My Photo Has Someone Else's Trademark

Let’s say you are hired to take a picture of a busy street scene. You get The Perfect Shot, and you take it to your magazine editor. Your editor loves it, but points out three things in the picture that make her worry: One, in the background of the picture, there’s a Chipotle. Two, in the middle of the sidewalk is a person wearing a gorgeous Versace dress, with a clearly visible logo. And third, off to the side and looking almost unnoticeable, is Brad Pitt. You didn’t even notice he was there when you took the picture. Your editor is wondering whether you should get permission from Chipotle, Versace, and Brad Pitt before the picture can be published.

Do you need permission for each of these things? Let’s break them down.

First, the Chipotle in the background. Obviously a Chipotle building is going to be liberally studded with Chipotle logos and other trademarks - the name “Chipotle,” the distinctive font used to write that name, the symbols recognizably associated with the brand, and any distinctive aspects of the building itself that are recognizable as special to Chipotle. It is generally a bad idea to reproduce these trademarks - the indicia of Chipotle’s identity - without Chipotle’s permission, but it is not always infringement to do so. To understand why, and to build a good foundation for understanding how you should approach the Versace dress and Brad Pitt as well, we have to understand the purpose of trademark law.

The purpose of trademark law is not to tightly control a particular word or symbol or design, but rather to tightly control an identity. Chipotle gets to control, to some degree, when and where people use its trademarks for the same reason that you get to control when people sign your name to contracts or pretend to be you on social media. When other people use your name, it affects your reputation - especially if they use your name in a way that implies that they are you, or are associated with you. Chipotle might be upset that a Chipotle store is in your picture because it might imply that Chipotle hired you, or sponsored you, or sponsors the magazine.

With that understanding, we can really tackle the issues in your photograph with a few basic questions. Was the Chipotle a vital part of your composition? Does your inclusion of Chipotle carry some meaning within your photograph? Or was it just… part of the scenery? What about Brad Pitt, or the Versace dress?

The answers to these questions are apparent from the facts. You were hired to photograph a street scene - buildings and people and activities; the reality of that particular corner of the world. The fact that Chipotle and Versace and Brad Pitt all happened to be part of that scenery at that particular moment is just a coincidence. And trademark law comes with a powerful exception to its rules called nominative fair use. Nominative fair use is that idea that you are allowed to reproduce trademarks in a way that might be infringement if you aren’t trying to say anything in particular about a brand, other than that it exists. I can take a picture of someone on the street who happens to be holding a Starbucks cup, because Starbucks cups exist and are part of the scenery. I’m not trying to say Starbucks is good or bad; it’s just there. Similarly, you aren’t trying to say Chipotle is good or bad or delicious or E coli-riddled, you’re just saying it’s there, on that street.

The same goes for the Versace dress. It’s not good or bad, just there, because clothing is part of the world. (Be aware, however, that while Versace does not have intellectual property rights to the dress itself, because clothing is specifically excluded from copyright protection, it does have trademark rights over its name, logos, and other indicia of its identity.) And you did not take the picture because Brad Pitt was in it - that was just a lucky fluke. You were not following Brad Pitt around, trying to get a picture of him in front of Chipotle to imply that he loves Chipotle, which might violate his rights. (Brad Pitt does not have trademark rights to his likeness, but he has rights of publicity that function similarly in this context.) The bottom line that allows your picture to fall under the nominative fair use defense is how much the worth of your picture depends on those three protected aspects. Would the picture be just as good if it was any other building, and not a Chipotle? Would it be significantly different and less valuable without the visible Versace logo? Would your editor have been satisfied with a picture with no Brad Pitt? If you could replace all the protected aspects of your photo with non-trademarked images, then your photo is probably protected by fair use.

Of course, like most intellectual property law, trademark law - and especially the nominative fair use doctrine - is fuzzy. Trademark infringement rests largely on customer confusion; whether a customer would be confused about who produced or sponsored the product or image, and that’s a hard standard to pin down. It may change depending on where the photograph is published; a fashion magazine publishing a street scene that incidentally includes a Versace dress may push the limits, merely because it is a fashion magazine. If you sell a photograph of Brad Pitt in front of Chipotle to Chipotle itself, who then uses the picture in an ad campaign, then you’ve started to make money off Brad Pitt’s likeness. Chipotle wouldn’t buy the picture if it had just any person.

So remember that when it comes to including trademarked images or famous persons in your photos, the degree to which you might get in trouble is the degree to which your photo depends on those trademarked aspects. If you could theoretically replace them with something non-trademarked, you will probably be okay. But also remember that the law is fuzzy and complex, and countless factors could change the ultimate outcome. Always talk to a lawyer if you are unsure about where your photographs land.