Registered Trade Name vs Registered Trademark: Who Wins?

February 5, 2021 by Leave a Comment
“Kum & Go,” photo by Dustin Murrell Broadcast Journalist (Creative Commons License)

Last week, I wrote about intellectual property disputes where one side had the website domain and the other side has the registered trademark. Someone asked me how do registered trade names factor into these situations.

What’s a Trade Name?

In general, a trade name is something you register with your state. This is different than registering a trademark with the U.S. Patent and Trademark Office (USPTO). This is a way to register the name of your company or your product with your state. It typically takes only a matter of days to get and is cheap. In Arizona, the filing fee for a trade name is $10.00, whereas the minimum filing fee to register a trademark with the USPTO is $250, and it takes months (if not longer) for the USPTO to process your application. Your state may also give you the ability to register a state-level slogan or logo.

Value of Registering a Trade Name

To be honest, there’s little value in registering a trade name at the state level. It could be helpful in situations where the name of your legal entity is different than the company or product name. For example, if your entity was XYZ Company LLC and your did business as Green Ice Marketing, if you registered Green Ice Marketing as your trade name, your state might not let another company use the same name and compete with you ask Green Ice Marketing LLC.

Even if you have a state-level trade name, it does not automatically give you statewide common law trademark rights. Common law trademark rights are based on your established geographic market, based on where you’re using the mark in commerce. Thus, if you register a trade name with your state, but you’re only using it commerce in your county, your common law trademark rights may only be that county, not the whole state.

Registering a trade name creates a third-party record of when you started using a trademark, which may be helpful in a trademark dispute, but there are other ways to demonstrate when you began using a particular trademark in commerce.

Trade Name vs Trademark

In a trademark dispute, timing is often a deciding factor when two companies are selling similar products using the same or confusingly similar trademarks. In a trade name vs trademark dispute, there are two ways it could go down.

Option #1: You Registered a Trade Name Before They Registered the Trademark.

As stated above, when you only register a trade name with your state, there are no associated federal trademark rights that come with that registration. You only get common law trademark rights based on the established geographic market where you’re using your trade name in commerce.

The moment your competition registered the trademark with the USPTO, you become “frozen” in your established geographic market. The registrant gets the exclusive right to use the trademark everywhere else in the United States except within the geographic market you established prior to their registration.

It’s like a snow globe dropped over your area at that moment. They can’t go into your area, and you can’t expand beyond that invisible barrier unless you rebrand. This is what happened in the Burger King situation.

Option #2: You Registered a Trade Name After They Registered the Trademark.

Once someone registered a trademark with the USPTO, they have the right to keep competitors from entering the marketplace in the U.S. while using their trademark or one that is confusingly similar to it.

Once they get their trademark, you can’t start using it too for a similar product or service.

Here’s the rub. You state probably will not cross-check the USPTO database if you try to register the same mark as a trade name. They will deny your trade name application only if it matches something in their database of registered trade names in that state. Similar to the web domain situation, a lot people get a false sense of security when they can get a state-level trade name, but it won’t provide any protection from an accusation of trademark infringement in this situation.

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You Have the Domain. They Have the Trademark. Who Wins in the IP Dispute?

January 28, 2021 by 2 Comments
“Stone Stacks – Lindisfarne” by Linton Snapper from Flickr (Creative Common License)

I saw this scenario come through my Reddit feed. Two U.S. companies are in the same industry and using the same name for their brand. One has the dot-com web domain. The other has registered the brand as a trademark with the U.S. Patent and Trademark Office (USPTO). Which company should get to use the brand and force the other to change their name?

Timing Matters: Who Was First

The answer to every legal question starts with “It depends,” and here it depends on which company was using the mark in commerce first. By “use” I mean which company made the first bona fide offer for sale to the public, not who came up with the idea for the brand first.

Option #1: You Started Using the Domain Before They Registered the Trademark

If two companies in the same industry the U.S. are using the same trademark, but not one has registered it with the USPTO, then each one can establish what are called common law rights in the mark in the geographic areas where they are respectively using the trademark. They can co-exist peaceful as long as one doesn’t try to infiltrate the other’s established geographic market.

Here’s what happens when they register the trademark with the USPTO – they get the exclusive right to use the trademark everywhere in the U.S., except within your established geographic area at that time. It’s like a snow globe drops over your geographic market. They can’t go into your area, but you can’t expand your market beyond that boundary. This is what happened when the chain Burger King registered their trademark and there was a mom-and-pop restaurant with the same name already in existence. If you want to expand your geographic market beyond that invisible boundary, you have to rebrand.

These rules are easier to follow when businesses were brick and mortar establishments. Now that commerce is largely internet-based, a company is likely to naturally expand merely by being online. You probably can’t add any new social media platforms using the trademark without them claiming your infringing on their intellectual property rights.

If you come to me with this situation, unless you’ve established nationwide common law rights before they registered the trademark, it’s often best to save your money on litigation and rebrand instead.

