IL-2023-000007 - [2025] EWHC 2863 (Ch)

Although Getty Images said very little in their opening written submissions about the law on identity of goods or services (referring only to passages in the first instance judgment in Montres Breguet SA v Samsung Electronics Co Ltd [2023] EWHC 1127 (Ch), [2023] FSR 1 (“Montres Breguet [First Instance]”) which in fact deal with similarity), I did not detect any real dispute over the applicable legal principles in closing.

Whether a sign is used in relation to identical goods or services will depend on the goods or services listed in the registration of the mark and relied on by the claimant in its pleaded case. Where general terms are used to describe goods or services, they must be interpreted as including goods or services clearly covered by the literal meaning. Goods can be treated as identical where one is a subset of the other (Montres Breguet [First Instance] per Falk J at [119]-[120]).

However, trade mark specifications are concerned with use in trade, so when construing a word used in a trade mark specification the court is concerned with “how the product is, as a practical matter, regarded for the purposes of trade” (British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 (“British Sugar”), per Jacob J at p.289).

In Easygroup, Arnold LJ said that “[w]hether there is identity of services depends in part on the interpretation of the specification of services of the trade mark” and he cited the following passage from Reed v Reed with approval:

“…specifications for services should be scrutinised carefully and they should not be given a wide construction covering a vast range of activities. They should be confined to the substance, as it were, the core of the possible meanings attributable to the rather general phrase”.

This passage was also referred to with approval by the Supreme Court in Skykick UK Ltd v Sky Ltd [2024] UKSC 36 (“Skykick SC”). Lord Kitchin JSC (with whom the remaining members of the Court agreed) held, inter alia, that Cloud Migration is not an “electronic mail service” (and so is not included in “electronic mail services” in class 38 of the Nice Classification) and he agreed with Sir Christopher Floyd and the Court of Appeal that the Judge’s approach of “extending the core meaning of the expression [electronic mail services] to an unclear and indeterminate range of services connected to electronic mail in an unspecified way” had been contrary to principle. At [365] Lord Kitchin observed that:

“The correct approach, as a matter of principle, in considering a specification of services which is defined by terms which are not clear or precise, is to confine the terms used to the substance or core of their possible meanings: see, for example, Reed Executive pic v Reed Business Information Ltd [2004] EWCA Civ 159; [2004] RPC 40, at para 43. So too, if a specification of goods is defined by terms which are ambiguous, then it should be confined to those goods which are clearly covered. These principles are consistent with first, the requirement that the specifications of goods and services must be clear and precise so that others know what they can and cannot do; and secondly, general fairness because any ambiguity is the responsibility of the owner of the mark. If despite this, the words used are still unclear so that they cannot be interpreted, then it is permissible to disregard them. But, in my opinion, that will rarely be the case”.

The construction of a specification must be determined as at the date of registration. In Reed v Reed Jacob J put the point thus (at [46]-[49]):

“46.

…Mr Howe contends that a specification of goods or services cannot change its meaning with time. Mr Hobbs submits that it can—if the “core” nature of the service changes with time, then the meaning changes too.

47 I have no doubt that Mr Howe is right. One can test the point best by reference to a registration qualified by the words “included in this Class”. From time to time, though rarely, the class in which a particular kind of article is put is changed by international agreement. If that happens it is inconceivable that the trade mark owners’ rights could be changed. “Included in Class X” must mean “included at the time of registration.”

48 So also for a word or phrase which changes its meaning over time. But that must in practice be very rare. Indeed I know no instance of it in any reported case. The ordinary case—and I think this is one—is where some new variant of an article or service comes into existence after registration. The issue then is whether that new article or service falls within the meaning of the existing specification. Columbia Graphophone’s Trade Marks (1932) 49 R.P.C. 621 is a good example of a new article falling within an old specification. The specification of goods of the mark under attack was “all goods in Class 8”. Class 8 (of the old classification, bizarrely taken from the classification used for the Great Exhibition) quaintly read “philosophical instruments, scientific instruments and apparatus for useful purposes; instruments and apparatus for teaching”. An application for partial rectification was made on the grounds of non-use. The excision sought was essentially for “cinematograph films, talking and silent” (my précis). The trade mark owner, a record company, sought to justify the non-user by saying that talkie films had only just become possible and that amounted to special circumstances. The argument failed and excision was ordered. There was an express excision from the specification of a kind of article (talkies) that did not exist at the time of registration” (emphasis added).

