Can I Trade Mark My Picture?
George Raptis
As you may know, different forms of intellectual property rights protect different types of material. As a general rule of thumb, a registered trade mark protects the distinguishing features of a business, whereas copyright protects original works. This article outlines the key purposes of trade marks and copyright, which can protect your picture depending on the type of picture you are trying to protect. This will help explain whether you can trade mark a picture.
What Are Trade Marks?
Registered trade marks provide you with the exclusive right to use, license and sell your trade mark in connection with a particular good or service. A registered trade mark typically protects the features that make a business’ brand distinguishable from its competitors. These features include a business’:
- logo;
- catchphrase; and
- name.
Therefore, there are some circumstances in which you can trade mark a picture. In this instance, if your picture is a logo or in some way represents your brand, you can likely trade mark it. For example, both Nike’s ‘Swoosh’ symbol and McDonald’s ‘Golden Arches’ are ‘pictures’ that are registered trade marks. This is because they represent their respective business and the goods they sell.
Another defining feature of trade marks in Australia is that you must register trade marks with IP Australia.
Duration
A registered trade mark is protected for 10 years from its filing date. However, owners of a registered trade mark can renew their application 12 months before the expiry of their trade mark. In this sense, there are no limits to how many times you can renew your trade mark application as long as you meet the deadlines and pay for renewal.
Ownership
Since you are required to register trade marks with IP Australia, the question of ownership is relatively clear. It is usually the person who applies for the trade mark who will be the trade mark owner. However, there are instances, especially in the context of a company, where the person applying for the trade mark:
- has authorised another person to use the trade mark later; or
- intends to assign the trade mark to a company that will use the trade mark.
Overall, a trade mark owner must have legal status, either as an individual person, a group of persons or an incorporated company.
Trade Mark Protection
A registered trade mark owner can enforce their exclusive rights when somebody has infringed their trade mark.
Trade mark infringement occurs when someone uses a similar or identical mark to your registered trade mark in connection with similar goods or services. For example, if an independent shoe manufacturer adopted the ‘Swoosh’ symbol on their packaging, they would likely commit trade mark infringement against Nike’s rights.
By enforcing your rights as a trade mark owner, you can stop the other person from committing infringing conduct. In addition, where you have suffered a loss as a cause of the infringing conduct, you may also have legal remedies available.
Copyright
On the other hand, copyright prevents others from copying your original works without your permission. This means that you have the right to:
- reproduce your picture;
- publish your picture;
- publicly display your picture; and
- communicate your picture to the public, like posting the picture on your website.
Beyond these rights, Australian law recognises that copyright owners also have a set of ‘moral rights’. These rights ensure that you are attributed as the creator of the picture and defend against any false attribution of authorship.
In this instance, a picture that you have taken and sold as an artwork, or a picture posted on a blog, would be considered an artistic work protected by copyright.
Unlike trade marks, copyright protection applies automatically in Australia as soon as the original material is created. This means that you do not have to register the copyright with any government entity. Instead, copyright laws can protect your picture as soon as it is captured or printed.
Duration
The duration of copyright protection will depend on the original work’s form and whether its creator is known. Generally, copyright protects images and photographs for the creator’s life and a further 70 years after the creator’s death.
Ownership
While trade mark ownership is clear and identifiable on the Trade Mark Register, copyright ownership can be quite difficult to discern. Generally, the creator of the picture will be its copyright owner. However, the copyright ownership will differ if you produced the picture for:
- a commission piece; or
- your employer during the course of employment.
If your client commissions an image for a private purpose, such as a wedding photo, the client will be the copyright owner. However, if your client commissions an image for a commercial purpose, such as a photo to upload on their website, you will be the copyright owner.
Similar to commissioned photos, if you are an employee of a business and take pictures as part of your role at work, your employer will usually own the copyright to the image. Copyright ownership can differ in these circumstances if both you and your client or employer have made a prior agreement as to who owns the copyright ownership in a picture.
Copyright Protection
Like trade marks, copyright gives the owner the ability to prevent others from using their original work without their permission. In the instance where someone misuses your picture, you can issue a copyright infringement notice to the infringer. This notice will generally:
- alert the infringer to the fact that they have misused your picture;
- request the infringer to stop their infringing conduct, like removing the picture from their publication; and
- warn the infringer of potential legal proceedings if they do not stop their infringing conduct.
However, you should note that there are instances where someone can use your copyright material without first asking for your permission. In the Copyright Act, these are referred to as ‘fair dealing’ purposes that allow others to use your material without your permission to study, review, parody, or report the news.
Key Takeaways
Different forms of intellectual property will protect different types of pictures. For example, if your picture represents your business’ brand, such as a logo or an identifiable image, it is likely protected by trade marks. On the other hand, if your picture is an ‘artistic work’, whether it is a wedding photo or photo produced for a publication, it is likely protected by copyright. If you need help to trade mark a picture, our experienced trade mark lawyers can assist. Call us on 1300 657 423 or complete the form on this page.
Frequently Asked Questions
Multiple parties can jointly own copyright. Before collaborating, you and the other person can agree on who owns the copyright once you create the picture.
Since you have not allowed the person to use your picture, copyright infringement has likely occurred.