Ask an Agent is a regular monthly column tackling all your dilemmas about the photography industry – the photography industry’s very own Agony Aunt!
This month we bring you an Ask an Agent Halloween special. Lisa invites lawyer supremo Charles Swan, from leading media and creative law firm Swan Turton, to advise on trademarks in Halloween masks.
Charles Swan from Swan Turton
Dear Ask an Agent,
I’ve been asked to use Halloween masks in a shoot for a new soft drink and I’m just wondering if there might be any potential issues with trademarks and copyrights? For example what if I featured Frankenstein or Dracula? And whose responsibility would this be, the advertising agency’s or mine as the photographer?
Thanks for your question Robbie, I believe there could be some issues with particular masks whose characters might have trademarks. I remember being asked to produce a shoot featuring Batman once and indemnify the client against any third party claims. I was heavily advised by a lawyer not to do so, as the trademark for Batman is owned by the Walt Disney Company/Marvel Entertainment and associating Batman with another brand could be seen as falsely claiming that a brand is endorsing another brand.
In terms of whose responsibility this is, it needs to be made clear from the onset in writing. We incorporate in our terms and conditions the following clause to cover us just in case.
INDEMNITY. The Photographer and LPA shall only be responsible for obtaining clearance in respect of third party copyright works, trademarks, designs or other intellectual property if this has been expressly agreed in writing before the shoot. In all other cases the Client shall be responsible for obtaining such clearances and will indemnify the Photographer and LPA against all expenses, damages, claims and legal costs arising out of any failure to obtain such clearances.
And we also have a paragraph on the front of all our estimates and invoices headed ‘Important Information’ to reaffirm points like this for those clients that don’t read the ‘small print’
However, it shouldn’t simply be a case of passing the buck. As a professional photographer you should be aware of the potential hazards of shoot production and at least flag up the fact that there might be an issue to your client before they land themselves in trouble.
Anyway, I’m not a lawyer and sometimes it’s worth consulting one. So I asked Charlie Swan, one of the country’s top media lawyers and partner at Swan Turton, to shed a bit more light on the matter. Here’s what he had to say…
‘Although Frankenstein and Dracula are characters from out of copyright (public domain) novels, there is artistic copyright in specific versions of their appearance created for movies, comics etc. There might also be registered trade marks and using particular masks in a soft drink ad could indeed provoke a passing off (false endorsement) claim by the rights owner.
The key here is to make sure you warn your client, in writing, of the possible risk and get your client’s confirmation, again in writing, that they will be responsible for any necessary third party clearances. Most photographers’ terms and conditions will include an indemnity similar to your clause, but you should still put this in writing – to avoid arguments further down the line about who said what.
One thing you must avoid doing is saying anything to your client that might be construed as legal advice. It’s the agency’s job, not yours, to get legal advice about potentially risky elements of advertising photographs. If a client asks you whether something like a mask or a building or a designer sofa is ok to include in a shot, you should explain to them that they need to get their own advice. Otherwise, if a claim does materialise, the client may try to pass liability on to you. When the sh** hits the fan, everyone in the room tries to hide behind the next person!’
© Oliver Haupt. For illustration purposes only.
Charles Swan is a partner at Swan Turton LLP, his clients include leading advertising, marketing and design agencies, advertisers, trade associations, image libraries, photographers, agents, publishers and artists. Charles heads the firm’s Advertising & Marketing and Photography & Visual Arts Groups. He is rated by Thomson Reuter as a UK Super Lawyer and by Chambers & Partners as a Band 1 Advertising & Marketing lawyer, is Honorary President of Adlaw International, a member of the Advertising Lawyers Group and is a director of the Association of Photographers.
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