Hollywood Sign Trademarked?
April 9, 2008 7:29 AM   Subscribe

I just got a cease and desist letter from a company that claims the Hollywood sign is one of it's clients. They are demanding monetary damages for a tourist photo of the sign I have on my website. Help. WTF? Etc.

So I was at first assuming this was an April fools joke, but they do indeed claim the sign as a client. And they do send out cease and desists and demand damage payments for using the photo. And the Hollywood Chamber website does say you need permission to use images of the sign. This is news to me.

Their claim is that the photo on my website "may represent an unlawful attempt to associate [my website] with the Property and improperly indicates the Chamber's endorsement and / or approval of [my website] and their services."

They want money. I'm suppose to give them all documents necessary for them to determine how much I owe them.

Now....... It's just a tourist photo. And I explicitly make no copyright claims about the photo. And it's not used in any way that even the most determined lawyer could argue constitutes or suggests any association or endorsement. I have Google ads, but I'm not selling anything, and the site has nothing to do with Hollywood, movies, Los Angeles, or movie stars.

I don't think I'm doing anything even remotely wrong here, and I don't want to take the photo off my website. But there is the threat to obtain monetary damages to deal with as well. My initial reaction is to hire a lawyer and counter sue them, but I have no idea where to go with that.

My question - What are my options here, and my best course of action? I'm not rich, so fighting this in court isn't something I can bankroll. But if they are indeed going to try and squeeze $5000 from me I'd rather use that money for a lawyer than just hand it over.
posted by Ragma to Law & Government (47 answers total) 7 users marked this as a favorite
 
Wow, this is highly bizarre. I agree with the counter suit. This strikes me as harassment.
posted by fusinski at 7:35 AM on April 9, 2008


I am not a lawyer yet. I am not trained in trademarks or copyright. It seems like you already have some advice from that thread you linked to with the cease and desist e-mail and the commentaries by others.

What I will say is this: There's a big difference between a cease and desist letter and a lawsuit. You have three options: 1) Ignore them completely 2) Don't write back, don't pay money but do take down the image from your site. 3) Engage in a licensing agreement as they suggest.

As most everyone else is probably going to say in this thread, you need to get a lawyer. I would be especially interested if you can use the image as fair use. Also, it's irrelevant what the Chamber of Commerce says, as far as whether you're in trouble or not. They are not a rulemaking body, and it doesn't matter what they say about their sign. Oh, also, you might have some trouble countersuing this company when they haven't sued you yet. Just saying.
posted by Happydaz at 7:41 AM on April 9, 2008


I am thinking scam.
posted by charlesv at 7:41 AM on April 9, 2008


IANAL. But the U.S. laws on taking pictures from public property are pretty well settled, with minor exceptions for clear privacy violations (i.e., shooting from a sidewalk through someone's bedroom window). By settled, I mean that if you're shooting from a public place, you have a right to use the picture for general purposes.

My guess would be this is a harrassment action, or a flat out scam.

I personally would try to get someone at the L.A. Times or other California media interested in the spectacle of the Hollywood people trying to punish tourists for taking pictures of one of the most famous tourist attractions in California.
posted by sacre_bleu at 7:46 AM on April 9, 2008 [1 favorite]


I've heard of this nonsense before. From what I remember, they charge a fee to any film production that features the sign, but I cannot recall hearing about them going after a website that has no promotional context whatsoever.

As long as you're not selling the photos or using them as promotion, I can't see the value of them suing you. As a matter of principal, I'd refuse to entertain any of their arguments. And if they persist, then I'd have to recommend using parody. A pr blunder involving digg/reddit/fark, etc. would put them in their place.
posted by jsavimbi at 7:46 AM on April 9, 2008


The Hollywood sign is cared for and protected by a nonprofit, Hollywood Sign Trust (contact info). They should have some legitimate information regarding your issue of the sign's IP.
posted by jmd82 at 7:48 AM on April 9, 2008


IANAL. But most lawyers give free initial consultations, and it sounds like it might be worth it to talk to one. This does smack of a shakedown, pure and simple.

