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.