There is a dispute between the parties as to whether Daimler, Google France and Coty assist Stability on the facts of this case or whether, as Getty Images contend, these were exceptional cases, each concerned with very specific factual scenarios which do not apply here. Before I can deal with this issue, I must examine the facts in each case.

In Google France the CJEU held that, whereas an advertiser might use a sign in the course of trade by bidding on it as a keyword in a keyword advertising service such that it appears in advertisements generated following searches containing that keyword, the service provider (in that case Google) was simply allowing the advertisers to use the signs. Google was not using them by storing as keywords signs identical with trade marks or by organising a display of advertisements on the basis of those key words: “The fact of creating the technical conditions necessary for the use of the sign and being paid for that service does not mean that the party offering the service itself uses the sign” (at [57]). This did not amount to Google’s “own commercial communication”. A similar conclusion was reached in L’Oréal v eBay, where the Court held that (in relation to the operation of an e-commerce platform), the use of signs identical or similar to trade marks in offers for sale displayed in an online marketplace is made by the sellers who are customers of the operator of that marketplace and not by the operator itself (at [103]).

In Daimler, the question that arose for the court was whether the defendant (who had at one time been authorised to, and did, use Daimler’s trade marks to describe itself as an “authorised Mercedes-Benz dealer” in its advertising through a third party online provider) made use of a sign even where (after termination of that arrangement) the defendant had sought to remove all such references from the online advertising. The court held that an advertiser could not be held liable for the acts or omissions of an advertising provider who, intentionally or negligently, disregards the express instructions given by that advertiser who is seeking specifically to prevent that use of the mark. In those circumstances, the publication of that reference on the referencing website can no longer be regarded as use of the mark by the advertiser (at [34]). Similarly, an advertiser cannot be held liable for the independent actions of other economic operators with whom the advertiser has “no direct or indirect dealings and who do not act by order and on behalf of that advertiser, but on their own initiative and in their own name” (at [36]). At [39]-[40], the court identified the broad principle that “using” involves “active behaviour and direct or indirect control of the act constituting the use”, but observed that that will not be the case if that act is carried out by an independent operator without the consent of the advertiser or even against his express will.

In Coty, a perfume distributor and licensee of the trade mark DAVIDOFF (registered for perfumes) brought proceedings against Amazon for trade mark infringement in respect of Amazon’s storing and dispatching of ‘Davidoff Hot water’ brand perfumes offered for sale by a third party seller via the Amazon website. The question referred to the Court of Justice for a preliminary ruling was whether a person who, on behalf of a third party, stores goods which infringe trade mark rights, without being aware of that infringement, must be regarded as storing those goods in order to offer them or put them on the market, if that person does not itself pursue those aims. The Court reiterated that “using” involves “active behaviour and direct or indirect control of the act constituting the use” and that “only a third party who has direct or indirect control of the act constituting the use is effectively able to stop that use” (at [37]-[38]). At [44], the Court noted that the types of use which a trade mark proprietor may prohibit refers specifically to “the offering of goods, their being put on the market, their being stocked “for those purposes” or the supply of services under the sign concerned” (emphasis added). It followed that, in order for the storage of goods bearing the signs complained of to amount to “use” it was necessary “for the economic operator providing the storage itself to pursue the aim referred to by these provisions, which is offering the goods or putting them on the market” (at [45]). Because it was only the third party who intended to offer the goods or put them on the market, their storage by Amazon did not amount to use of the sign in their own commercial communication (at [47]).