It also sounds like you're in fair-use territory. This sign is available to be photographed freely; i.e. you do not have to trespass onto anyone's property to take the shot. You are also not selling the photo or otherwise using it commercially. There is also not any reasonable notification that this sign is under these kinds of use restrictions, as most reasonable people are not readily aware that this sign is protected as a trademark.

But, what I think doesn't matter. This is why it would be better to ask a lawyer. I doubt a countersuit would be a feasible option, but they'll know. If they won't take a countersuit on contingency you'll know they don't think it's a winner.
posted by azpenguin at 7:52 AM on April 9, 2008


I'm not rich, so fighting this in court isn't something I can bankroll.

Ergo, send them an e-mail and propose that you'll remove the photo from your website, under protest since you believe their claim is baseless, if they will leave you alone. If that doesn't take care of it, you'll need legal representation.

Your post seems confused as to whether you want to spend money on this. My answer assumes you don't.

the site has nothing to do with Hollywood, movies, Los Angeles, or movie stars.

Then you should have no reason to need the photo.

But if they are indeed going to try and squeeze $5000 from me I'd rather use that money for a lawyer than just hand it over.

If you want to argue this at all, you'll need legal representation. Note your confusion of "trademark" and "copyright" for example.

This is not legal advice, I am not your lawyer, and no atty-client relationship exists. I don't know anything about your website or your past actions.
posted by JimN2TAW at 7:53 AM on April 9, 2008


Wait, is this really just a personal "tourist" photo you took, or is it one of the photos on the public-domain photo site that's linked from your personal site? Because maybe it makes a difference, if you're offering up a photo of a trademarked sign as a public-domain photo. Just thinking.
posted by loiseau at 7:56 AM on April 9, 2008


I am not a lawyer. And none of the people who have answered are your lawyer. I think some of their advice (I'm thinking jsavimbi and above) could be a bit dangerous. Keep that in mind. I* do happen to think the people threatening you are being absurd*, and if it were me*, and I* had plenty of money, I'd* fight it, by getting a good lawyer first of all.

If you aren't willing to bankroll a legal battle, then you definitely need to take the picture in question off your website. That might* satisfy them. For trademarks to remain valid, you have to actively defend them, which basically means you have to threaten to sue people occasionally. That might* be all they're really doing here. If they continue to demand payment after you remove the sign, then you'll either need to pay up or lawyer up.******

*I AM NOT A LAWYER. Get one.
posted by gauchodaspampas at 7:57 AM on April 9, 2008


It's tempting to stand up for principle here, but even more tempting for others to urge that you do so. From what you have described, this is a trademark issue, not a copyright issue (so, among other things, who took the photo is an irrelevancy); it involves your use of the photo, not issues of access or privacy (so it doesn't matter where you were when it was taken, and so forth).

A couple of other disagreements with what has been said: (1) I seriously doubt this is a scam (though you should always be wary of disclosing your financial affairs to third parties); (2) the value in suing you is not related to how much your site is hurting them, but instead their interests in protecting the trademark from erosion, and salvaging bigger rights and paydays; (3) perhaps taking the issue to the press would cause them to back off, but in light of #2, I suspect that it would have precisely the opposite effect.

For anyone interested in such matters, look at this site for other examples. Professional photographers and image handlers are pretty used to dealing with this kind of issue, and the Hollywood sign is not unique. I agree that it sucks, but it is not isolate suckage.
posted by Clyde Mnestra at 8:01 AM on April 9, 2008


Okay, so you have the photo on your site in a section that encourages the download and use of the photos. While the photos you took are probably protected, I am guessing that encouraging people to download and use the photo how they see fit is not.
posted by Futurehouse at 8:01 AM on April 9, 2008


Oooh. And what loiseau said. That could be the issue here. Again, I think, and I'm not a lawyer, that taking a normal tourist photo, and putting it up on a personal website, which has no indication of being affiliated with the Hollywood Chamber of Commerce, or anything else like that, is fine. But they do have a right to control how their trademark is used. Putting it up as public domain, which says to people, "hey, you can use this photo however you want", which is what public domain basically says, could easily infringe on their trademark.
posted by gauchodaspampas at 8:02 AM on April 9, 2008


I don't want to spend money *and* I don't want to take the picture down. There is principle involved. As an American I don't like the idea that a licensing firm can demand damages for some tourist photos on my website. Especially when it's a photo of a hillside taken from a street in LA.

