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Rock Hall of Fame Asserts Ownership of Image

For two weeks last autumn, Charles M. Gentile made a daily pilgrimage at sunset to the Rock and Roll Hall of Fame and Museum here.

Mr. Gentile was not there to catch a glimpse of his favorite rocker or to meditate on music. A photographer who has sold posters of Cleveland scenes for a decade, he was taking a picture of the I. M. Pei building, designed to celebrate the energy, creativity and rebellion of rock and roll.

Mr. Gentile (pronounced gin-TIL-ly) got his shot -- a lovely photo of the museum's distinctive pyramid shape against the backdrop of Lake Erie late in a sunset, when the colors of the spectrum stretched up to fill the background. He captioned it "Rock N' Roll Hall of Fame," had posters printed and sold them to frame shops around Cleveland, where they sold for about $25.

But the poster has quickly raised more legal questions than money since it went on sale this spring. The museum has sued Mr. Gentile over trademark infringement in a potentially precedent-setting case drawing the attention of photographers, film makers and trademark experts.

They worry that if more buildings apply for trademark protection, it will soon be impossible to photograph, paint or film a city skyline without first seeking the permission of dozens of building owners, who might demand royalties. But trademark lawyers say the Rock Hall may be right, and a Federal judge tentatively agreed after the museum filed a lawsuit in April.

Still, to Mr. Gentile, the idea that the museum would hire one of the nation's most prominent law firms to sue him over an artsy photograph seems like the work of the over-30 crowd so mistrusted during the 1960's. "I think Jerry Garcia would be rolling over in his grave," Mr. Gentile said of the late lead guitarist for the Grateful Dead.

Mr. Gentile, who is 37, argues that his work is protected by the First Amendment, but last week he complied with a court's preliminary injunction requiring him to gather all the posters that had not yet been sold and turn them over to the museum's lawyer "for destruction."

Mr. Gentile, who represented himself in court, is considering an appeal. "This doesn't just affect my rights," he said. "This affects everybody's rights, from the motion picture industry to the television industry to the still photographers industry."

The nearly 10-month-old museum says it must protect its trademark rights to protect its future. "We are not trying to take ourselves out of the Cleveland skyline," said Regan J. Fay, a partner at Jones, Day, Reavis & Pogue in Cleveland who is representing the museum. "If we lose our rights on posters, we'll lose it on T-shirts and hats."

The museum has licensing agreements with other photographers, clothing makers, and even the builders of plastic snow domes. Each pays to put the name or image of the Rock Hall on its products. The museum uses the $1.9 million to $2 million in annual licensing fees to help pay back taxpayer-guaranteed bonds that were issued to raise money to build it.

Trademark and First Amendment experts said the lawsuit might be the first of its kind. "I haven't heard of a case quite like this," said Paul E. Fahrenkopf of the United States Patent and Trademark Office. Mr. Fahrenkopf said the Rock Hall had applied for trademark protection for its building and was awaiting approval.

Fewer than 100 buildings in the nation are registered trademarks, he said. That protection "traditionally would mean that somebody else can't make a building in that shape," he said. McDonald's buildings, for instance, are registered as trademarks to prevent another hamburger hawker from building golden arches, he explained. If the museum wins, photos of buildings in a skyline could technically be protected against unauthorized reproductions, Mr. Fahrenkopf added.

Photographers point to copyright laws to justify their case. Copyrights on buildings include an exemption for photos, paintings and other pictorial representations. Copyrights laws and trademark laws protect intellectual property, but trademark laws have no such provision.

"This case sort of tests the boundary between copyrights and trademarks," said J. Thomas McCarthy, a professor of trademark law at the University of San Francisco Law School. "What strikes me as different and unusual," Mr. McCarthy said, is applying trademark law "to a photographer who puts out a poster."

"If he was simply displaying it in a photographic exhibition in a museum, we might have a totally different situation," he said. But the photo is being sold as a poster, he added, so "I guess my sympathies are with the museum."

Ronald Abramson, who heads the intellectual property and technology law practice at Hughes Hubbard & Reed in New York, agreed. "I think he's on thin ice," Mr. Abramson said.

At issue, he said, is a simple question: "Are you trading on your photography?" Unless Mr. Gentile is profiting primarily from the quality of his camera work instead from the beauty and fame of the building, his case may prove weak, Mr. Abramson said.

First Amendment specialists said the lawsuit raised important questions. "There is a tension between trademark and First Amendment expression and it is well personified in this case," said Laura R. Handman, a partner at Lankenau Kovner & Kurtz in Washington.

Photographers insist that the poster deserves the same First Amendment protection as a newspaper photograph. The museum acknowledges that pictures of the building published in newspapers are protected under the First Amendment.

The Atlanta Committee for the Olympic Games, however, is known for carefully defending its trademarks and copyrights, and on average official sponsors are paying $40 million for this year's Games.

John W. Smith, archivist of the Andy Warhol Museum in Pittsburgh, said Mr. Warhol "never got explicit permission for any of the commercial products that he painted," including his famous portraits of the Campbell's Soup cans.

On the other hand, Campbell's saw Mr. Warhol's silkscreen paintings "as a wonderful free promotional device," Mr. Smith said. And that is not the case in Cleveland.

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