Getty Images contend that (unlike in Google France), Stability is using the sign for its own commercial communication: the communication that bears the watermark* in the form of the output image is the commercial communication of Stability because it is generated by its Model. This, says Getty Images, involves more than merely storing the output images (unlike in Coty) – but instead involves offering the service of generating the images and putting those images onto the market. Unlike in Daimler, this case also involves active behaviour and control on the part of Stability because (i) it is the entity that trained the Model; (ii) it is the entity that could have filtered out watermarked images in order to ensure that its model did not produce outputs bearing watermarks*; (iii) it makes the Model available to consumers through GitHub, Hugging Face, the Developer Platform and DreamStudio (which I have accepted in relation to v2.x; SD-XL and v1.6. For v1.x the position is more complex); and (iv) it is the entity making the communication that bears the relevant signs. None of this can be said to be the independent action of another economic operator.

I agree with these submissions.

In oral closing submissions, Mr Cuddigan countered Getty Images’ case by submitting that it is the user who is completely in control of the Model. However, upon being questioned about that assertion, he accepted that it was an overstatement and that control is a “nuanced” issue. In my judgment, he was right to do so.

Mr Cuddigan put to Professor Farid in cross examination that “the model is a tool controlled by the user and the more detailed the prompt is, the more control is being imposed”. Professor Farid responded (and I accept):

“That is partially true. The user has control over what is prompted. However, what the user does not have control over is what the model was trained on. We have no control over that. What the user does not have control over are any semantic guardrails that might be put on the prompt and any semantic, image guardrails that are put on the output. Absolutely, the user has control over what it asked for but does not have 100% control over what is coming out the other end”.

Mr Cuddigan put the point again suggesting that “the user has a high degree of control which is exerted through the specificity of the prompt”, to which Professor Farid responded (and I accept):

“I do not know that I would say that. You cannot separate what comes out of the model from what it was trained on. For example, if the model was never trained on images of dogs, I can ask for images of dogs all day long, but I am not going to get them. I have no control over that

…

I will agree that if -- the more that is specified in the prompt, the more control the user has on what is created. I do not agree, however, that they have complete control. For example, if I open Adobe Photoshop and I paint an image, Photoshop gives me all the tools to do that. I have 100% control because I am dropping every pixel into the image. You cannot say that about Stable Diffusion and these AI models so the more I specify in the prompt, the more control I have, but at some point I push a button and I lose control over what will come out the other end of that model”.

The factual evidence added to the overall picture that while users have some degree of control they do not have complete control:

In light of this evidence, I reject Stability’s submission that for each of the access mechanisms referred to above, it is the user and not Stability who is wholly responsible for conditioning the circumstances in which the outputs are generated. While the evidence shows that Stability exercises a greater degree of control over the outputs generated by users accessing via DreamStudio or the Developer Platform than it does in respect of users who have downloaded the Model (who are able to modify the code and run additional training with their own data), nevertheless:

Furthermore, Stability is responsible for the model weights for the versions referred to above. Also, as Mr Cuddigan confirmed in closing, Stability has written the code that users will download if they are accessing these Models (from v2.x onwards) via GitHub or Hugging Face and which they will then run on their local computers.

To my mind, this goes beyond merely creating the technical conditions necessary for the use of the Sign. The provision of access for users to the Models via the different access mechanisms cannot be equated merely with the storage of goods by Amazon (Coty), or with Google allowing advertisers to use the signs (Google France), or with eBay making its online marketplace available to customers (L’Oréal).

