What if I used someone's patented design

Product photos in the field of tension between copyright, trademark law and design protection

In this way, expensive warnings for product photos can be avoided

Overview: Find out here how you can create, use or purchase product photos in a legally secure manner so that you cannot be warned.

 

by Dr. jur. Ronald Kandelhard, lawyer, specialist lawyer for commercial and corporate law

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I. Introduction: Product photo and warning

Product images can be warned if a third party has the copyright on the photo. But it would be fatal to believe that self-made product images would be permissible without further ado. Here, too, there are three particular protective rights (not exhaustive) to be observed:

  • copyright
  • Trademark law and
  • Design protection

II. The copyright for third-party product images

The question of copyright for other people's images is relatively easy to answer. Practically every image of a product by a third party is protected by copyright.

1. The copyright of the photographer

The work of the photographer is (according to §§ 1, 2 Abs. 1 Nr. 5 UrhG) absolutely protected (i.e. against everyone). He alone decides (according to § 15 UrhG) how his photo may be used. In the context of the Internet, this applies in particular to the right of reproduction (in accordance with § 16 UrhG) and public access (in accordance with § 19a UrhG). In particular, it is forbidden to copy photos from third parties and use them for your own website.

Product photos are not necessarily protected by copyright. A certain level of creativity is always required, i.e. a sufficiently individual design of the picture. When exactly this is the case is difficult to determine, but can usually be left for product photos. Because in addition to copyright, there are additional ancillary copyrights for certain categories of works. These are protected without any special requirements for individuality.

The right copyright regulations for your photos on behalf of third parties can be found in our photography contract here:

Photography contract

2. The photo protection of the photographer

This also applies to pictures. Every photo is protected against duplication and unauthorized use in a similar way to copyright law (Section 72 UrhG). If this is violated, there is a risk of claims by the photographer for injunctive relief, damages and, above all, a warning (according to Section 72 (2) UrhG).

It is true that ancillary copyright often has a shorter term of protection than copyright. For photographs, it is 50 years from the date of publication, instead of the 70 years from the death of the author (in accordance with Section 72 (3) UrhG). But this only matters for products that are at least 50 years old.

3. The design protection for CAD product images

Another applies to computer-generated product images, for which copyright to photos is excluded. These can only be protected as a design (previously: registered design law). This right exists either for the designer for 3 years or for the designer entered in the register for up to 25 years. Such images are not considered here (more information about this here).

4. Legal consequences of copyright infringement on images

The adoption of third-party product images always violates the photographer's copyright or photo rights. According to § 97 UrhG, the owner of the photo or copyrights can assert omission and compensation. A (chargeable) warning in accordance with Section 97a UrhG can be issued for the omission. If the infringer does not sign a declaration of cease and desist with a criminal offense, the claim for cease and desist can be enforced by way of an injunction and / or the main action.

In addition, the injured photographer may also have claims for damages. This can according to the legal principles for triple damage calculation

  • specific damage to the photographer including lost profit (difficult to prove),
  • profit of the infringer that is causally related to the infringement (also difficult to determine in the case of product photos) or
  • include lost license income of the photographer.

The third variant is particularly relevant in practice. To determine the lost license income, industry overviews are regularly used, even if an individual valuation is always required). If the rights of a professional photographer are violated, the fee overview of the Mittelstandsgemeinschaft Foto Marketing can be considered.

Depending on the value of the image and the length of time it is used, this can result in further significant costs. These are also doubled if - as is always the case - in the unauthorized use of the image, the photographer's right to identify the copyright from § 13 UrhG was disregarded, i.e. he was not named as the author. Then the case law grants a surcharge of up to 100% on the determined license damage.

5.Exception of product photos on trading platforms (especially Amazon)

A common exception can arise if the image has been uploaded to a trading platform (e.g. Amazon). If the trading platform acquires the right to the image from the uploader, it can also make it available to third parties. The prerequisite, however, is that the uploader really owned the copyright to the image, as otherwise he cannot license it to the trading platform and this cannot license it to the other user. According to current case law, this applies in particular to Amazon.

6. Remaining alternatives

A) MAKE PRODUCT PICTURES YOURSELF

You should therefore by no means simply use images from the Internet. The best thing to do is to create the images yourself or to hire a third party to create them. But then the standards for III. of this contribution.

B) BUY PRODUCT IMAGES (LICENSE)

Buying stock photos is not an alternative for product images. Specific product photos are only very rarely found here, as the stock providers due to III. The legal principles shown on the rights to the designs, brands and designs shown usually prevent the uploading of such images.

