New York Subway Photography and Trademarks

Discussion in 'Business of Photography' started by jim_poulos|1, Aug 7, 2009.

  1. A photographer (not me) started a thread on Flickr stating that he tried to sell a picture he took on the New York Subway as a postcard through Zazzle. Apparently the MTA sent a Cease and Desist letter to Zazzle indicating that the image violated its "intellectual property rights". Zazzle would not clarify what the MTA meant although I suspect it is because the train route symbol is trademarked.
    Has anyone had this experience? Does anyone know if the MTA is objecting only to its logos and route "bullets", which are trademarked or to pictures of any of their trains?
    Would this also mean that railroad buffs can't sell prints of the pictures they took on the subway? While the route symbol (assuming that is the sole issue) can be edited out using Photoshop it would make the image historically inaccurate.
    If anyone can shed some light on this issue it would be greatly appreciated since I intend to sell prints and cd's of my pictures at a train buff meet this fall.
     
  2. In general, you need express permission to use photos taken on private property. Apparently some municipalities have a broader idea of what "private" means.
    If MTA won't give permission to use the photos, you should inquire if removing the logo will eliminate their objection before you invest in prints and CDs to sell.
    <Chas>
     
  3. In general, you need express permission to use photos taken on private property.

    This is not true. A private property owner can regulate people's activities while they are actually on the property. The statement above concerns activity that people engage in that takes place off the property. A property owner has no such power unless there is a some other legal basis to do so. It may be contractual photography usage being banned as one of the terms a visitor agrees to in exchange for being allowed on the property. There may be certain commercial uses that an owner can make claims on. There could be invasion of privacy actions that may arise due to the nature of private property but provacy actions relate to personal privacy rights, not property. Trademarks are an issue but that is not a land owner rights issue, its an issue for the owner of the intellectual property owner.
    I don't know what grounds the MTA may be asserting, if it even has any, but ordinarily permission, express or otherwise, is not needed to use images that just happened to be taken while on private property. The MTA may be trying to protect trademarks holders as part of its deal with them but what grounds it has to do so as a real estate authority has not been explained.
     
  4. It appears that they have trademarked some of the route symbols (eg. the "A" in a blue circle, etc.) and are licensing them for use on t-shirts and other products. The problem is that the route symbol cannot be avoided since it is prominent in the front and side of the older trains that still use mylar rollsigns.
    If this is the issue then of course it is a simple matter of editing out the route symbol but that makes the image editorially and historically inaccurate.
    I am just hoping that they are not asserting any trademark or copyright to the trains themselves because that will jeopardize a trade in pictures of subway trains that has been going on at railroad meets longer than the MTA has even existed. I posted it here to see if any other photographers may have had personal experience with this issue since thousands of photographs of the subway are taken every year and sold in various forms - postcards, photo books, etc.
    I did have one personal experience two years ago when I attempted to publish some pictures of trains that are in the transit museum. The MTA objected to the pictures taken inside the museum premises (which I understand, although I had been given a verbal ok to publish by a staff member who turned out did not have that authority - but I digress). However pictures of the same trains and others that were taken while in regular service were not challenged.
    Based on this experience I suspect that it is the route symbol they are challenging.
    But my experience was two years ago and it seems that the MTA is becoming more aggressive on the issue as each day passes - so I don't know if they are now going after all NY subway pictures.
     
  5. Without hearing directly from Zazzle and the MTA, it's kind of hard to really assess what they are asserting.
    There's no small amount of discussion of trademark issues in the Rock and Roll Hall of Fame case. The "opinions" supporting both the prevailing side and the dissenting opinion cover quite a bit of interesting. What seems that might be relevant is the similarity of the "product," the postcards with products that the trademark owner markets.
    http://biotech.law.lsu.edu/cases/ip/trademark/rock_and_roll.htm
    There's no subsitute for qualified legal advice of course. Nor is it likely to be comforting that if you search on trademark issues, there's no small indication that there is a problem to some people that trademark owners may be asserting more "rights" than they actually enjoy but by dint of their deep pockets, they may be able to preclude effective comptetition on the issues themselves.
     
  6. Thank you for that link - of course it will help to know what exactly the MTA is challenging. If it is the image of the train and their infrastructure then they probably have less of a leg to stand on than if it is the only the route symbol itself.
    What they license are apparel, mugs, etc. with the route symbol on them (no train or background). Here is an example:
    http://www.amazon.com/dp/B000GKA5EA/ref=asc_df_B000GKA5EA875169/?tag=shopzilla_rev_5-20&creative=380333&creativeASIN=B000GKA5EA&linkCode=asn
    One of the photographs that I may be publishing if it is determined that only the route symbol is the issue will be:
    http://www.flickr.com/photos/jpimaging/3796897302/
    Finally the law that allows photography in the subway does not differentiate between commercial and non-commercial use, It simply states:
    Photography, filming or video recording in any facility or conveyance is permitted except that ancillary equipment such as lights, reflectors or tripods may not be used. Members of the press holding valid identification issued by the New York City Police Department are hereby authorized to use necessary ancillary equipment. All photographic activity must be conducted in accordance with the provisions of this Part.
    The person whose postcard was taken down is waiting for more information - I will wait and see if either Zazzle or the MTA provide it before investing in prints.
     