While an AI model such as Stable Diffusion may be described (in simple terms) as a tool to enable users to generate images, that is not a complete description. As the Experts agreed in the Technical Primer, Stable Diffusion is a machine learning system which derives its primary function largely from learning patterns from a curated training dataset. Its final function is not directly controlled in its entirety by the engineers who designed it, but a large part of its functionality is indirectly controlled via the training data. The model weights are learned from the training data and it is the model weights which control the functionality of the network. Although the process of inference does not require the use of training data, the outputs generated during inference will (at least indirectly) be a function of that training data. Thus, as the Experts agree, the generation of watermarks* by the Model “is due to the fact that the model was trained on some number of images containing this visible watermark”. This is the responsibility of Stability. Under cross examination, the following exchange took place between Ms Lane and Professor Brox:

“Q. The reason why all these different prompts produce watermarks is because, presumably, Stability failed to remove images bearing Getty Images watermarks from the dataset it trained on?

A.

Yes; that is my guess”.

It is Stability’s case, with which Getty Images agree, that “[n]o relevant consumer will seek to generate or use content containing watermarks* as such watermarks mar the appearance of images and render them unusable for most purposes”. In such circumstances, I agree with Getty Images that it is very difficult to see how it can sensibly be argued that the user of Stable Diffusion (by whatever access mechanism) has any control over when a watermark* is produced. As Getty Images submit, the only entity with any control in any meaningful sense of the word over the generation of watermarks* on synthetic images is Stability. It is certainly not “passive” as Stability submits.

Even if (consistent with Stability’s submissions on context but inconsistent with my findings above) the average consumer will read and remember in detail the terms and conditions for use of the Model and/or the License terms and will see and understand that they are said to be wholly responsible for their own synthetic output images, that does not mean either that Stability in fact has no control over the images that are generated, or that it has deployed no active behaviour in relation to the generation of those images. I consider Mr Cuddigan’s submission in closing to the effect that “all the actions are [those of] the user” to be unsustainable in light of the evidence.

Because I detected in Stability’s submissions a considerable degree of overlap between its arguments on “use in the course of trade” and “use in relation to goods and services”, I shall not try to summarise my conclusions on use in the course of trade at this juncture but will instead turn now to consider the points that I understood Stability to be making under both heads. I shall return to my overall conclusions on use at the end of this analysis.

Stability submits that there is nothing in the evidence to support a finding that use of the Sign by Stability is in the context of a commercial activity or that it is “in relation to” goods and services. Stability relies heavily upon the fact sensitive and contextual nature of the enquiry under this head, which must be assessed having regard to the perception of the average consumer. It refers me to Trebor Bassett v the FA [1997] FSR 211 (“Trebor Bassett”), in which Rattee J rejected the argument that publishing and marketing cards showing photographs of players wearing the England team football strip (including the three lions logo) was use of that logo or indeed, use of that logo as a sign in respect of the cards. Essentially it contends that the appearance of watermarks* on synthetic images is not “trade mark use” in that it is not liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods (see C-206/01 Arsenal v Reed (ECJ) [2003] Ch 454 at [51]).

Stability contends that the average consumer seeing the Sign on a synthetic image will not form the impression that it is a message about trade origin or that it indicates any material link in the course of trade between the images on which the watermarks* appear and Getty Images.

Getty Images submit, on the other hand, that the Signs would plainly be perceived as being used in relation to goods and services given that they are affixed to synthetic image outputs and they generally appear in the same location on the synthetic images as the Marks appear on Getty Images assets, i.e. they are positioned within a grey translucent banner which is overlaid on the synthetic image in the bottom third on the right hand side. Getty Images say that use of the Sign in this manner indicates to consumers that the synthetic image (i) originates from Getty Images – for example because consumers are very accustomed to the use of watermarks on photographs, such as children’s school photographs, in everyday life; or (ii) is in some way connected to Getty Images, for example that it was generated by a Model that was trained on Getty Images’ assets under license from Getty Images.

To address these opposing submissions, I need to consider in detail (as both sides did in closing) the four grounds identified by Stability in opposition to Getty Images’ case.

First, Stability contends that consumers understand that they are responsible for the images generated in response to their prompts and it relies upon its submissions as to context. There is a considerable overlap here with Stability’s arguments on “control”. I have already held that the average consumer who downloads the Model for use locally will understand (whether they have read the terms and conditions of the License or not) that the images they generate are generated in response to their own bespoke prompts. They will not think that Stability is directly dictating the images generated by the Model. I have also held that users accessing the Model via the API and DreamStudio will understand that the images have been generated by an AI model in response to their own prompts.