Even if such pictures are found, it is important to pay close attention to the extent to which the rights to the picture are granted when purchasing them. Unfortunately, the license conditions for all stock photo providers are different. Since there is no good faith acquisition of rights, including image rights, it always depends on the design of the license conditions:

  • Can you also use it for advertising purposes?
  • Commercially?
  • Only on the internet?
  • For print too?
  • Transferable?
  • All resolutions?

These are just a few of the questions to consider when reviewing the manufacturer's license terms.

C) USE MANUFACTURER PHOTOS

Pictures from the manufacturer can be used in individual cases. Here, however, the permission must always be observed in each individual case. As with the licensing of stock photos, permission is always required for the specific type of use.

III. Property rights to objects shown

1. Trademark rights for the product or service

A) ILLUSTRATION AS TRADEMARK INFRINGEMENT

According to Section 3 (1) of the Trademark Act, signs, in particular words, images and three-dimensional designs, including the shape of goods or their packaging, as well as other presentations, including colors and color combinations, which are suitable for distinguishing the goods or services of one company from those of other companies, are protected. Company identifiers that are considered to be the name of a company in the traffic are also protected.

If such a trademark is shown in a photo, this can represent the use of the trademark according to § 14 Paragraph 1 MarkenG and thus also trigger claims for omission and compensation of the trademark owner according to § 14 Paragraph 5 and 6 MarkenG. Likewise, in the case of the use of the mark under Section 14 (2) of the Trademark Act, Section 143 of the Trademark Act may even be punishable.

However, this does not mean that the depiction of a brand is always prohibited. There are significant exceptions in trademark law.

B) EXHAUST PRINCIPLE IN TRADEMARK LAW

Why these exceptions are necessary becomes immediately clear when one considers how difficult it would be for the owner of a McBook, for example, to offer his computer without trademark infringement. Design, brand logo and brand are absolutely protected for Apple. He was not allowed to use a photo of his computer and would even have to rewrite the name. Therefore there is the exhaustion principle according to § 24 Abs. 1 MarkenG, so that the trademark owner cannot prohibit the trade in his products. Thereafter, the trademark of a product already legally placed on the market by the trademark owner can be used to describe this product.

According to Section 24 (2) MarkenG, this legal permission only applies if this does not infringe the legitimate interests of the trademark owner, in particular if the product has been changed or deteriorated after being placed on the market (although the deterioration due to intended use remains outside).

According to this, the depiction of a brand on a product image is permitted if it is used to describe a legally acquired product, in particular in order to trade with it. So anyone who deals with legally purchased, not deteriorated goods can take product photos of them and use them for an online offer of these goods.

B) SPARE PARTS AND ACCESSORIES IN TRADEMARK LAW

  • 23 MarkenG permits the use of the brand if certain features of the product are reported or accessories, spare parts or services relating to the brand are offered. For example, a shop that offers repairs for Apple products can refer to them using the brand.

However, this permission is limited to one use of the trademark, insofar as this is necessary. Of course, this can be argued about. Therefore, such use should be limited to what is absolutely necessary. The original brand may only be used descriptively to clarify the intended use. This primarily includes simple illustrations, the use of the logo, for example, should then only rarely be possible. In any case, it is excessive if the third-party brand appears to identify one's own services or goods. Images of names and, for clarification, also simple images of the product, in particular in a layout that corresponds to the use (e.g. image of an employee working on an Apple laptop, image of the attachment of a spare part to the original goods, etc.) should be permitted. Beyond that, it can be dangerous in any case, as it can hardly be said with certainty in advance that a court who is not very familiar with the subtleties of sales and marketing understands the necessity as much as you do.

C) BRANDED USE

In addition, a claim for injunctive relief under trademark law always presupposes that the trademark has been used in accordance with the trademark, i.e. in particular to identify goods or services. It is sufficient, especially in the case of well-known brands, if an attempt is made to benefit from the brand's awareness. For example, the depiction of the Rolls Royce brand in an advertisement for another product to make it clear that it is an exclusive product can violate trademark law. According to this, the depiction of a brand is only permitted if it only appears as an accessory and does not serve to identify a product.

D) TRADEMARK VIOLATION RESULTS

In summary, a product on which a brand is visibly attached can only be used safely if

  • if it is only an accessory,
  • it is about a permitted and non-defamatory reporting or the
  • Trading in a lawfully acquired, non-deteriorated product or
  • Spare parts for such a thing goes.