Option #2: They Registered the Trademark Before You Start Using the Domain

Remember, when they registered their trademark with the USPTO, they got the exclusive right to use their trademark everywhere in the U.S. except any geographic area where you established your market for the same mark prior to that date. If they registered before you started using the mark at all, you can’t enter the marketplace using that trademark in that industry. They win. You lose. You have to rebrand.

What if it’s the same situation, but you were using the mark before they registered but you hadn’t created the website yet? Publishing the website after they registered, even if you were already selling the product using that brand, would be an act that would expand your market beyond your now-limited established geographic area, which is not allowed. I would expect them to send you a cease and desist letter demanding that you take down the website.

Getting the Domain is Not Proof to Trademark Availability

A lot of people make the mistake of thinking that if they can get the dot com domain they want that there aren’t any trademark issues that they need to worry about. There are many reasons why a company might not get the dot com of the trademark, even if it was available:

  • They are using another type of domain, like .org.
  • They are only use companyname.com for their website and not get separate domains for each of their brands or other trademarks used by the company.
  • You and they have trademarks that sound the same but spelled slightly different.
  • You and they have slightly different domains, such as XYZ.com and TheXYZ.com.

When I’m working with a client on selecting a company name, product name, or other trademark, I encourage them to search for their prospective trademark on the internet as well as on the USPTO database. What’s tricky about this is that even if you don’t find an exact match to the trademark you want to use, there could be one out there that is confusingly similar to the one you want to use. It’s best to do as thorough of a search as possible before investing your time and money into your brand.

Can the Trademark Owner Force You to Give Them the Domain?

There are lots of reasons why a person or company would have a domain that matches your registered trademark that don’t violate your intellectual property rights. If it’s a situation where your website infringes on their rights, they can demand that you remove the website. It doesn’t mean they can force you to give them the domain, though that is something you can try to leverage. They can always offer to buy it off you. (I often advise my clients wait for them to offer to buy it first so as to avoid looking like a cybersquatter.)

If they are willing to fight you for the domain, there is a risk that they may file a claim against you in court or under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). If you find yourself in a trademark dispute where you have the coveted domain, it’s best to consult a trademark attorney who can examine your specific situation, explain your options, and advocate on your behalf.

Question of the Day: Two Companies Using the Same Trademark 

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What Zach Kornfeld is Doing Right with his New Business

May 15, 2020 by Leave a Comment
“Thumbs Up!” by Kevin Gale from Flickr (Creative Commons License)

This week, Zach Kornfeld of The Try Guys announced that he is starting a new tea company in two months or less, without leaving his apartment, and spending less than $500. The goal is to create and sell two original blends: “one for energy and one for chillin’ out.”

Constraints are Good for Creativity

It’s intriguing to watch someone create a new company is real time, particularly in this situation where Zach has a limited budget and is sheltering in place. These limitations are not necessarily bad things. On the contrary, entrepreneur and keynote speaker Jay Acunzo regularly talks about how “Constraints are a strength.” They increase the need for thoughtfulness and creativity. Also, check out his fantastic book Break the Wheel. It has an entire chapter dedicated to constraints and decision-making.  

Zach started by consulting Jason D’Mello at the Fred Kiesner Center for Entrepreneurship for business advice, who advised him to create a DBA (doing business as) as the start of his company. (I recommend that every entrepreneur create a separate business entity – LLC or corporation – for their company, but in California, that comes with a hefty annual fee that would break Zach’s budget, so I get why he’s starting with a DBA.)

Before filing DBA, Zach needed a name for this new company. Zach’s first idea was to name his tea company Turtle Tea because it doesn’t matter how you start or how many times you fail. What matters is that you keep trying – slow and steady.

What Zach Did Right – Legally Speaking

Trademark laws apply to branding in the U.S. – company names, product names, logos, slogans, etc. There are many legal issues that can crop up when selecting a brand. Before Zach ran with Turtle Tea as his brand, he did a lot of things right.

He Checked the USPTO Trademark Database

Zack used the Trademark Electronic Application System (TEAS) on the U.S. Patent and Trademark Office  (USPTO) website, to try to register Turtle Tea as a trademark. He didn’t just submit an application but checked the USPTO’s trademark database first to see if anyone else had already registered that name.

Unfortunately, someone else already owns a trademark for Turtle Herbal Tea. If he tried to register Turtle Tea with the USPTO, he would have been throwing money away. If Zach used Turtle Tea as a trademark anyway, he would have set himself up to get a cease and desist letter (or worse) from this trademark owner and would have had to rebrand his company.

He Checked Alternative Spellings for Potential DBAs

Now that Turtle Tea was off the table, Zach started running trademark searches for other potential names. One thing he did was check alternative spellings. A primary rule in trademark is you’re not allowed to have a trademark that is confusing similar to someone else’s such that consumers will be confused about whose product they’re buying. You can’t register a trademark if it sounds confusingly similar to someone else’s – different spelling but sounds the same.

When Zach looked up “Zach,” he also had to check “Zack.” Likewise, when he looked up “Zach’s” he had to look up “Zax.” When I research my client’s trademarks, I try to look up alternative spellings to make sure a sound-alike trademark hasn’t already been registered.

