Could Clemson require a license to sell a photograph of Tillman Hall?

Plain-English summary

A photographer said a Clemson frame shop would not buy his Tillman Hall prints unless he paid the university for a license. In 2006, the South Carolina Attorney General found no state-law basis for the alleged requirement. The office then analyzed possible federal copyright and trademark theories, while stressing that it did not know whether Clemson held any relevant protection and that only a federal court could make a final determination.

The opinion explained that copyright in an architectural work visible from a public place does not give its owner the right to prevent photographs of that building. That rule would apply even if Clemson held architectural copyright in Tillman Hall. A different question would arise if Clemson owned copyright in an existing photograph: a new photograph could infringe if it copied protected creative elements and was substantially similar. Merely showing the same building would not, by itself, establish that similarity.

The AG also considered a possible trademark in Tillman Hall's design. Under the federal case it discussed, a building image would raise an infringement question if it functioned as a source or sponsorship signal and might lead buyers to think Clemson produced or sponsored the print. The opinion did not find that Clemson had a valid mark or that this photographer's image created that confusion.

Currency note

This opinion was issued in 2006. Subsequent statutory amendments, court decisions, or later AG opinions may have changed the analysis. Treat this page as historical context, not current legal advice. Verify current law before relying on any specific rule, deadline, or remedy mentioned here.

Common questions

Q: Did architectural copyright alone let Clemson stop photographs of Tillman Hall? A: The AG said no if the building was in or ordinarily visible from a public place. It read federal law as permitting pictures of an architectural work in that situation.

Q: Could a separate copyright in an existing Clemson photo matter? A: Yes, if Clemson held such a copyright and the new photo was substantially similar in protected creative elements. The AG did not find those facts established.

Q: Did the opinion decide whether Clemson could charge this photographer a trademark license fee? A: No. It analyzed a possible source-identifying use and consumer confusion, but left Clemson's actual rights and the photograph's effect unresolved.

Background and statutory framework

The request relayed a photographer's report that a frame shop wanted a Clemson license before buying his prints. The AG could not identify a South Carolina-law basis for that demand. It discussed the architectural-work photograph exception in 17 U.S.C.A. § 120(a), separate copyright protection for photographs, and the federal trademark rule on confusing use of a building design as a mark. These were conditional analyses; the opinion did not verify Clemson's ownership of a copyright or trademark.

Citations and references

The opinion quotes 17 U.S.C.A. § 120(a) and discusses a cause of action under 15 U.S.C.A. § 1114. It analyzes federal cases on architectural photographs, substantial similarity of photos, and trademark use of landmark designs.

Official title

Regarding the attempted sell of copies of a photograph taken in October of 2005 in Tillman Hall at Clemson University.

Requester

The Honorable Chip Huggins, Member, House of Representatives

Source

• Landing page: https://www.scag.gov/opinions/opinions-archive/march-16-2006/
• Original PDF: https://www.scag.gov/wp-content/uploads/2011/03/mar16-06-Huggins.pdf

Original opinion text

HENRY MCMASTER
ArroRNEY GENERAL

March 16, 2006

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The Honorable Chip Huggins
Member, House of Representatives
308 Wayworth Court
Columbia, South Carolina 29212
Dear Representative Huggins:
We received your letter requesting an opinion of this Office regarding an issue raised in a letter you received from Ted Simpson, which you attached to your opinion request. According to Mr. Simpson's letter, he attempted to sell copies of a photograph he took in October of 2005 of Tillman Hall, located on Clemson University's campus, to a frame shop in Clemson, South Carolina. Mr. Simpson stated: "I was told by the owner that before he could buy my prints, I would have to obtain a license from Clemson." From Mr. Simpson's letter, he indicated you referred him to the Assistant Staff Counsel to the South Carolina House Judiciary Committee. Mr. Simpson stated: "after [Assistant Staff Counsel] researched the matter he could find no legal basis for Clemson's position." Mr. Simpson added, Assistant Staff Counsel also spoke with the Director of Licensing at Clemson, who informed him that "Clemson's policy was to require a licensing fee in exchange for their implied consent." Thus, you request an opinion of this Office addressing Mr. Simpson's concerns. Law/Analysis

