Getty Loses Round in Trademark Infringement Case

by David Walker

©Getty Images
The maker of the pine-tree shaped air freshener has sued Getty Images for unauthorized use of its trademark.

Getty Images has lost a round in court against Car-Freshner Corporation, the marketer of the pine-tree shaped air fresheners that hang from the rear view mirrors of taxi cabs and many a private vehicle.

Car-Freshner sued Getty in 2009 for unauthorized use of trademark, because Getty used its so-called Tree Mark fresheners in a series of stock photographs. Several weeks ago, a federal court in New York State declined Getty's motion to dismiss the case, saying Car-Freshner had made "plausible" arguments for trademark infringement.

One image, for instance, depicts C-FC Tree Mark bearing the words "Fresh Scent" and resting in the grass, in an open field with trees in the background. Other images depict Tree Marks hanging from an armpit, and from the lid of a garbage can, to suggest the idea of fighting odors. Other images show the Tree Marks hanging from the rearview mirrors of cars, where many people actually use them.

Getty sought dismissal on the grounds that it didn't use the Tree Mark trademark to sell its own goods (images). The agency argued that its use of the Tree Marks was only "descriptive" and amounted to fair use of Car-Freshner trademark. But after examining the images in question on Getty's Web site, the court decided that Car-Freshner's claim that Getty was using its trademark to sell images was "plausible."

The court also rejected Getty's defense of "nominative fair use." Specifically, Getty said that even if it used the Tree Mark as a trademark to sell images, it wasn't doing so in a way that capitalized on consumer confusion. But the court rejected that argument, too, saying purchasers of the images might believe that the images originated with, were sponsored by, or otherwise affiliated with Car-Freshner Corporation.

The court's ruling wasn't a final disposition on the legal questions. It simply cleared the case to proceed.

The case remains a long way from being resolved, but if a jury ultimately finds Getty in violation of a trademark, the case will raise a troubling questions for stock agencies. Are they at risk for trademark infringement for all the recognizable trademarks depicted among the millions of images in their collections? Will they suddenly be inundated with claims from other trademark owners, if Car-Freshner prevails in its case against Getty?

So far, the C-FC v. Getty case suggests that the mere appearance of a trademarked product in a stock photograph doesn't necessarily rise to the level of trademark infringement. Infringement depends upon whether the trademark itself is used to sell the photograph, and whether sponsorship or endorsement of the trademark owner is implied.

Stock agents are no doubt watching and waiting nervously.

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