I'm fucking pissed off.

"Then you should have no reason to need the photo."

No. I don't need the photo. I want the photo. If I'm forced to remove it from my website in this manner I will be extremely upset and unhappy for a very long time.
posted by Ragma at 8:06 AM on April 9, 2008


I think you'll find this information from Dan Heller to be very relevant.
posted by DarlingBri at 8:09 AM on April 9, 2008


"Wait, is this really just a personal "tourist" photo you took, or is it one of the photos on the public-domain photo site that's linked from your personal site? Because maybe it makes a difference, if you're offering up a photo of a trademarked sign as a public-domain photo. Just thinking."

It is indeed on PD photo site. I was trying to avoid self-linking. And yes, I suspect my encouraging people to use the photo is relevant. But that's just my standard boilerplate.

And I agree, I need a lawyer.

This is making me extremely unhappy.
posted by Ragma at 8:15 AM on April 9, 2008


Ragma, so is "[your] website" that you're the one you've asked about before, with all images marked as public domain? If so, then you are probably in the wrong here. There's probably absolutely nothing wrong with putting your personal Hollywood signs up on your personal website, as long as you're not claiming that that photo, and implicityly, the sign therein, is public domain. The sign is not public domain. The holders of the trademark have a right to protect that trademark. They can't have an image floating around that people are freely using for whatever purposes they want because they believe it is public domain. You may not be claiming any affiliation with Hollywood by putting up the photo, but others could, using the photo which you took, and put in the public domain.
posted by gauchodaspampas at 8:16 AM on April 9, 2008


*"[your] website" that you're mentioning...

oops.
posted by gauchodaspampas at 8:18 AM on April 9, 2008


Flickr has tons of people who have uploaded thousands of pictures of the Hollywood sign.

Flickr has targeted ads to buy Hollywood sign merchandise from online retailers, from which Flickr makes money from the hosting of 'copyrighted' Hollywood sign pictures..

If they aren't doing anything wrong, I don't see how you could be.
posted by whoda at 8:20 AM on April 9, 2008


Just because they haven't been punished for it doesn't mean it isn't wrong.
posted by DoctorFedora at 8:27 AM on April 9, 2008


What whoda just said. I did a search on Flickr for "Hollywood Sign" and got over 8000 hits. Are they all being sued or getting cease and desist letters? Somehow I don't think so.
posted by worker_bee at 8:30 AM on April 9, 2008


A bonus question if it's allowed - How does one go about finding a lawyer to help handle this matter?
posted by Ragma at 8:32 AM on April 9, 2008


I have dealt with similar "trademark infringement" issues in the past, and here's what you need to know right off the bat:

1. DO NOT write back to these people or communicate with them in any way. Anything you say to them can be used against you.

2. Answer this question: Who took the photograph? If you took it, then you own the rights to it. Much of your situation will hinge on who actually owns the rights to the photograph in question.

3. Contact California Lawyers for the Arts. They're a non-profit organization of lawyers who specialize in and are dedicated to protecting the rights of artists.

4. Contact the Electronic Frontier Foundation.

5. This Google search is worth performing.

Good luck. I've run into this kind of harassment as well, and I can understand how maddening and frustrating it is.
posted by optovox at 8:33 AM on April 9, 2008


Every state bar has some sort of referral service. Call up the bar in your state and tell them your problem. They'll find you a lawyer.

Alternately, use a phone book.
posted by Happydaz at 8:36 AM on April 9, 2008


My first call would be to the EFF, and the second would be to the ACLU. As someone mentioned upthread, the laws regarding the taking of photos from public land is very, very well settled in the US. IANAL, but I am very familiar with copyright and trademark law.

If this happened to me, I would blog the exchange, putting it into the public sphere, and then ignore them...after I asked for advice from the above two organizations. This is a, in my not a lawyer opinion, a ridiculous request.
posted by griffey at 8:41 AM on April 9, 2008


Not even DISNEY, the trademark protector of protectors, would be so outlandish as to claim you couldn't post a tourist photo of their parks on your website.

