Chuck Gentile demolishes building trade mark claim

American photographer Chuck Gentile has won a landmark victory against the Rock and Roll Hall of Fame, whose museum is registered in the US as a trade mark. An American court has dismissed the museum’s claim against Gentile, who produced posters of the building captioned with the words Rock and Roll Hall of Fame, also a registered trade mark.

The judge decided that the museum had not used images of the building as a trade mark and neither had Gentile. Nobody was going to buy his posters believing they were official merchandise from the museum.

Building trade mark owners in the US have been aggressively pursuing claims against photographers and photo libraries. Some UK building owners have been attempting to follow their example: threats have been made against people exploiting images of the Millennium Dome and the Church of England has even been reported as discussing the trade marking of its cathedrals!

Such claims may still be possible in special instances, but common sense appears to be prevailing. The US court has accepted that people buy images of buildings because they like the images, not because they mistakenly believe them to be authorised merchandise.

The UK position with buildings is likely to be similar, identical reasoning having already been applied to the attempted trade marking of photographs of Princess Diana’s face (and a trade mark in the name Elvis).

The position across the Channel remains problematic. The Eiffel Tower, for example, is a registered trade mark and the French court is unlikely to be impressed by lawyers citing Chuck Gentile. Libraries with images of famous buildings in their collections must still therefore be careful to impose geographical restrictions.

Bulletins are for general guidance only. Legal advice should be sought before taking action in relation to specific matters. Where reference is made to Court decisions facts referred to are those reported as found by the Court. Please note that past bulletins included in the Archive have not been updated by any subsequent changes in statute or case law.