The National Law Forum

The Blog of the The National Law Review

The Artist’s Legacy – Business and Legal Planning Issues

Sheppard Mullin Law Firm

Photographers face unique issues that must be carefully considered to ensure a continued market for the creative output and to preserve the artistic reputation. Prudently managed business affairs will minimize problems commonly encountered when closing down a studio and during the transition of business affairs from the photographer’s life to the photographer’s estate.

First, there is the issue of care for the physical works, the critical planning for the inventory, conservation and storage of the photographer’s works. Second is the issue of advantageously placing the photographer’s works; which works should be preserved, which donated, and when, where, how, including considering a sale or donation to a publicly-accessible archive as a permanent home for papers and other materials. This naturally leads to the third issue, prudent sales; how much and what part of the inventory should be released for sale each year and through what means? Is this the moment to re-examine the extant gallery relationship? These decisions require knowledge of the market, including a sense of timing, market conditions, and museum/collector interest.

Getting the house in order also includes appointing executors, attorneys, and accountants who can be trusted, who know the family or estate, who are familiar with and responsible toward the photographer’s work and the market, and who have both sensitivity and concern for the future of the photographer’s works and artistic reputation. Estate planning considerations for a photographer also include issues relevant for any individual: to provide for the surviving children, spouse and others according to the law and the photographer’s wishes so as to assure orderly transition and minimize the potential for probate litigation. For a photographer, though, preserving and enhancing a legacy also includes efficiently managing the estate to maintain continuity and safeguard the assets.

Photographers must likewise consider their intangible assets, which include copyrights, trademarks, licensing potential, and the like. It is important for photographers to register copyrights and keep track of any copyright renewal or termination rights, to be aware of current assignments and licenses of the intellectual property, and to maintain orderly files of subject releases, photographer agreements and other agreements affecting the works. Photographers should also consider licensing decisions to promote accessibility and generate revenue. It is crucial to weigh each transaction in terms of its potential for affecting the photographer’s stature in the art market. Indeed, one should consider the implications of each decision as it promotes and/or dilutes the overall value of the photographer’s oeuvre.

The photographer must identify and implement a comprehensive business and legal framework that can guide the present and govern the future in order to assure that legacy is preserved in accordance with the photographer’s wishes.

Above is the text of a handout on business and legal planning issues prepared by Christine Steiner. Christine Steiner and Lauren Liebes recently joined Weston Naef, Getty Photography Curator Emeritus, and ASA appraiser Jennifer Stoots for “What Will Become of Your Legacy”, a panel discussion at Los Angeles Center of Photography.  The panel addressed business and estate planning issues for photographers. In our next post, Lauren Liebes will address the myriad estate planning issues to consider.

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“Google It”: The Search Engine’s Trademark May Be a Verb, But It’s Not Generic

Katten Muchin Law Firm

Google defeated a claim that its GOOGLE trademark was generic, in Elliot v. Google Inc., a recent case from the United States District Court for the District of Arizona.

In 2012, Google filed a Uniform Domain Name Dispute Resolution Policy (UDRP) Complaint against the owner of several hundred domain names that included the word “google.” The UDRP’s Administrative Panel ruled in favor of Google and ordered that the domain names be transferred to Google.

The domain name owner responded by suing Google in the Arizona district court, seeking cancellation of two of Google’s US Trademark Registrations covering search engines.

The domain name owner argued that “google” has become a generic term and is therefore not a protectable trademark. Google filed a motion for summary judgment to dismiss the domain name owner’s claims.

A generic term is one that identifies a general category of goods or services, while a trademark identifies the specific source of those goods or services. A trademark may become generic if the public ceases to associate the mark with a particular source of a good or service, but instead believes the term to refer to a general category of goods or services. Examples of trademarks that have become generic terms include “aspirin,” “escalator” and “videotape.”

In Elliot v. Google, the domain name owner tried to establish that the GOOGLE trademark had become a generic term for search engines. However, the domain name owner did not argue that the majority of the public understands the term “google” to refer to search engines in general. Instead, it based its genericness argument on the public’s use of the term “google” as a verb, contending that “verbs, as a matter of law, are incapable of distinguishing one service from another, and can only refer to a category of services.” The domain name owner offered media and survey evidence to support its genericness claim, but focused mostly on the public’s use of the term “google” as a verb. As a result, the court found that the evidence failed to create a genuine dispute about whether “the primary significance of the word ‘google’ to a majority of the public who utilize Internet search engines is a designation of the Google search engine.”

The court rejected the domain name owner’s genericness argument, holding that the use of a trademark as a verb does not, alone, prevent it from identifying a product or its source.

The court found the domain name owner’s reliance on verb usage as a basis for genericness “misplaced”; even if a majority of the public uses “google” as a verb to refer to the act of searching on the Internet, such usage does not make the term generic because the public still uses “GOOGLE” as a trademark to refer to Google’s search engine. Accordingly, the court granted Google’s motion for summary judgment and ruled that the GOOGLE mark is not generic. In reaching its decision, the court also noted specific steps taken by Google to prevent its GOOGLE mark from becoming generic, including using the mark to identify the Google search engine in national advertising campaigns, establishing standards for third-party use of the mark, and engaging in a pattern of enforcement measures.

The court’s decision highlights the risk that a trademark may become generic and reminds brand owners of steps they can take to prevent generic use of their marks. Brand owners can monitor both authorized and unauthorized uses of their trademarks to ensure their marks continue to function as source identifiers.

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