This has been clarified so many times by the courts - I say blow it off.
posted by Gerard Sorme at 8:45 AM on April 9, 2008


"Answer this question: Who took the photograph? If you took it, then you own the rights to it."

I took it, while standing in a public street in Hollywood. I was on vacation with my wife.
posted by Ragma at 9:24 AM on April 9, 2008


I did a search on Flickr for "Hollywood Sign" and got over 8000 hits.

Search results for "Hollywood Sign" at Google Images -- 29,400.
posted by ericb at 9:30 AM on April 9, 2008


"Answer this question: Who took the photograph? If you took it, then you own the rights to it."

I took it, while standing in a public street in Hollywood. I was on vacation with my wife.


Oy. Don't shoot the messenger, but this has very little if any bearing on the trademark claim. The issue is what's shown, and the associations made therewith, not copyright in the image.
posted by Clyde Mnestra at 9:41 AM on April 9, 2008


I suspect the "public domain" factor may be an issue here. You can copyright photos that have the Hollywood sign in them, just like you can copyright photos that have the Coke logo in them. The issue is how the photo gets used. If the image is used commercially, or if an association is implied, you've crossed the line.

But of course I'm not engaging in commercial use. I assume my liability ends there, but I'll find some folks willing to admit they're lawyers and see what they think.*

*Not that I think people here should admit they are lawyers, it's just a bit farcical after a bit.
posted by Ragma at 9:46 AM on April 9, 2008


One small data point for you: a cease and desist from a lawyer, even one representing a client known to be extremely litigious, does not automatically result in a lawsuit. When I got a cease and desist [self-link, but relevant] over a purported trademark issue, I wrote back (nb, not what optovox recommends) and pointed out that my non-commercial site could not be infringing Scientology's trademark. The lawyer wrote me once more, but that communication seemed more intended to take up my time and energy than anything else, so I stopped responding.

That was more than six years ago. Site's still up; no lawsuit was ever filed. (They DMCA'd me in 2005, but that effort was similarly ineffective at removing my research from the web.)

Also, I am SO not a lawyer, but it's worth understanding the purposes and nuances of copyright vs. trademark. Trademark's original purpose was to prevent people from being misled about the creator of a good - so if I stood on a corner hawking homemade burgers with a big McDonald's logo over my card table, I would be trying to fool consumers into thinking I was selling genuine McDonald's food. Trademark was meant to protect consumers. That's why non-commercial uses and reporting are protected. Some lawyers and corporations have been working hard to expand trademark into something that's purely for the benefit of corporations and Joe Citizen be damned, but we aren't there yet.
posted by kristi at 10:27 AM on April 9, 2008


Ragma, I agree with your last comment. Technically, you might not have done anything wrong, because you're only claiming that your photos are public domain (right?), which falls under copyright law anyhow, and not necessarily that the subject matter of them is. I did sort of say that before though. But, I realized that it's pretty obviously implied that public domain claims only apply to the photos themselves. You could have a 150 year old photo of a trademarked subject, but that doesn't negate the public domain status of the photo. You could try to fight this by saying, "hey, I only claim my photos to be public domain. That doesn't mean I'm telling people they can violate the trademarks and copyrights of the subject matter of my photos". And fighting it could cost you a lot of money. If I was in your position, just to appease them, I might put up a disclaimer along the public domain licensing that only the photos are claimed to be public domain. It should seem pretty obvious, but, they have money.
posted by gauchodaspampas at 11:12 AM on April 9, 2008


Maybe if we saw the photo - and the page it was on?
posted by BrianBoyko at 11:27 AM on April 9, 2008


"I might put up a disclaimer along the public domain licensing that only the photos are claimed to be public domain."

I think I say that. I could be more explicit about it. But it's already very explicit. Good point though.
posted by Ragma at 11:52 AM on April 9, 2008


"Maybe if we saw the photo - and the page it was on?"