As Mr. Simpson concluded in his letter, Clemson's basis for requiring a licensing fee in exchange for their implied consent is unclear. In our analysis of Mr. Simpson's concerns, we were unable to uncover a basis under South Carolina law for Clemson's alleged licensing requirement. Thus, we presume Clemson's position on this matter is rooted in federal copyright or trademark law, and we will attempt to analyze the issue presented under such law. We are unaware of whether Clemson maintains copyright or trademark protection with respect to Tillman Hall, however, we will make such a presumption for purposes of this opinion. Initially, we are compelled to note as we did in an opinion of this Office dated March 24, 1989, "While it is always true that an opinion of the Attorney General is advisory only and may simply comment upon the law as it presently exists, it is especially important to emphasize this fact here where the question you raise is a federal one and will thus have to be resolved ultimately by the United States Supreme Court." Therefore, we will attempt to provide you guidance on this issue,

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while keeping in mind only a federal court can make a final determination on issues of federal law'.

Copyright Protection

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Title 17 of the United States Code contains the federal copyright laws. Under this title, section 102(a) lists eight categories of works afforded copyright protection. Included in this list are "architectural" works. 17 U.S.C.A. § 102(a)(8). Section 120 under title 17 deals with the scope of copyright protection for architectural works. This section specifically allows pictorial representations of architectural works. "The copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place." 17 U.S.C.A.
§ 120(a).
The United States Court of Appeals for the Ninth Circuit examined section 120(a) in Leicester v. Warner Brothers, 232 F.3d 1212 (2000). In that case, a designer of a streetwall and courtyard brought copyright action claiming W amer Brothers infringed on his copyrights for such "sculptural works" when it filmed a movie depicting a portion of the streetwall. The Ninth Circuit determined the streetwall was an architectural work and Congress, in its enactment of the Architectural Works Copyright Protection Act of 1990, "did not afford architectural works full copyright protection; rather, it exempted the making of pictorial representations of architectural works from copyright infringement." Id. at 1217. Furthermore, that Court recited the following excerpt from the House Report explaining the reason for exempting pictorial representations of architectural works from copyright protection: Architecture is a public art form and is enjoyed as such. Millions of people visit our cities every year and take back home photographs, posters, and other pictorial representations of prominent works of architecture as a memory of their trip. Additionally, numerous scholarly books on architecture are based on the ability to use photographs of architectural works. These uses do not interfere with the normal exploitation of architectural works. Given the important public purpose served by these uses and the lack of harm to the copyright owner's market, the Committee chose to provide an exemption, rather than rely on the doctrine of fair use, which requires ad hoc determinations. Id. (quoting H.R. Rep. No. 101-735, at 22). Thus, presuming Clemson has a valid copyright on Tillman Hall as an architectural work, we find this copyright does not include "the right to prevent the making, distributing, or public display of ... photographs ...." 17 U.S.C.A. § 120(a).

The Honorable Chip Huggins
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March 16, 2006

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Although federal copyright law does not appear to prohibit individuals from photographing Tillman Hall, we must note another provision under the federal copyright law that may restrict Mr. Simpson's activities. Section 102(a) of title 17 of the United States Code provides: "Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device." Photographs, like architectural works, are specifically included in the list of eight categories ofworks afforded copyright protection. Id. "To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." FeistPubl'n. Inc. v. Rural Tel. Serv., 499 U.S. 340, 361 (1991). "The plaintiff can prove copying either directly or indirectly, by establishing that the defendant had access, and produced something 'substantially similar,' to the copyrighted work." Leigh v. Warner Bros .. Inc., 212 F.3d 1210, 1214 (11th Cir. 2000). Although the Eleventh Circuit Court of Appeals in Leigh v. Warner Brothers. Inc., 212 F.3d 1210 (11th Cir. 2000), held the ultimate determination of whether photographs are substantially similar is a question of fact for the jury, it provided some guidance in making this determination. That Court found neither the subject matter nor the setting alone entitles a photograph to copyright protection. Id. at 1214. Rather, the Court concluded such protection is found in "the elements of the photographers craft," such as "lighting, shading, timing, angle, and film" and ''the overall combination of these protected elements as well as the mood they convey." Id. at 1214-15. Thus, assuming Clemson holds a valid copyright on an existing photograph, Mr. Simpson is prohibited pursuant to federal copyright laws from producing a photograph substantially similar to the copyrighted photograph. But, this restriction according the to Eleventh Circuit, is not invoked simply because the subject matter is the same.