However, I reject the suggestion that the average consumer (using any of the three access mechanisms and whether he or she has read the terms and conditions, the Model Card or the License, or not) will regard the output of the Model (at least in so far as that output bears watermarks*) as solely their responsibility. Indeed it seems to me that Getty Images are right to say that this proposition is contradicted by Stability’s own case which contends (as set out above) that consumers will not wish to generate watermarks*. The average consumer who does not wish to generate a watermark* and who has not entered a text prompt designed to do so is, in my judgment, most unlikely to think that the generation of such a watermark* is solely his or her responsibility whatever he or she may have read in the terms and conditions of use or elsewhere.

In closing, Stability sought to rely upon submissions made by Getty Images’ counsel to the Court of Appeal following my decision to exclude references to CSAM from Getty Images’ case at trial, as follows:

“Getty is not alleging, or seeking to allege, that Stability is criminally responsible for what a minority of its users, one might say perverted users, may do with Diffusion. The offence is committed by those users who prompt the model to produce CSAM, just in the same way as it is they, rather than Stability, who may produce, may choose what prompts they use and thereby generate, if we are right, other forms of pornography and violent images and images of the nature of propaganda. Of course, from Getty's perspective, if and when the offending images are put in circulation, the damage is the same...” (emphasis added).

Stability contends that these submissions recognise that criminal responsibility for the production of CSAM images lies with the user and not with Stability and that it is users who choose their prompts and “thereby generate” images. This is true, but it is not the full story. To my mind it does not provide support for the submission that Stability then goes on to make to the effect that “even for benign prompts which produce watermarks* it is not easy to see why the same regime of responsibility would not apply”. One very obvious distinction is of course that, unlike pornography or violent images, watermarks* may appear where the user does not seek to generate them.

Thus the perception of the average consumer as to ‘responsibility’ for the output image may, in my judgment, depend on whether he or she has deliberately sought to generate it. Stability itself argues in its closing submissions, “when a consumer knows they are committing misuse, or making out of scope use, they will surely not consider Stability is responsible for the resulting images, or as making any commercial communication through those images”. Although this proposition begs the question as to what the average consumer will ‘know’ (a question which goes to context), I note that it is not suggested by Stability that a watermark* will only be produced in response to a prompt when the average consumer is misusing the Model or engaging in out of scope use. Why should the average consumer consider himself responsible for the appearance of such a watermark* when it appears unprompted and apparently randomly?

Stability contends that its point on out of scope use applies to users adopting the words “news photo” to prompt output images from the Model. This is because (having regard to Stability’s submissions on context) it says that the average consumer using such a prompt will understand it to be out of scope (i.e. designed to produce “factual or true representations of people or events” or, in other words a simulacrum of a photographic image). While, on balance, I consider that the average consumer who has downloaded the Model will understand from a reading of the Model Cards and the GitHub and Hugging Face pages that such use is out of scope of the Model, I reject the suggestion that this understanding will lead them to regard themselves as “responsible” for the production of a watermark* on an out of scope image or will affect their perception of any connection between the synthetic image and Getty Images. On balance they will understand that the production of the watermark* is a function of the way in which the Model was trained – for which they were not responsible. Further and in any event, out of scope use is not misuse.

Further, I disagree with Stability that the average consumer using DreamStudio or the Developer Platform will understand that prompting the Model with the words “news photo” would be ‘out of scope’ for the Model. Some may, but a significant proportion will not. In any event, I do not consider that the average consumer (whatever his level of understanding) would regard himself as responsible for the generation of an unexpected and unwanted watermark*. I do not consider it enough that the average consumer will understand the Model to be designed to create artificial images.