Self link warning!!!!!!!!! Admins delete if this is out of bounds.
http://pdphoto.org/PictureDetail.php?mat=pdef&pg=8099
posted by Ragma at 11:54 AM on April 9, 2008


I think the issue may actually be quite finite: by placing the photo in the public domain, you are essentially licensing it for commercial use because you are placing no restrictions on how it may be used. The question then becomes if someone uses the photo in a way that does imply an association, does the fact that there is no property release become their problem or yours?
the question as to whether a release is required has nothing to do with your having the image, nor your ability to license the image; but rather, how the person who buys the image puts it into use. If that use implies an association, or relies upon the good will of the logo, then a release may be required or desired. But that decision is made by the licensee, not the photographer.
So from that, it sounds like you're in the clear and the trademark owner's real beef is going to be with a handful of people (essentially, your licensees) who may use the photo in a way that violates trademark protection. But yeah, unfortunately, I think you need to sit down with an attorney versed in trademark and IP before you tell them to get stuffed.
posted by DarlingBri at 1:57 PM on April 9, 2008


DarlingBri, doesn't there have to be some ownership interest in the image for there to be a license? Since Ragma has waived all rights to the image, there's nobody who can keep anybody else from making a copy.
posted by oaf at 2:59 PM on April 9, 2008


Oaf, as this answer to a previous question of Ragma's indicates, it really isn't as simple as that. The idea of public domain was originally about death of authors and 70 years and all that; there is not actually a mechanism for releasing copyright without transfer in the author's lifetime or indeed, of obliterating it all together.

I believe the position this leaves Ragma in is that he is still the copyright holder, despite the fact he doesn't really want to be, and is effectively licensing his photos to anyone for any use, commercially or non commercially, without attribution and free of charge. But again, I'm not a lawyer. I also have no idea what gender Ragma may be, so apologies.
posted by DarlingBri at 3:31 PM on April 9, 2008


(In case it matters or I was unclear, which I think I might have been: optovox's advice - that you shouldn't reply at all - may be excellent advice. My little aside in my post was simply pointing out that when I did reply to the C&D I got, six years ago, that action was contrary to the possibly excellent advice optovox gave you. YMMV. IAStillNAL.)

(Also, nthing the advice to contact the EFF and Lawyers for the Arts, and checking out the California Anti-SLAPP project as well.)
posted by kristi at 4:34 PM on April 9, 2008


I suspect they have a problem with the photo appearing just under the banner ad:
"Royalty Free, Public Domain, Stock Photos | PD Photo.org"
As well, the title of the page: "Free Pictures of Hollywood Sign."

That being said with so many photos of the sign available online, what's their beef in this instance?

It's an interesting thread, reading about the legal issues and resulting variables involved.
posted by ericb at 6:02 PM on April 9, 2008


If you are distributing this photo of their trademark as a royalty free public domain stock photo, then you are on different legal ground than if you just put it up on flickr as a vacation photo.

I agree, though, that you should ignore it. A cease and desist letter is meaningless. If you get sued, hire a lawyer if it's that important to you.
posted by gjc at 8:06 PM on April 9, 2008


I'm not a lawyer, either ... but I think the "Make a Donation" button under the photo is a problem. From their perspective, somebody's making money off it.
posted by pmurray63 at 9:08 PM on April 9, 2008


I talked to a lawyer. I'm following his advice.
posted by Ragma at 12:56 PM on April 11, 2008


It's not on your site anymore, but I think I've found your picture, and you may be interested to know that other people are using it, and even selling it it seems.

One

Two
posted by whoda at 8:52 PM on April 11, 2008


Did the lawyer's advice involve not telling us about what he said? I've been curious as to the end result.
posted by TheOnlyCoolTim at 9:12 AM on April 12, 2008


Ask a question, get tons of thoughtful responses, then you ask a lawyer that gives you an answer that involves you taking your photo down - and then not tell us what the lawyer said? You could help a lot of people, not to mention it being a nice thing to do after soliciting (and receiving) so much advice here.
posted by Gerard Sorme at 12:31 PM on April 12, 2008 [1 favorite]


My guess is that the advice ran along the lines of "if they sued you, you'd win, but you'd end up with a hefty legal bill anyway."
posted by oaf at 4:38 AM on April 15, 2008


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