Beneficiaries fight over right to Getty name

Two beneficiaries of the famous Getty name are in the midst of disputing which has the right to use the well-known philanthropist's name to sell photographs to individual consumers.

The J Paul Getty Trust (Getty Trust) has filed a lawsuit in a California district court against Getty Images Inc, a company founded and run by the grandson of the late philanthropist J Paul Getty alleging, among other things:

• breach of contract;
  
  
• trademark infringement;
  
  
• unfair competition; and
  
  
• trademark dilution.

At issue is Getty Images' recent deal with Amazon.com to make available for sale nearly 30,000 photographs on the Amazon website.

Getty Trust is a non-profit foundation devoted to the visual arts and humanities. As part of its mission, Getty Trust sells fine art photographs to individual collectors, scholars and museums. Getty Trust uses many marks in connection with these services, including:

• THE J PAUL GETTY TRUST;
  
  
• THE GETTY CENTER; and
  
  
• THE GETTY.

Getty Trust has used certain of these marks for over 50 years and owns US trademark registrations for each of them.

Founded in 1995, Getty Images is a public company founded and run by Mark Getty, the grandson of J Paul Getty. Getty Images controls millions of photographic images, and generally licenses or sells these images to:

• advertising and design agencies;
  
  
• publishing and media companies; and
  
  
• corporate communications departments.

Getty Images provides these services primarily under the mark GETTY IMAGES.

In October 2002 Getty Trust and Getty Images entered into a contract defining the parameters for each party's use of the GETTY name. Under the terms of the agreement, Getty Trust agreed to limit its sale of fine art photographic images to the consumer market. Getty Images, on the other hand, agreed to limit its use of the GETTY name to those sales directed at its business customers, with only incidental and limited sales to individual consumers.

When Getty Images announced its deal with Amazon in June 2004, Getty Trust complained that Getty Images was in breach of the contract, and that the natural result of this breach would be confusion among consumers as to the source of the images and dilution of Getty Trust's name. Getty Images was not persuaded and continued as planned to offer images for sale on 'Amazon.com'. Getty Trust subsequently sued Getty Images in a California district court seeking to stop Getty Images' sales on 'Amazon.com' (or any other direct-to-consumer websites), as well as unspecified damages arising from Getty Images' actions.

For its part, Getty Images maintains that its deal with Amazon is well within the parameters of the "incidental and limited" sales specified in the agreement with Getty Trust. In interviews, representatives for Getty Images argue that the sale of 30,000 images is but a fraction of its $550 million core business.

In addition to interpreting the terms of the contract, the court clearly will be tasked with identifying each party's market and determining what constitutes "incidental" sales. However, trademark owners should take note: if the court accepts Getty Images' argument, enforcing one's rights in a trademark may prove more difficult than ever.

Jessica L Rothstein, Goodwin Procter LLP, New York