He Checked Related Products for Similar Trademarks

When someone has a registered trademark, they have the right to use their name on their goods/services as well as on the ones they would logically expand into. For example, if someone sold milk, a product they’d like expand into is cheese or ice cream.

Likewise, Zach needed to consider not just tea companies that had registered similar marks to what he wanted, but also other beverages. One of the names he was considering had to be rejected because it was already registered by a coffee brand.

By the end of this video, Zach didn’t have a name for his company despite his many searches. This frequently happens. (Zach’s fans are suggesting names for his company via social media. The best one I’ve seen so far is Korndidtea – a take on his Twitter handle, @korndiddy.) Many clients send me dozens of trademarks to search against the USPTO database for them before deciding on a name. You don’t want to waste time and energy on a brand that have already been claimed as a trademark by someone else.

I love that Zach’s experience shows that Joe Average people can use the USPTO trademark database to do their own preliminary searches when considering a name for company or product. I don’t recommend filing a trademark without consulting a lawyer, but you can definitely your basic research yourself.  

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Six Ways to Work on Your Photography Business While in Quarantine

April 14, 2020 by Leave a Comment
“Lens Cleaning” by The Preiser Project from Flickr (Creative Commons License)

I cringe every time I see a post about photographers and models teaming up to shoot during the COVID-19 pandemic when they should be social distancing and staying home. The only photographers who should be out shooting these days are the ones who are documenting the pandemic.

My business mentor taught me that when you’re not working in your business, you should be working on your business. Here are 6 ways you can work on your business while sheltering in place.

Edit Your Images From TFP Shoots

Models frequently complain that they rarely get images from open TFP shoots. They held up their end of the bargain. Now it’s time for you to do yours.

Brainstorm and Research Future Projects and Collaborations

Now is a good time to reach out to models you want to work with and research ideas for shoots you want to do when the Shelter In Place orders are lifted. There are lots of online groups where you can network with other photogs and models.

Create Your LLC

Are you still a sole proprietor? <shiver> Please fix that. No entrepreneur should be without a business entity for their company.

In most states, you can create a business entity online. Look up your state’s Secretary of State Office or Corporation Commission.

Review or Create Your Legal Documents

Do you have templates for your client contracts, model releases, and copyright license? If not, now you have the time to create them. If you have them, can you remember the last time your reviewed them? If not, now would be a good time to do that. A lot of people are double checking that they have an effective force majeure provision in their agreements.

If you want to respond to suspected copyright infringement by sending a cease and desist letter, now is the time to create an epic C&D template so you’re ready to lay the smack down on anyone who violates your rights.

Update Your Website

I bet it’s been a while since you did that. Make sure it accurately reflects your style and strengths. Even I’ve spent time while sheltering in place, updating this site.

Clean Your Gear

Now you have the time to clean your gear, including cleaning out gear you no longer use. Get your gear serviced if your camera shop is still open. Don’t forget to go through your memory cards and get rid of images you’ll never do anything with.

If you can’t resist the urge to pick up a camera, please limit yourself to shooting still life, self-portraits, and/or shooting at home with members of your household. You can also work on your craft by re-editing older photos and taking online trainings on various techniques and skills.

Lights Camera LawsuitTM

There’s always a need for quality legal information for photographers. That’s why I created an online course called Lights Camera Lawsuit: The Legal Side of Professional Photography to address photographers’ most important questions. It’s 23 lessons, nearly 6 hours of legal information, with tons of information about contracts and copyright. I want you to feel secure in your business, confident in the way you operate day-to-day, knowing that you’ve set yourself up to get paid what your worth without incident.

The course is $497, but until June 1, 2020, you can get it for 20% off with promo code thrive20.

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Lights Camera Lawsuit Pre-sale Starts Tomorrow!

February 13, 2020 by Leave a Comment
“Fireworks” by Epic Fireworks from Flickr (Creative Commons License)

I’m nearly pee-my-pants excited because the pre-sale for my first online course, Lights Camera Lawsuit: The Legal Side of Professional Photography starts tomorrow! I’ve been working on this for well-over a year, and it’s so close to finally coming to market.

I’ve spent the last week promoting the bejezus out of this, and I’m so pleased that the response has been so positive:

Looks like a powerful product… I’m sure it will prove very popular!

Super good idea, and i love the curriculum.

Sound like a good (and much-needed) product.

Just forwarded it to every photographer I know

I will never stop being amazed at your entrepreneurial talents – what an amazing idea.  

On the eve of the pre-sale, I wanted to respond to some of the questions I’ve received about this course.

What inspired you to create this course?

I’ve worked as a lawyer for eight years and a model for five. Basically, I’ve worked on both sides of the camera without having to touch one. I’ve seen there is a great need for quality information about photography law, and, unfortunately, most photographers can’t afford to hire a lawyer to help with all their legal needs. I’ve seen too many photographers make costly mistakes that were completely avoidable, particularly related to their contracts and copyright. I created this course to save other photographers from making the same mistakes.

Why did you create a course instead of another type of product or event?

There are three reasons. First, by creating a course, I can maximize the number of people I can help while keeping the price down.

