Stock Photos of Pine Tree Air Fresheners Could Infringe

by Thomas Long, Legal Editor, CCH Trademark Law Guide  

Stock photo agency Getty Images (“Getty”) could have infringed and diluted common-law trademark rights held by a manufacturer of air fresheners in connection with its famous tree design marks (“Tree Marks”), according to the federal district court in Syracuse, New York. Getty allegedly promoted and licensed digital media for commercial use through its website that included one or more tree designs that were identical or confusingly similar to the Tree Marks.Getty could have “used” the Tree Marks as trademarks in pictures, that is, to identify their source or to sell the pictures, the court said. For example, one of the images on Getty’s site was of a Tree Mark bearing the words “Car-Freshner” (the manufacturer’s name) and “Royal Pine,” with its shadow. Other images showed a Tree Mark dangling from the rear view mirror of an automobile, where the manufacturer’s air fresheners are often hung.

Getty’s alleged use of the Tree Marks would not constitute nominative fair use, in the court’s view. The manufacturer plausibly alleged that Getty’s use of the marks was likely to lead to confusion as to the source or origin of Getty’s images, specifically that consumers would incorrectly believe that the images originated from, were sponsored by, were approved by, or were in some other way affiliated with the manufacturer. Getty allegedly licensed images displaying the Tree Marks with the full knowledge of the value and fame of the marks, and Getty allegedly continued to promote and license the images after receiving written notification of the manufacturer’s trademark rights. The manufacturer’s assertions plausibly suggested that Getty acted with the purpose of capitalizing on the popularity of the Tree Marks, the court concluded.

Car-Freshner Corp., ND N.Y., ¶61,880.