Second, Stability contends that the average consumer has a sufficient technical understanding to appreciate why the watermarks* appear. It says that this understanding is in itself enough to dispel any perception of an origin message from Stability.

I have already expressed the view that a significant proportion of sophisticated users accessing the Model by downloading it onto a local computer or via the Developer Platform will understand why the watermarks* appear. This is borne out by observations in the Reddit Exchanges (which, are predominantly made by obviously sophisticated consumers):

The August 2022 SalesForce Message, the Japanese Garden Post and a post on Mastodon dated 28 December 2022 attaching an image of the Northern Lights (“the Northern Lights Post”) which is included in Annex 8I, all evidence a similar understanding. The Northern Lights Post records that:

“It seems that #StableDiffusion overfits a bit when prompted with northern lights. I’m trying to get it to create a drawing instead of a photo and all I get are nightime (sic) photos with GettyImages watermarks.”

I consider that the fact that these (sophisticated) average consumers understand how AI models work and why watermarks* are generated is likely to preclude any possibility that they will perceive the synthetic image to which the watermark* is affixed to originate directly from Getty. However, I cannot see why this understanding precludes a perception that the provision of the synthetic image is in some way connected to Getty Images, perhaps because the Model has been trained on images licensed for use by Getty Images. The observations on Reddit to which I have referred above evidence a perception that the Model has been trained using Getty Images Content. Some appear to evidence an understanding that this will have been without the consent of Getty Images, but others do not. The October 2022 Salesforce Message is evidence of a user who plainly thinks that licensing by Getty Images may have occurred.

As for the average consumer using the DreamStudio mechanism of access, again I have already expressed the view that his or her level of technical expertise will be less. Some will understand why watermarks* are generated (see by way of example the user who emailed DreamStudio in February 2023 about the fact he was generating watermarks* - in response to the DreamStudio Email he says: “Thanks for your answer but i know this behaviour and perfectly understand why it happen…”), but a significant proportion will not.

In such circumstances, I cannot see that this argument as to “technical” understanding can apply to them. In my judgment, a significant proportion of this class of average consumer will perceive the presence of a watermark* on the synthetic image to indicate that it originates from Getty Images or that the provision of the synthetic image is in some way connected to Getty Images, perhaps because Getty Images has licensed Stability to train its Models on Getty Images Content.

One good example of a lack of technical understanding on the part of a user appears in the Reddit Exchanges:

“Soo I had a surprise in one of the generations. i know many would misconstrue this as evidence of ai stealing or whatever which it isn’t but why does it generate accurate watermarks like this?? Does this mean it can generate other copyright protected stuff unintendedly??”;

That the buttons and branding on the DreamStudio website inform DreamStudio users that they are receiving a generated image using Stable Diffusion does not appear to me alter the position. Stability relies on evidence given by Mr Stanley about images appearing on the Getty Images Website, shown to him in cross examination. Specifically, Mr Stanley was shown a screenshot of the Getty Images Website with a favicon at the top of the page and the website name also appearing: . The title of the page was “ces expo” and it showed nine “editorial images” under that heading, including images of open laptops displaying brand names such as Dell and Lenovo and an image of a sign displaying the words “intel ai”. Mr Stanley agreed that this image would not be understood by a user looking at this page as suggesting that they were on an Intel website or that they were dealing with Intel – instead it would merely indicate to the user that an editorial photographer based with Getty Images had taken a photo of an Intel logo.

I do not consider Mr Stanley’s evidence on this point, however, to bear the weight placed on it by Stability. The web page shows various images taken in connection with the “ces expo” and the context of the appearance of the intel ai sign is thus very different from the context in which the watermark* appears on generated synthetic images. As Stability correctly submits, whether a sign is understood to be a message about trade origin is fact sensitive and contextual.

Equally, I do not consider the fact that users will see “a consistent fudge” in respect of the name of the photographer under the watermark* to be sufficient to dispel the perception of brand message from the appearance of that watermark*, as Stability contends. As a point of principle this appears to me to be a somewhat surprising proposition and it is not, in any event, borne out by the evidence.