Second, the material in the course is evergreen (at least until the law changes), so I want it to be available when people are ready for it and looking for a reliable resource about photography law.

Third, people who buy the course will be able to access it again and again, versus a live event which is a one-and-done deal. If there are changes to the law, I can update the lesson in question or add an additional lesson to the course, and everyone who had purchased it to date will get it at no additional cost.

Does the course include contract templates?

No, and here’s why – I’m not allowed to under the rules of my law license. However, the course includes the list of provisions I include in my contracts and lots of sample verbiage from real documents I’ve created for photographer clients.

Where did the name Scarlet Maven come from?

Scarlet Maven is the name of my superhero alter ego.

Why did you have to create a separate business entity? What type did you create?

I created a separate entity, Scarlet Maven, LLC, to make it clear that there will not be an attorney-client relationship with people who buy the course.

On the advice of my accountant, I created an LLC for this business. LLCs are a great choice In Arizona, because they are basically set-it-and-forget-it entities. The state doesn’t require an annual report or fee. I don’t have to file anything with the state unless the company moves or dissolves.

What aspects of the course did you outsource?

Each lesson is going to be a screencast with a voiceover recording. I hired Elizabeth Fullerton at Boldfaced Design to create the templates for the PowerPoint slides.

Additionally, because I have no artistic talent and only had a feeling about what I wanted my logo to look like, I hired Dina Miller at Square Peg Creative to create the logos for Scarlet Maven and Lights Camera Lawsuit.

Both were money well spent. These ladies did a beautiful job.

How have you been promoting the course?

In addition to promoting the course through Scarlet Maven’s email list, I sent well over 500 individual emails to photographers, lawyers, and other professional creatives who might be interested in the course or who might know people who would be interested in the course.

The promotion won’t end with the pre-sale. I expect Lights Camera Lawsuit will be a course I sell for years to come, so I’ll continue to look for opportunity to reach more people about it.

What parts of this process were fun?

Creating the outline for the course and each of the lessons was fun. So has been talking with photographers about their needs and what they hoped to get out of this.

What new skills did you have to learn?

This venture gave me the opportunity to learn some new skills. This was the first time I ever created a website with Squarespace. It’s quite different than working with WordPress, but not too hard once you learn the basics.

This is my first online course, and I’m using Teachery for it. I was so glad and relieved to learn that this platform is super easy to use. I’ve also taken a number of courses that platform, so I know how easy it is for users as well.

What challenges did you face?

Scarlet Maven is my side business, so one of the challenges I faced was making time to devote to the business, create the course, and promote it. I still have my full-time job being a lawyer, writer, and speaker where I don’t always control when I have deadlines or when work gets dropped in my lap.

The biggest challenge I faced, by far, with this venture has been managing my anxiety.

  • What if no one likes it?
  • What if no one buys it?
  • What if I screw up making it and it never gets to market?

These are the types of fears I wrestled with on a daily basis. Sometimes they caused me to procrastinate working on the course. The best way I knew to manage them was to focus on the next task in front of me instead of being consumed by the bigger fears related to the course’s overall success.

Lights Camera Lawsuit Pre-sale: February 14th-18th

The pre-sale for Lights Camera Lawsuit: The Legal Side of Professional Photography will last only five days!

Pre-sale Starts: Friday, February 14, 2020 at 8am AZ Time

Pre-sale Ends: Tuesday, February 18, 2020 at 6pm AZ Time

Pre-sale Price: $199 (60% discount)

Please subscribe to make sure you don’t miss out on this fantastic pre-sale price. I’ll never offer this course at this price again.

When the course goes live on March 16, 2020, the price will be $497. This is still a bargain for 10+ hours of legal information, but why pay more?

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New Photographers: Signed Contracts Needed at the Start of Every Project

July 31, 2019 by Leave a Comment
“He Walks Dogs” by Damian Gadal from Flickr (Creative Commons License)

I recently heard a question from a new photographer. They are new to the business and focused on building their brand and rapport with potential clients. Their question was, “Should I have a contract on hand at the beginning stages of my business?”

My response was an emphatic: “Yes!”

Photography Contracts: Every Job, Every Time

A contract is a relationship management document. It puts everyone on the same page about what each side is giving and getting and sets the expectations about how each side should behave.

I tell my photographer clients to never accept a job without a signed contract, this applies even to TFP shoots (trade for photos). Your contract should outline what the client is hiring you to do, how/when you’ll be compensated, how the client can use the images, and who owns the copyright. It should also have terms that address how problems will be resolved.

If the Prospect Balks at a Contract

If you have a prospective client who says they “don’t think a contract is necessary,” turn and run. This raises to red flags for me: either they don’t understand how the business works, or they have devious reasons for not wanting a contract that could bite you in the butt in the future.

One of the best pieces of advice I got early in my career was, “You never regret the client you didn’t take.” I have had no regrets about declining a representation when a client balks at how I do business. Every time I decline one of these clients, I feel like I’ve dodged a bullet.

Don’t Worry that Requiring a Contract will Push Clients Away

Don’t worry about being perceived as “pushy” my holding firm that a contract is required. You can be polite and respectful while say, “This is how I do business. If you don’t want to sign a contract, that’s fine, but you won’t be working with me.”

