legal theory: philosophy


Cleveland Plain Dealer, April 11, 1999

Copyright 1999 Plain Dealer Publishing Co.

The Plain Dealer

April 11, 1999 Sunday, FINAL / ALL


On a muggy August evening in 1995, self-employed photographer Chuck Gentile set up a tripod on a sidewalk outside the Rock and Roll Hall of Fame and Museum. After carefully adjusting his large-format Swiss camera, he shot a single frame.

Gentile (pronounced gin-TILLY) had trekked down to the rock hall from his North Olmsted home every day for three weeks, shooting one frame each night. A month before the museum opened to the public, he finally had the postcard-perfect evening he was looking for: a breathtaking violet-and-burnt-orange sunset behind the rock hall's pyramidal facade.

The next spring, Gentile turned his photographs into posters that he sold to stores for about $12 - much like he'd been doing for years with photographs of other landmarks and skylines across the country. This entrepreneurial effort was no different.

Or so he thought.

Gentile's work that evening led to a legal firestorm that has spanned 3 years and appears far from over. Since 1996, Gentile has been tangling with rock hall officials, who sued him for making the poster. The rock hall claims the image of the building designed by I.M. Pei is protected by trademark.

Initially, the rock hall won an injunction blocking Gentile from selling the poster, but an appeals court later overturned the ban.

This month, the case of Rock and Roll Hall of Fame and Museum Inc. v. Charles Gentile and Gentile Productions is back in court - U.S. District Court in Cleveland. The showdown is being watched by the Ohio legislature and by trademark attorneys, real estate owners and First Amendment proponents across the country.

At stake, say supporters of Gentile, is the American people's First Amendment right to stand on a public sidewalk and take a photo or paint a picture of a landmark like the Empire State Building or the Gateway Arch in St. Louis without getting permission and paying royalties.

Rock hall supporters call that claim outrageous. They argue that a private entity has the right to protect its image and its trademark from being exploited without permission.

With no clear precedent on a case like this - and no lack of endurance demonstrated by either side - some observers say this case could ultimately wind up in the nation's highest court.

"This issue is going to go to the Supreme Court, whether it's this case or another one," said trademark attorney Sheldon H. Klein of Arent Fox Kintner Plotkin & Kahn in Washington D.C., whose work includes trademark protection for clients such as Time Warner Entertainment Co. and its Warner Bros. and D.C. Comics cartoon characters.

The rock hall - represented by powerhouse law firm Jones Day Reavis & Pogue of Cleveland - maintains that Gentile violated the rock hall's trademark and could hurt its ability to sell its own $20 keepsake posters and other memorabilia.

Gentile, meanwhile, is defended by the law firm Berkman Gordon Murray & DeVan, whose resume includes defending Hustler magazine publisher Larry Flynt and winning a new trial for Dr. Sam Sheppard. Gentile also is supported by the legal defense fund of the 6,000-member American Society of Magazine Photographers.

Attorneys for Gentile and the rock hall will appear Thursday for a status hearing before U.S. District Court Judge Patricia Gaughan. The two sides say a settlement is unlikely, and the case is expected to go to a jury trial later this year.

"This case is absolutely fascinating," said Bradley Wilson, executive director of the National Press Photographers Association in Durham, N.C. "You see pictures all of the time of the Sears Tower and the World Trade Center and other landmarks. ... This is going to be a test case."

Paint, pop and rock

Gentile, a Cleveland native who turned 40 last month, is an unlikely David opposite the Goliath forces of the rock hall and Jones Day, the nation's second-largest law firm, with its roster of 1,100 attorneys.

Gentile, a high-energy, fast-talking non-conformist, took an interest in photography while a student at North Olmsted High School. He went on to Ohio State University before graduating with a technical degree in photography from the Ohio Institute of Photography.

His career includes a nine-year stint as a photographer for Cleveland-based American Greetings Corp. and 18 months working for a commercial studio. He went into business for himself in 1991, specializing in commercial advertising and photographs of buildings.

Gentile has been selling posters for a dozen years. "I'm kind of known for my work of architecture and skylines," he said. "I've been all over the country."

Most of his commercial work consists of advertising shots for local and international clients, ranging from Cleveland-based Sherwin-Williams Co. to Pepsi-Cola Co.

Gentile's poster portfolio includes most of Cleveland's notable landmarks, including the Cleveland Museum of Art and Jacobs Field.

Gentile's twinkling photograph of the rock hall is one of his best. Indeed, some say his photo is superior to a similar one shot on opening night by the rock hall, which may be why hundreds of Gentile's posters have sold around Cleveland for $25 or more.

Under the advice of his attorney, J. Michael Murray, a past president of First Amendment Lawyers of America, Gentile won't say much about the photograph or the case. He will say that he didn't trespass to shoot the photo.

"It was a public sidewalk," he said. "It wasn't taken on their property. It was from a public vantage point."

Rock hall Chief Executive Officer Terry Stewart and attorney Regan Fay of Jones Day said the case has nothing to do with where Gentile was standing. They say that because the rock hall building is trademarked, no one has the right to commercialize the image without permission.

"The protection of building shapes is nothing new," Fay said. For example, a person couldn't build a restaurant with golden arches because it would be trademark infringement.

"This case isn't about freedom of speech," Fay said. "This is about protecting a trademark and protecting the public. ... The only thing in the poster is the rock hall. They're selling our image and making money from it."

Klein, the Washington attorney, said that's a strong argument. "What's selling the poster is not the photographer's unique creative ability. It's the design of the building."

Fay also said the poster is deceptive because people might think it has the rock hall's blessing. At the bottom in bold gold print, the poster says "Rock n' Roll Hall of Fame" with the word "Cleveland" just below. In the far right corner, Gentile's signature appears twice in small script.

"The law says if there's a likelihood of confusion, you're misleading the public," said Fay. "The First Amendment doesn't protect that."

A fee for family snapshot?

Pictures of famous buildings are as old as the image of King Kong climbing the Empire State Building.

But the battle over building likenesses has escalated in the last generation. Owners of buildings, whether public or private, historically had difficulty preventing photographers and movie makers from using their images. Then laws passed in 1990 allowed building owners to file for copyright protection of architectural work and design.

Photographs and movies featuring landmarks continue to run rampant, and most building owners have reconciled themselves to the exposure.

Lydia Ruth, a spokeswoman for the Empire State Building Co. in New York City, said the owners of the private building haven't resisted all of the exposure over the years, figuring the publicity is an inevitable byproduct of owning a famous structure.

In the last year, however, the owners applied for a trademark of the building image, Ruth said. Officials at the Empire State Building and other famous buildings will be watching the rock hall case closely, saying a rock hall victory could chill souvenir peddlers and film makers across the country.

Julianne Cho, director of publicity for the Commissioner's Office of Film, Theater and Broadcasting in New York City, said the issue could get ridiculously out of hand, especially in a city with such famous landmarks as the Chrysler Building and World Trade Center.

"There are hundreds of thousands of tourists taking photos here every single day," Cho said. "Some of them may end up in a venue for publication. You can't reasonably expect a person would pay a royalty fee to every building in the skyline."

Fay said rock hall executives would not object to Gentile's poster if it also contained other buildings from Cleveland's skyline. Nor would they mind if the photo appeared, for example, on a T-shirt condemning rock music. If a photo of the rock hall appeared in a circle with a red line through it, it would not be mistaken as a officially sponsored product, he said.

The rock hall also doesn't object to visitors shooting photos of the rock hall for their scrapbooks. "We have 300 to 500 photographs taken a day on a busy day. We have never stopped one of them," said Janis Purdy, vice president of external affairs for the rock hall.

Those people aren't trying to make money from the rock hall's image, said Stewart, the rock hall's chief executive.

The rock hall has granted licenses for posters to three or four other photographers, Fay said. In an attempt to settle the case about four months ago, the rock hall offered Gentile a royalty-free license if he recognized the trademark. Fay said the offer was declined. Gentile's attorney, Murray, declined to comment.

Fay, whose firm donated about $2 million in legal services to the rock hall and is pursuing the Gentile case on a reduced-fee basis, said it's important for the rock hall to be able control the sale of products that will supplement admission revenues. "The idea was to have the rock hall be self-sufficient so it won't run in the red like so many museums."

The rock hall is doing just that, however. The rock hall's first annual report, released last October, revealed the institution lost $1.37 million in 1997 while attendance dropped from 867,000 in 1996 to 615,000 in 1997.

The ghost of Jimi

The rock hall's income might be one issue, but the larger principle is the freedom of expression the rock hall stands for, said State Rep. Gene Krebs, a western Ohio Republican.

Krebs is appalled the rock hall has made such a huge stink out of a hometown boy's poster. "What would Janis Joplin or Jimi Hendrix think about the rock hall's stance on freedom of expression?" he said. "They'd be rolling over in their graves."

Two years ago, Krebs drafted legislation that would have prohibited buildings like the rock hall from suing a photographer over trademark infringement. Similar legislation was introduced last year by State Rep. Jamie Callender, a Willowick Republican. Callender's bill passed the House but died in the Senate. Krebs said he expects the bill to surface again.

He also expects the lawsuit to be in the public eye for awhile. "This absolutely will go as far as the Supreme Court," Krebs said. "For the photographers, it's almost a religious issue. Both sides have big guns and big money."

One of Gentile's big guns, the American Society of Magazine Photographers, vows to appeal if they lose. The group will fight the issue "until we spend the last penny we have," said Victor Perlman, managing director and general counsel for the association. "The First Amendment aspects of this thing are overwhelming."

Some of the debate about Gentile's poster will center on whether the rock hall is a public building. Although it is a private, not-for-profit museum, it was built with loans guaranteed by the state and with tax-exempt revenue bonds guaranteed by the state and county.

Perlman contends that it's arrogant for the rock hall to pursue the case after the Sixth Circuit Court of Appeals said, "We are left with grave doubts as to the likelihood of the Museum's success" in the case.

Klein, the trademark attorney from Washington, disagrees.

Federal trademark law protects "inherently distinctive" features of a company's product or image, he said. The law has been interpreted to protect characteristics such as the gold color used on Kodak film packages and the pink color on Owens Corning fiberglass insulation. At least one Supreme Court case ruled in favor of a restaurant whose design was duplicated, although this case was about construction of a building, which is much more intrusive than a picture.

"This photographer was infringing on a product the rock hall already had established," Klein said. "I think the whole direction of the law is moving toward giving protection for these types of things."

Georgia Toney Lesley, chairwoman of the national copyright committee for the American Institute of Building Design in Sacramento, said the trademark issues are messy.

The simmering debate has been waiting on a case like the rock hall battle.

"This is a huge gray area," she said. "Everybody keeps telling us it comes down to the judge and jury."