court simply said that in Gentile's poster, "the Museum's building strikes us not as a separate and distinct mark on the good, but rather as the good itself." Id. at 754. Thus, the court did not recognize the design of the museum's building as an indicator of source or sponsorship. As to the use of the words, "Rock and Roll Hall of Fame," their use by Gentile was either fair use of the museum's registered service mark or a descriptive use of Gentile's own "good."
It is interesting to note, in light of the New York Stock Exchange case, that
Gentile showed the District Court a poster of an illustration of the Cleveland
skyline produced by another artist that included the museum as one building
among many. In response to that and other exhibits depicting a number of buildings,
the museum specifically disclaimed any infringement. The museum stated that
"they illustrate something that the Museum does not think . . . is a problem
because they show a whole collage of downtown buildings and scenes around Cleveland.
That's not what the Museum is trying to stop." Id.
This writer has often protested inroads on the First Amendment rights of advertisers. We find the Sixth Circuit's decision in Rock and Roll Hall of Fame persuasive. We believe that to apply right of publicity rationales to reproductions of buildings would be pushing trademark law beyond the boundaries of its intended purpose.
While the public policies underlying trademark law may differ from those that underlie copyright law, we call the language of £ 120(a) of the Copyright Act to the reader's attention:
Pictorial representations permitted. -- The copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.
The section certainly reveals a congressional intent that photographs of publicly
accessible buildings should be freely available to the public at large rather
than being exclusive to the owners of the buildings. We see no reason why a
different intent should be imputed with respect to trademark law.