You set the rules for how you work with clients. If they balk at your contract (assuming it’s reasonable), they shouldn’t be your client. A reasonable client would expect you to require a contract. A person with any business acumen won’t want to work with you without one.

Let the prospects who don’t want contracts to self-select out. If you have problems with a client at the beginning of the relationship, it’s an indicator that they will be problematic throughout the project.

If the prospect asks for a referral to another photographer, I recommend saying, “All the reputable photographers I know won’t take on a client without a signed contract.”

It’s Cheaper and Easier to Prevent Legal Problems than to Fix Them

This has been proven time and time again in my legal career. When a client comes to me with a business dispute, one of my first questions is, “What does your contract say?” When my client doesn’t have a contract, I have to piece together the terms of their agreement from emails, text messages, and the parties’ actions. Often my client spends more just having me piece these things together than what it would have cost them to have a custom contract template made.

Additionally, in a dispute, it’s much easier to create a demand letter than references the terms the other side agreed to and back them into a corner where they have to try to defend the indefensible rather than assert what the terms of the agreement are from the assembly of bits and pieces of communications and actions that the other side can more easily debate.

Lights Camera LawsuitTM

There’s always a need for quality legal information for photographers. That’s why I created an online course called Lights Camera Lawsuit: The Legal Side of Professional Photography to address photographers’ most important questions. I want you to feel secure in your business, confident in the way you operate day-to-day, knowing that you’ve set yourself up to get paid what your worth without incident.

At $497, the course contains nearly six hours of legal information you can immediately apply to your business. That’s less than what I charge for two hours of legal work for clients!  

Please subscribe for more information and to make sure you don’t miss out on any special offers or discounts.

Filed Under: Business Law, Photography & the Law Tagged With: , , , , , , , , , , , , , , , , , , , , , , , , , ,

Lawyer Responds to Photographers’ Problems

July 17, 2019 by Leave a Comment
“Photo Shoot” by Cliff from Flickr (Creative Commons License)

Last week, I saw a thread in an online photography group that started with a simple question: “What problems do you face as a photographer?” After reading hundreds of the responses, I wanted to respond to some of their problems as both a lawyer and an entrepreneur:

Competition – Other Photographers Offering Half the Price

My first thought when I read this was, “There’s a good chance it’s also half the quality.” You never want to be in a race to the lowest price. Instead of worrying about price, focus on what makes you different from the competition.

If someone wants a cheap photographer to document their once in a lifetime event, like their wedding, that’s their choice. If I were facing a client who said, “I can get someone to photograph my wedding at half this price,” I hope my response would be something like, “This is your special day. You have to choose who you trust to capture these moments for you.”

Personally, I have no problem when a client self-selects out from working with me if they don’t want to pay my rate. It’s better that they decide that early and go with someone else.

This problem reminds me of a sign I saw in a tattoo parlor: “Good tattoos aren’t cheap. Cheap tattoos aren’t good.” The same is likely true for photographers.

Clients Don’t See What We’re Worth

Part of being an entrepreneur is educating prospective client about the value we bring. It’s not that skilled photographers cost so much, but they’re worth so much. Some of the ways you can do this is by having a high-quality portfolio and a stellar reputation.

Remember: You’re not just taking photos; you’re creating an experience – every interaction from the first “hello” to the final deliverable. Your ability to take and edit photos are important, but so are the way you carry yourself, how you communicate, and your creativity, work ethic, and confidence in your skills. All of those things add or detract from your value as an artist. You want to be in a position where people want to hire you, not just any photographer.

I had a similar situation when I hired the designer who created the logos for Scarlet MavenTM and Lights Camera LawsuitTM. I could have used a discount service like 99 Designs or Fiverr, but I didn’t want to entrust a stranger with this task. I wanted to work with Square Peg Creative and Dina Miller. I’d seen and loved the way she created. I was willing to pay extra for that experience, and the resulting logos that I love.

How to Tell People I’m a Proper Photographer

The best way to tell people that you’re a professional photographer is to act like one. Create a business entity, a website with a portfolio, and contract templates for your services. If you want people to take your seriously, you have to act like a professional.

Speaking of Contracts

Contracts are relationship management documents. Once a client signs the contract, they are bound by its terms. Whenever there’s a problem, you can refer back to the contract and the terms they already agreed to. This is where you can put information like,

  • The deposit is non-refundable.
  • The photographer chooses the best images to show client. The client will not get raw images.
  • There’s no guarantee you’ll capture every image the client was hoping for.
  • The client is not allowed to edit the final images. This includes adding filters or stickers or cropping the images.

There’s a video I recommend to almost every entrepreneur called F*ck You, Pay Me, that features a graphic designer and his lawyer talking about how they use contracts to make sure the client pays per the contract’s terms. The suggestions work for many types of professional creatives.