Trademark Protection
In addition to the protection provided under the federal copyright statutes, Clemson may claim Tillman Hall's building design is protected under the Lanham Trade-Mark Act, providing protection from trademark infringement. 15 U.S.C.A. § 1051 ~ Section 1127 of title 15 of the United States Code defines "trademark" as "any word, name, symbol, or device, or any combination thereof-- (1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this chapter .... " Section 1114(1) of title 15 provides for a civil cause of action against: Any person who shall, without the consent of the registrant-(a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in

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connection with which such use is likely to cause confusion, or to cause mistake, or to deceive; or

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(b) reproduce, counterfeit, copy, or colorably imitate a registered mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles or advertisements intended to be used in commerce upon or in connection with the sale, offering for sale, distribution, or advertising of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.

In Rock and Roll Hall of Fame and Museum. Inc. v. Gentile, 134 F.3d 749 (6th Cir. 1998), the Rock and Roll Hall of Fame and Museum (the "Museum") brought an action under 15 U.S.C.A.
§ 1114 against the publisher of a poster depicting the Museum claiming the publisher infringed on a trademark the Museum held on its building's design. The Sixth Circuit Court of Appeals recognized "a photograph which prominently depicts another person's trademark might very well, wittingly or unwittingly, use its object as a trademark," but in this case the Court was "not persuaded that the Museum uses its building design as a trademark." Id. at 754. In reaching this conclusion, the Sixth Circuit stated: "in order to be protected as a valid trademark, a designation must create 'a separate and distinct commercial impression, which . . . performs the trademark function of identifying the source of the merchandise to the customers."' Id. at 753 (quoting In re Chem. Dynamics. Inc., 839 F.2d 1569, 1571 (Fed. Cir. 1988)).
[W]hether alleging infringement of a registered trademark, pursuant to 15 U.S.C. § 1114(1), or infringement of an unregistered trademark, pursuant to 15 U.S.C. § 1125(a)(l), it is clear that a plaintiff must show that it has actually used the designation at issue as a trademark, and that the defendant has also used the same or a similar designation as a trademark. In other words, the plaintiff must establish a likelihood that the defendant's designation will be confused with the plaintiff's trademark, such that consumers are mistakenly led to believe that the defendant's goods are produced or sponsored by the plaintiff. Id. at 753-54 (citations omitted). Based on these determination, the Court found:
[W]hen we view the photograph in Gentile's poster, we do not readily recognize the design of the Museum's building as an indicator of source or sponsorship. What we see, rather, is a photograph of an

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accessible, well-known, public landmark. Stated somewhat
differently, in Gentile's poster, the Museum's building strikes us not as a separate and distinct mark on the good, but, rather, as the good itself. Id. at 754.

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Given the Sixth Circuit's holding, if Clemson holds a valid trademark on the building design of Tillman Hall, it could restrict Mr. Simpson from reproducing such a trademark. However, for Clemson to invoke such a restriction, Mr. Simpson's photograph of Tillman Hall must be of the type that serves source-identifying function, which may cause consumers to mistakenly believe Mr. Simpson's photograph was produced or sponsored by Clemson.

Conclusion
The federal copyright law, in an effort to protect architecture as a public art form, specifically excluded pictorial representations from the copyright protection afforded to architectural works. 17 U.S.C.A. § 120(a). Thus, assuming Clemson holds a copyright on Tillman Hall as an architectural work, it may not prevent individuals from taking photographs of the building. Nevertheless, if Clemson holds a copyright on a photograph, it may claim copyright protection on such photograph if Mr. Simpson's photograph is substantially similar, beyond simply containing the same subject matter, to the copyrighted photograph. In addition, under the auspices of Rock and Roll Hall of Fame and Museum, if Clemson holds a trademark on the building design of Tillman Hall, it may prevent Mr. Simpson from reproducing such a trademark in a way that consumers would believe Clemson produced or sponsored the photograph. However, again we note, whether or not Clemson is afforded protection under the federal copyright or trademark laws involves questions of federal law, and only a federal court may make such determinations. Very truly yours,

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REVIEWED AND APPROVED BY: