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Oct 04 2011

Makers of Pine-Tree Deodorizers Allowed to Proceed With Lawsuit Against Getty Images

Getty Images, the world’s largest licensor of digital images, got a taste of its own medicine last week, when Federal District Court Judge Glenn Suddaby, of the Northern District of New York, denied Getty’s motion to dismiss a claim of trademark infringement brought against the company by Car-Freshener, Inc., the company that brings you those pine-scented evergreen trees that hang from your rear-view mirror. The case shows how easy it can be in this digital age to get caught up in an intellectual property case.

Since 2005, Getty Images has been operating a huge copyright infringement program, sending out thousands upon thousands of letters a month to website owners who have used Getty image thumbnails to decorate their website without paying Getty a license fee. The letters demand huge sums for use of the images and have panicked countless small businesses. To give you an idea of the scope of the program, I currently represent about 600 companies that have received such letters. So you would think that a company that so exuberantly protects its intellectual property would never get caught infringing on someone else’s trademarks. But the judge ruled that Getty’s sale or license of images that contained those green air fresheners may be a violation of the manufacturer’s trademark. Getty has in its catalog many images that use those products to send a message of some sort – for example, there’s one of a man putting a shirt on with one of those trees hanging from his armpit; there is one of someone picking up a garbage can top and ten trees are hanging from underneath the lid; then there is another of an air freshener hanging from the rear-view mirror of a car. The court found that these images can be found to be taking advantage of the plaintiff’s well-known trademark as they are showing the mark being used in its intended manner -meaning as a way to treat odors.

The judge went on to state that Getty could also be responsible for allowing others to infringe on the plaintiff’s trademark by licensing the image for others to use commercially. The case will now proceed onto discovery, where Getty will likely have to show how many times and for how much money it sold or licensed images with those little trees in it.

The spread of digital images and digital content and the ease with which it can be copied and re-used or even re-titled as one’s own, exposes all kinds of people and companies to infringement claims. Part of the problem is that the IP laws in the United States make no provision to alleviate the burden on folks who unknowingly infringe. In the US, even innocent infringers – that is, those who had no idea that they were using someone else’s IP – have to pay at least $200 in statutory penalties per infringement. As Getty has been telling thousands of companies these past few years who have argued to them that they had no idea the company in India they paid $700 to put their website used Getty Images without permission – innocence is no excuse, copyright and trademark infringement are strict liability claims.

I have to admit its hard to suppress the schadenfreude (look it up) I feel seeing Getty on the other end of a claim like this. But as Getty receives a taste of its own medicine, we should all be reminded to be careful of the use we make of other’s intellectual property. These claims and the litigation that comes with them can bring a small company to its knees.

11 comments

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  1. Paul

    This is fantastic! Great to see them get it in the teeth once! Their stong-arm mob tactics should not be excused!

  2. Oscar Michelen

    Now Paul, its not polite to gloat over someone else’s misfortune! But then again, I never said I was polite. Thanks for the post

  3. BuddhaPi

    I’m not gloating! I’m grinning (widely)..seems to me this could turn into something bigger, Does Getty have permission to use other companies trademarked items, for example Audi, Budweiser, Coca Cola to name a few…their library is loaded with logo’s, and other assorted items that are clearly trademarked…What goes around comes around at some point.

    Thanx for sharing Oscar!

  4. Robert

    I think during the course of discovery the court should ask to see how much Getty is demanding from all of us who may have unintentionally infringed on a work they claim ownership to, then use that same formula to determine the damages Getty must pay. After all, its only fair!

  5. Oscar Michelen

    I like the idea!

  6. Victim

    My wishes become true! It is time for Getty Images pulling out the checkbook!

  7. Oscar Michelen

    Please see my earlier comment about not gloating.

  8. Wilten

    Another problem is each side in the copyright wars distorts the state of the law. So you never get an honest discussion.

    So here Oscar says “Part of the problem is that the IP laws in the United States make no provision to alleviate the burden on folks who unknowingly infringe.” And then bizarrely goes on to state correctly that even innocent infringers are subject to $200 damages.

    But as he well knows the $200 is the “alleviation of the burden.” The burden is $750-$30,000. But if innocent is goes as low as $200.

    The language says:

    “In a case where the infringer sustains the burden of proving, and the court finds, that such infringer was not aware and had no reason to believe that his or her acts constituted an infringement of copyright,…..$200″

    IN A CASE OF [innocent infringement]. That’s where Congress specifically addresses the need to alleviate the burden on innocent infringers. So it’s disingenuous to say the problem is the law makes no provision on “folks” to alleviate the burden for innocent infringement and in the next sentence stating that the damages go as low as $200.

    An honest broker would have said while the burden has been alleviated it is not enough. Though I note that even if innocent infringers had no liability it would still be costly to defend yourself and demonstrate that you are innocent.

    Perhaps if the two sides stop spinning the law they can reach a common ground on how to deal with both the large and growing problem off online infringement as well as the “innoncent infringer.”

    But, of course, they won’t. People that represent the large media companies will keep lobbying for more IP laws. People like Oscar that are left representing the little companies/individuals will play the other side.

  9. Oscar Michelen

    Just to clarify, I am obviously not trying to mislead anyone or misstating the law. You are 100% correct that it would have been more accurate to state that while it is alleviated it is not enough, not that it makes no provision for alleviation. I was sloppy perhaps, but not disingenuous. Disingenuous would have been if I left out the part that describes the $200 reduction completely. Maybe people would pay more attention to comments if commentors did not descend right down into name-calling. However, this only applies to cases of statutory damages. In cases where the party seeks ACTUAL damages (as Getty does since its images are usually not registered), there is no provision in the Copyright Act for reducing the award to $200 in cases of innocent infringement in this circumstance. That is what I was talking about, but did not make clear. The UK Copyright law states that where innocent infringement is established, the infringer need only cease and desist and that the copyright holder gets no damages. That is what I think would “alleviate the burden” best on the innocent companies and individuals that get caught up in these types of cases.

  10. Bjoern

    Thanks for sharing.

    You state that “The UK Copyright law states that where innocent infringement is established, the infringer need only cease and desist and that the copyright holder gets no damages.”

    Do you know if this also goes for other European countries, such as Denmark?

    I had a small part of a photo (150×200 px) that appeared to be RM’ed by Getty on my personal web. When I got the demand from Getty, I removed the photo immideately and checked my other photos, that they were non-getty images. A demand to cover damages for USD 1000,- seems kinda (censored…)

  11. Oscar Michelen

    Bjoern: While I have dealt with UK Copyright I have not dealt with Denmark copyright law. However , a quick read of the statute reveals that section 83 assesses penalties on those who “with intent or through negligence” infringe on copyrights. I would try and get clarification of that term with a lawyer in your country. Thanks for posting!

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