Clients with High Expectations and Low Budgets

While many people don’t like talking about money, it is a topic you want to discuss early in the vetting process by either giving the prospective client your price list or asking about their budget. Don’t be afraid to be frank with clients who have expectations that are way beyond what they can afford. Tell them what they can afford based on their budget, as well as what you could do if they are willing to pay more so they can make an educated decision about what they want.

Clients Who Try to Negotiate on Price

In the photographer-client relationship, they are hiring you. You get to decide what is and is not negotiable in your contract. If your rates are not negotiable, be clear about that the first time they ask.

In my practice, I hand pick who are my pro bono clients and who gets a discount. That’s my call, not the other way around.

Here’s a tip I saw from another photographer: Make your prices all-inclusive. Don’t list separate prices for shooting and editing, because it opens the door for clients to try to haggle on one or the other.

Companies that Want You to Work for Free or Magazines that Want to Use Images for Free

Oh, it’s so cute when people want you to work for “exposure.” You get to decide how you respond to those requests. Here are some of my favorites:

  • Exposure is not a currency that my landlord accepts.
  • I can’t pay my mortgage with exposure.
  • People die of exposure.

Chasing Payments

Ideally, you want to create a photographer-client relationship where it’s easier to comply with the terms of the contract and pay on time, than not. Many photographers charge a non-refundable deposit to book a shoot or event and require the balance to be paid in by the day of the shoot or event. At the latest, I don’t recommend a photographer provide proofs unless they’ve been paid for the shoot.

You also want to have terms in your contract about cancelled appointments, late payments, and non-payments, so that you set yourself up to get paid what you’re owed in a timely manner.

Are You Free Next Week?

You can put the information about how far in advance a prospective client should expect to book you near your contact information or in your FAQs if you have them.  

People Assuming You will Photoshop them Perfect

This problem reminds me of Christian Siriano on Project Runway when he said, “I’m not a miracle worker, lady. I can’t make you have an ass!”

In talking with your client, set some expectations about what Photoshop can and can’t do. Assume your client doesn’t know anything about photography, unless they are a professional photographer themselves. You can educate your clients by showing them before and after images so they can see the type of edits you’ll be doing for them.

It’s ok to have fun with it, if that’s your style, by saying things like, “If you’re 5’2”, I can’t make you 5’10”,” or “If you have a ‘dad bod,’ I can’t transform you into Thor.” On the softer, more realistic side, remind your client that it’s your job to capture them looking their best, not like someone else.

Bonus Tips from my Experience as Model: Posing

Several people said they had problems with posing models or giving direction. As a model, my response is, “Don’t be afraid to try.” You’re the one behind the camera. I can’t see how I look.

If you give a model a pose and it doesn’t create a good image, try something else. I won’t know if you didn’t get the shot you wanted. I’ll think you have lots of ideas.

It’s ok to think out loud and say things such as, “I like how this light is hitting your eyes, let’s try this.”

I’ve you are afraid you won’t remember the ideas you wanted to try from other images, bring notes to the shoot. It shows you’re prepared, and thinking about what types of images might be best for me.

Learning how to pose models and give direction is something you develop over time, with practice, and watching others. Unless you’re doing some extreme work, no one is going to die. And don’t forget – I can’t see how I look, so as far as I know, whatever you’re trying is brilliant.

Lights Camera LawsuitTM

There’s always a need for quality legal information for photographers. That’s why I created an online course called Lights Camera Lawsuit: The Legal Side of Professional Photography to address photographers’ most important questions. I want you to feel secure in your business, confident in the way you operate day-to-day, knowing that you’ve set yourself up to get paid what your worth without incident.

At $497, the course contains nearly six hours of legal information you can immediately apply to your business. That’s less than what I charge for two hours of legal work for clients!  

Please subscribe for more information and to make sure you don’t miss out on any special offers or discounts.

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How to Give a Discount on your Photography Services without Discounting your Value

July 10, 2019 by Leave a Comment
“The Belly Dancer with the Fans” by mmockingbird from Flickr (Creative Commons License)

Sometimes photographers, like all service providers, want to provide a discount for their services. Perhaps it’s for a friend, someone you’ve always wanted to work with, or an organization you know can’t afford you and you want to help.

Nothing Wrong with a Discount

There is nothing wrong with offering a discount for your photography services, whether it’s a special one-off or a promotion that’s available to any client.

The challenge is you don’t want to cheapen the perceived value you provide. When a person buys an item at a cheap price, they may have lower expectations about it and will perceive it as less valuable than a similar product that performs the same function but costs twice as much. You don’t want your clients to discount the value you’re giving them, even when they get it at a discounted price.   

Have you noticed that it’s often the clients who are getting the biggest discounts who complain the most? I made that mistake once. I quoted someone an exceptionally low flat fee to do their contract because I thought it would be an easy project. The nitpicked so much and requested so many changes, that by the time it was done, the amount I made per hour of work was laughable. (This was also the client who taught me to put a cap on the number of edits I’d do on a flat fee project. If they wanted more edits after that, they had to pay hourly.)

Always Show a Photography Client your Value

Even when you give a client a discount, always include your standard price and then the discount. Being a professional photographer is two jobs in one – you’re an artist and an entrepreneur. The entrepreneur’s job includes educating clients and prospects what you are worth. Photography clients are not just paying for your time, but also your talents. Remind them about the value you bring to the table, regardless of what they’re paying.

This tactic is not offensive.  You see this when you buy things online. The website always starts by posting the price and tells you how much of a discount they’re giving you and the price you’re getting.

How to Write an Invoice or Contract with a Discount

This is how I’d write an invoice or payment section of a photography contract that includes a discount:

Sitting Fee:                       $200.00

I-Like-You Discount:           -$75.00

Total Sitting Fee:               $125.00

You get to choose what you’re going to call your discounts. I encourage my clients to be creative and include their personality in their contracts, but you have to decide what works for you.

Lights Camera LawsuitTM

There’s always a need for quality legal information for photographers. That’s why I created an online course called Lights Camera Lawsuit: The Legal Side of Professional Photography to address photographers’ most important questions. I want you to feel secure in your business, confident in the way you operate day-to-day, knowing that you’ve set yourself up to get paid what your worth without incident.

At $497, the course contains nearly six hours of legal information you can immediately apply to your business. That’s less than what I charge for two hours of legal work for clients!  

Please subscribe for more information and to make sure you don’t miss out on any special offers or discounts.

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Clarify What Your Photography Client is Buying: Prints vs Digital License

July 3, 2019 by Leave a Comment
“Shooting the Dress” by Garry Knight from Flickr (Creative Commons License)

Professional portrait photographers generally need at least two contracts when working with a client: one for the sitting and one for the deliverables. For the latter, make sure the client is crystal clear about what they are, and equally important, what they are not buying. Having clarity on the front end will prevents problems on the back end.

Assume Clients Don’t Understand Copyright

Part of your job as a professional photographer is to educate your client about the basics of copyright and how it applies to images you’ve been hired to create. Many people assume that they are allowed to take a print, scan it, and share online or via email.

In my pre-lawyer life, that’s what I thought. I spent plenty of time in the computer lab during my undergrad scanning photos. There was even a bulletin board dedicated to the photos that people left in the machine.

This is still an issue for Joe Average people. Here’s a real question that recently came across my screen: I hired a photographer to take family pictures. I want to share them online and with extended family. The photographer says I can’t do that. Why?

I suspect this person bought prints and not a digital license, or they have a license but it doesn’t include an allowance to distribute the images.

As a risk-adverse lawyer, I would put specific verbiage in the contract that states what the client can and can’t do with the photos, including that only the digital version the photographer provides can be used to share the images with family and friends, probably in bold print.

This serves two purposes:

  1. It protects your copyright, and
  2. It maintains the quality of your work.

It’s also a good idea to include the information about your socials so they can tag you. (Good clients give credit their photographer when posting images online, even if they’re not required to.)

What the Client gets with Prints

When a client buys prints, they are buying the tangible object – the picture on whatever medium it was printed. They are buying the thing. They are not getting the copyright right or any copyright rights (unless that’s part of the contract they signed).

The limits of what someone can do with a print are similar to what they can do if they bought a book. They can display it, sell it, give it away, destroy it, etc. What they can’t do is make copies of it.

Scanning a print is making a copy. So is taking a photo of the photo.

I’ve seen people do this at amusement parks. They don’t want to buy the photo the park took of them on the rollercoaster, so they take a photo of the screen where the image is displayed – so they take photo of the photo. When I’ve seen this happen, the teenage clerk usually says, “We’re not supposed to let people do that.” Now you know why. 

What the Client gets with a Digital License

What a client can do with a digital license depends on the limits within the license itself.

Whoever owns a copyright has the exclusive right to control if and how the work is copied, distributed, displayed, performed, and what derivative works can be made from it. If I were writing a license for a photographer, I’d address all five of these rights – including “perform,” even though that’s not a verb we typically use in regards to photographs, but I’d rather be thorough.

Most of the time, the photography licenses I draft are for a non-exclusive, perpetual, worldwide license. It also addresses whether the licensee is allowed to use the images for commercial use. Sometimes the photographer requests additional provisions, like one that says the licensee isn’t allowed to alter the images, which may include cropping.

Following the license provision, I often add a sentence that states all other uses of the images must be approved by the photographer in advance.

Solution: All Print Packages Include a Digital License

One way to address this issue to require clients to purchase a digital license when they’re purchasing prints. The client won’t have to scan any images if they already have digital versions.

When you first meet with a client to discuss their needs, ask them about what they want to do with the final images, including how they want to show them to others. If you hear a client talking about how they can’t wait to share the photo with family/friends – clarify what they mean and make sure purchase a package that suits their needs.

Lights Camera LawsuitTM

There’s always a need for quality legal information for photographers. That’s why I created an online course called Lights Camera Lawsuit: The Legal Side of Professional Photography to address photographers’ most important questions. I want you to feel secure in your business, confident in the way you operate day-to-day, knowing that you’ve set yourself up to get paid what your worth without incident.

At $497, the course contains nearly six hours of legal information you can immediately apply to your business. That’s less than what I charge for two hours of legal work for clients!  