2. Copyrights to depicted objects (protection of motifs)

A) COPYRIGHT TO DESIGNS

However, a copyright cannot only exist on images. Also on

  • Paintings,
  • Statues,
  • Buildings,
  • Works of applied art (light installations, happenings, etc.)

copyrights may exist.

It is always a prerequisite that the designs have a sufficient height of creation. A difficult limit; in case of doubt, laypeople should assume copyright protection if the work is more than just everyday or technically self-evident. Strictly speaking, the desire to use the appropriate design for a photo can be a good indicator that it is protected by copyright. If it were just very commonplace, you would hardly want to use it.

B) COPYRIGHT INFRINGEMENT BY ILLUSTRATION

If there is copyright protection in accordance with this stipulation, the author of the design is again entitled to the absolute right (that is effective against everyone) to use it. According to § 16 UrhG, this also includes the right to decide whether and under what conditions his work may be reproduced or made available on the internet according to §§ 15, 19a UrhG.

An illustration using a photograph can be sufficient for this. As a consequence, the photograph of a copyrighted object by the photographer (and the subsequent use of the image by a third party) can violate copyright law. The artist can make injunctive relief and claims for damages according to §§ 97ff. UrhG have.

C) RELEVANCE FOR PRODUCT PHOTOS (PANORAMIC FREEDOM)

Since the product and not the protected design is primarily shown on product photos, copyright protection is only relevant for the designer if protected designs are used as the background for the product photos. As far as buildings or public works of art are concerned, such a representation can be covered by the freedom of panorama according to § 59 UrhG. This requires that the protected work (the design) is permanently accessible to the public. The Federal Court of Justice (BGH, ruling of April 27, 2017, Az .: I ZR 247/15) has decided that the (copyrighted) kissable mouth on the AIDA cruise ships may also be displayed as a panorama, because it is movable, but is always accessible in freely accessible places in the open air.

However, this only applies to works that are otherwise not permanently freely accessible. For example, a photo show in the open air that only takes place for a short time would not yet allow the photos to be displayed as a panorama. In addition, there is always freedom of panorama; if only the copyrighted work is shown, this is also not covered by freedom of panorama.

D) ILLUSTRATIONS OF COPYRIGHT PROTECTED PRODUCTS

But not only classic works of art can be protected by copyright. Artistically designed products or product packaging can also enjoy copyright protection. Examples are furniture of the so-called Bauhaus style, certain perfume bottles, well-designed technology and comparable examples.

However, copyright protection does not mean that product photos of such items may not be used. If product images are used by you to sell these items yourself, the principle of exhaustion also applies here. Although the principle of exhaustion in copyright law according to Section 17 (2) UrhG is not as broadly structured as in trademark law, the BGH recognized a general exhaustion principle in it. Accordingly, Tchibo was allowed to advertise the perfume Poison with the image of the perfume bottle protected by copyright, because Tchibo legally sold the product (BGH, NJW 2000, 3783 - perfume bottle). It may also be possible to use images protected by copyright when it comes to reporting.

3. The design protection of depicted objects

According to Section 2 DesignG, the design of a product (meaning its two- or three-dimensional appearance) can be absolutely protected for the designer / applicant. According to this, as under the MarkenG, the depiction of a product protected as a design can be prohibited (similar rights can result from competition law, for example from the point of view of slavish imitation).

As a result, however, the legal principles already discussed also apply to design law. In particular, the principle of exhaustion therefore also allows products protected as a design to be depicted in order to be lawful.

If you depict people, you need a model release contract - you can find it here:

Model release contract

IV. Result

It is possible to use product photos in a legally secure manner if the requirements of copyright, trademark law and design protection are observed. First of all, it is essential to acquire the copyright to the image, either by using the

  • Take product photo yourself
  • uses a public domain image
  • buys a product photo (licensed.

In terms of content, it is then important to stay within the scope of the exhaustion principle. Only images of products or services that are legally traded or for which spare parts or accessories are offered may be used. It must always be avoided to deteriorate the starting product. It is also not allowed to exploit the reputation of another brand.

Final tip: don't forget the author's naming! According to § 13 UrhG, the author can determine whether and how he is to be named as the author of his picture. You can find more about this in our article on the imprint.Otherwise, I also have a data protection generator for you that does all of the work for you.

Dr. Ronald Kandelhard, lawyer and mediator, specialist lawyer for commercial andCorporate law. Ronald was at the university for a long time, providing legal advice toStates and working as a lawyer. Now he is developing Paragraf7 with his startupautomated solutions for legal problems of companies.