  7. It appears that they have trademarked some of the route symbols
    If that's what they are basing their demands on then it has nothing to do with being on their property as suggested above. Someone can violate trademark images by reproducing and displaying them without ever setting foot on the property the symbols were located.
     
  8. Let's clarify something before the conversation goes much further. MTA does NOT own the property. The city of New York owns the subway system property. It's public property. The MTA manages and operates the system. I just want that to be clear.
    Now, as far as the trademark. They own the trademark probably, but it's plastered on public property. I'm not sure they could win the arguement in court, to tell you the truth.
    But, regardless, MTA does not own the subway property....the city does.
     
  9. Thomas is correct on that account - the subways were originally owned by the city and leased to private companies for operation, although some surface and el lines were privately owned and operated. In 1940 the leases were terminated and the city took over all operation - those routes that were privately owned (such as the Brighton (Q) and Sea Beach (N) were also sold to the city in that year.
    The MTA was created in 1968 to manage the operation of the subways and other commuter railroads - it does not own the subway lines. The route symbol was originally solely functional - it identified the route the train was on - nothing more. Apparently some people liked the "icons" and started creating t-shirts. Around 2003-2004 the MTA realized it had a potential source of income and started trademarking them.
    The problem is that if you want to publish a historically correct image then the route designation is part of the train or whatever background it is affixed to. It is not as if we want to take the trademarked symbol out of context and sell postcards or prints based on it alone. Anyway I have been contacted by a reporter that is doing a story on this - I will wait and see what she digs up...
     
  10. Let's clarify something before the conversation goes much further. MTA does not own the subway property....the city does. I just want that to be clear.
    It doesn't matter if it is an owner or the agent of an owner. The issues are the same either way.
     
  11. The owner is the public. And public property is for everyone's use. MTA cannot dictate that in any way shape or form....except regarding direct managing of the operations. The city has already granted photographers the freedom to take pictures on numerous accounts via the publics out crys when MTA tried to stop photography in past years. I think it's pretty well establshed that the "owners" want photographers to take pictures. And given the above ground sale of photographs that do include trademarks.....a very famous Marlboro billboard photograph comes to mind....I don't think MTA has much of a leg to stand on
     
  12. The MTA can't trademark the actual trains. Although the MTA owns them, they were built by companies like Kawasaki.
     
  13. They could easily trademark the trains. You have to consider what makes a trademark a trademark. In the case of trains, not only are there the "cars," but you could have names, paint schemes, logos, a "product," etc. A number of the famous passenger trains of the past were "trademarked" and rights to those names are not necessarily available to Amtrak so there are several trains running essentially the same routes with different names.
    But it appears in this case they have a concern over the use of logos and the potential for competing products - and that could be a trademark issue.
     
  14. mbh

    mbh

    In my opinion,
    Cease and Desist letters work, because third parties like Zazzle won't risk a lawsuit. I suspect that a court would find the photograph of the logo-marked train does not violate MTA's rights as a copyright holder. But each case turns on its specific facts.
    MTA incurs no real risk in sending out these letters. Moreover, it has an incentive to protect its trademarks. Zazzle (and to a lesser extent the photographer) have little commercial incentive to risk litigation (the amount from one photograph is overshadowed by the risk of attorney's fees).
    In the case of selling CDs of photographs you took at train buff meetings, I see the issue as follows. Whether a particular photograph infringes on a trademark holder's rights turns on the use made of it. If you sell to fellow buffs as a sort of historical record and they use them for their own personal enjoyment, I'd argue this is not an infringing use.
    This doesn't mean you won't get a cease and desist letter or be sued. It just means, based on the limited facts at hand and making some assumptions, I suspect you would win any lawsuit if you could afford to litigate it.
    On the other hand, if you sold your photographs to a stock site, we have another set of issues that come into play. You have no idea how the people who purchase the right to use those images will use them. If they compete with a trademark holder or imply the trademark holder has approved or consented to the use, you might end up losing any resulting lawsuit.
    Leaving the specific circumstances discussed above and speaking generally, a photographer might choose to protect themselves by including a clear disclaimer limiting his or her transferal of rights to non-commercial use (e.g., the photographer is selling his photographs commercially in a non-infringing, fair manner, but he or she explicitly does not transfer the right for someone else to use those photographs commercially in any manner). If this photographer wanted to go a step further, he or she might craft some text explaining the context of the photographs and editorializing a bit, which may bring into play free speech rights and the public's right to an historical record. There are other steps photographers can take.
    Each case is unique and needs to be independently evaluated.
     
  15. Thomas Sullivan I don't believe location of the trademark being on public property would invalidatetheir rights to protect their trademark. it is still their trademark correct?
    also just being you have the right to take a picture doesn't mean you can use the picture how you choose. Being at work I can not verify this to be the case (gotta love internet filters) but it seems zazzle is a place that works as a retail outlet for people. and so if he is putting a picture up of MTA's trademark for retail then I would say at least with my limited undrstanding is that it would be considered a case of infringing upon their trademark as it could be taken as commercial use of their trademark.
    one thing though either way, and I am guilty of this myself with giving advice when I really can't give solid advice. what we believe it should be and how it really works might be two different things. how many of us are lawyers? for that matter how many of us are lawyers that deal with copyright/trademark laws? depending upon what advice we give it could lead the poster to get in a bad sticky expesive situation.
     
  16. How would one go about getting the permission to use some of the symbols I shot a documentary down in the subways I can blur them but it would be better to use them
     

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