Trademark from Stock photo / Passing Off

Posted by . updated on 11/11/2009
I hoping someone can advise me of any remedies I have.

I have licensed a non-exclusive stock photo for use in the cover of an ebook I sell through my website. The advertising and website itself heavily features the cover of this book, which is comprised primarily of this stock photo.

The ebook is in a niche market, with only 2 or 3 competitors, all of which are smaller than me. It's very likely that anyone searching for this niche market will be aware of my ebook and its cover.

I've recently discovered that one of my major competitors has licensed the same stock photograph and is using it in their advertising materials. It is inconceivable that he wasn't aware of my site and has certainly decided to use said photo (which is actually very generic in nature) because I've been using it on my site for some time.

I've received emails from potential customers asking if I am affiliated with this competitor or if we are selling the same product under different names.

I've made heavy investment in the design of my site and promotion materials involving said stock photo and am reluctant to re-brand my site after my brand image has been established in the market. Of course, I wish I'd started off with an exclusive image... but that is in the past.

I want to stop my competitor from using the same stock photo on their website.

I'm not sure whether this is a potential trademark issue, or a matter of 'passing off' - or perhaps there's another term used to describe the situation.

Is he infringing my trademark?
Is he guilty of passing off?
Anything else?

Incidentally my license for the photo prohibits use of the photo in a trademark. I'm not sure how this affects my claim if at all. I would have thought that such a license can't prevent a trademark being formed - just that I would be in breach of my photo license.

Thanks for any advice.
Answers (1)
You may want to look at the royalty free license terms governing your use of the stock photo.  Most such licenses, in my experience, include restrictions on use of photos as marks.  Ultimately, I'm not sure how that might substantively affect your rights as against the competitor, but in practical terms it could cause problems (e.g., your competitor might bring your TM use to the licensor's attention should you try to assert TM rights in the photo, thereby opening you to breach of contract liability).

I'd speak to an attorney directly if this is important to your business.  In that context, you'll best be able to assess the risk/benefit/cost of your potential courses of action.

- Jeff

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