Please subscribe for more information and to make sure you don’t miss out on any special offers or discounts.

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How to Respond When Someone Steals Your Photo

June 26, 2019 by 1 Comment
Running with the Seagulls by Ed Schipul from Flickr (Creative Commons License)

Photographers need to be mindful of the possibility that some people may use their photos without permission. People will pull images to use on their website and social media posts. Additionally, there are people who think they have rights to a photo merely because they’re in it. I’ve even heard of hair and makeup artists who take photos from the shoots they have worked on to use them in their portfolio.

This issue is compounded by the fact that there is inaccurate information about photo use on the internet. Some sources assert that you can use any photo you find on the internet as long as you give an attribution and a link to the original. They think they’re giving you free publicity, but what they may be doing is committing copyright infringement and telling you about it.

Start with the End in Mind

When I work with clients who believe their copyright has been violated, one of the first question I ask is,

How do you want this to end?

Knowing what the client wants as a result of my work tells me what avenue for recourse they’re interested in pursuing.

To maximize the likelihood of achieving your desired outcome, it’s best to decide before your photos are stolen how you want to respond to the alleged infringer so you can be prepared in advance for when it happens.

Always Respond When Someone Uses Your Photo Without Permission

You don’t set the precedent that people can use your photos without a license. If you let others use your work and then you want to assert your rights against another infringer, the infringer could point to your past behavior and argue that since you’ve allowed others to use your images without repercussions, that this new infringer should be treated the same.

(This is why you hear about companies sending strongly worded cease and desist letters to minor infringers. They have an obligation to protect their intellectual property.)

There are five ways you can respond when someone steals your photo:

Option #1: Grant Permission

If you’re ok with someone’s use of your image, you can grant them permission after the fact. It can be something simple like

Hi there. I noticed you’re using my photo for XYZ. I’m ok with uses like this, but in the future, you need to ask my permission in advance. I grant you permission for this use.

Option #2: Cease and Desist Letter

This is a letter from you (or your lawyer) to the suspected infringer that informs them of the copyright rights they violated, directs them to remove the image by a specified date, and tells them what you’ll do if they don’t comply. Be ready to follow through on whatever you threaten/promise in your letter, or you’ll lose credibility.

These are sometimes referred to as the “nastygram,” especially when it’s written by a lawyer and the client’s goal is to put the fear of god in the person so they comply. There is no rule that says you can’t send a letter that says,

I love that you love my photo, but you need to remove it by . . .

Option #3: DMCA Takedown Notice

DMCA stands for Digital Millennium Copyright Act. This option is only available in situations where your photo and the infringement of it are both on the internet. Instead of sending a cease and desist letter to the person who stole your photo, you send a takedown notice to the company that hosts the website where the infringement is occurring. Some social media platforms have a form on their site for submitting a takedown notice with designated spaces for all the information you’re required to include in a DMCA takedown.

Option #4: Send a Bill and a License

There is at least one photo licensing company that is notorious for doing this, but any photographer can send (or have their lawyer send) a letter to the suspected infringer that says,

By using my photo, you’ve agreed to my licensing terms. Here’s a copy of the license and your bill!

If you want to use this option, it’s ideal if you have your licensing terms or at least information about licensing on your website.

Option #5: Sue for Copyright Infringement

This option requires the most work in advance compared to the other options because you must register the photo’s copyright with the U.S. Copyright Office in order to be eligible to sue for infringement. There are time constraints in which you have to register you work in to be eligible for statutory damages, including attorneys’ fees. Additionally, your photo has to be stolen by someone who can afford to pay the damages, otherwise you may never collect (and you’ll likely have to pay for your attorney yourself).

If registered your photo too late, you can still sue, but you can only get your actual damages, and you have to pay your attorneys’ fees. Most of the time, in this situation, it’s not worth it to sue because you’ll spend more on your attorney than what you’d get in damages from the court.

What’s the Right Option to Protect Your Photography?

You have to make that decision yourself. Decide in advance how you want to respond when someone steals your photo and plan accordingly.

Your strategy for responding to suspected copyright infringement can include more than one of these options – such as sending a cease and desist letter yourself and if that doesn’t work, then have your attorney send one. Some people are more motivated to comply when they see the law firm’s letterhead.

Regardless of your strategy, it’s best to speak with your attorney in advance and consult them when dealing with someone who’s using your photos without permission. There have been many times that I’ve written the cease and desist letter for my client to send that included the sentence,

I hope we can resolve this without having to get lawyers involved.

Lights Camera Lawsuit

There’s always a need for quality legal information for photographers. That’s why I created an online course called Lights Camera Lawsuit: The Legal Side of Professional Photography to address photographers’ most important questions. I want you to feel secure in your business, confident in the way you operate day-to-day, knowing that you’ve set yourself up to get paid what your worth without incident.

At $497, the course contains nearly six hours of legal information you can immediately apply to your business. That’s less than what I charge for two hours of legal work for clients!  

Please subscribe for more information and to make sure you don’t miss out on any special offers or discounts.

Filed Under: Photography & the Law Tagged With: , , , , , , , , , , , , , , , , , , , , , , ,
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