None of the Reddit Exchanges suggest that any real life user discussing the phenomenon of the appearance of watermarks* was focussing on, or was interested in the significance of, the appearance or legibility of the photographer’s name.

It is true that Mr Stanley confirmed that the photographer’s name always appears on the Getty Images watermark and it is certainly part of the context in which the Sign will be seen. But I consider that the average consumer (i) may very well not remember that the photographer’s name always appears together with the Getty Images watermark; (ii) is much more likely to be focussing on the Sign itself; and (iii) may think nothing of the appearance of an indecipherable splodge. No doubt if they do remember that the photographer’s name generally appears they would, as Mr Stanley said, expect it to be legible. But, as he also said, he could not guarantee that a customer would be surprised if the name was not legible:

“I think they may be surprised, but in my experience, my Lady, there are an awful lot of things that our customers, who are busy people, do not see or notice…”.

Accordingly I do not consider that the indecipherable nature of the photographer’s name will be perceived by the average consumer paying a moderate degree of attention as dispelling the commercial messaging conveyed by the watermark*. It is part of the context in which the Sign is perceived but I do not consider it to be the “red flag” suggested by Stability.

Stability made no similar submission in relation to the iStock watermarks*.

Third, Stability contends that consumers have certain expectations about how brand messaging is deployed. It says that when dealing with consumer goods, such as clothing, consumers have expectations as to how the origin of the clothing will be designated (the label on the back of the neck; the crest on the chest etc.). Similar principles apply (it says) in respect of use of online services, where consumers will rely on web addresses and page titles and would expect a collaboration between service providers to be clearly explained.

I understood Stability to make four main points in support of this contention:

I have already accepted that the DreamStudio user is repeatedly presented with a series of trade marks which indicate that the origin of the service provided is Stability. While this also appears to be the case for the user of the Developer Platform when he or she originally sets up an account on the Stability website, there is no evidence to suggest that their experience is thereafter the same as that of the DreamStudio user.

Focussing, however, on users of DreamStudio, I have already found that they would understand that they are on a Stability website when generating images using the Model. But I do not consider that the existence of “conventional branding practices” (in the form of a favicon, a page title and a web address) on that website precludes the potential for the average consumer (a significant proportion of whom will not appreciate how the Model has been trained or what images it may have been trained on) to think that a watermark* appearing on a synthetic image indicates some connection or material link with Getty Images. Nothing that Mr Stanley said about the understanding of users interacting with the Getty Images Website or the use of additional branding (including branding indicative of a collaboration) alters this conclusion.

Although it is true that most of the images bearing Getty Images watermarks* in Annex 8H show images which are recognisably “off” (because they are seriously distorted, include more than one image of the same individual, show individuals with unusual proportions or with missing or additional limbs or distorted features and the like) that is not the case for the “real world” images in Annex 8I which bear the Getty Images watermark* and in respect of which the versions of the Model which generated them are known: for example, the Musician Image, the Hugging Girls Image (which merely looks to be improperly centred) and the two Japanese Temple Garden Images. I do not consider that the average consumer would consider these to be “recognisably off” and nor do I think that the average consumer would regard these as images of the sort they would not expect to see produced by Getty Images (which uses photographers to create conceptual images as well as to capture photographs of real events and real people). Mr Barwick observed in his statement in very general terms that he had “not seen anything that [he] would confuse with real images”, but Mr Barwick is a highly skilled professional photographer. With the utmost respect to him, I do not consider that his views can be equated with those of the average consumer who, as I have found, is paying a moderate degree of attention.

I set out again two of the Annex 8I images below, namely the Musician Image and the First Japanese Temple Garden Image:

I also bear in mind that the synthetic images produced by the Model appear to display the Getty Images watermark* in the conventional way that watermarks are used on photographs, and (at least in some cases) in the same general position. It is true that the watermarks* in the above images include some additional elements: the watermark on the Musician Image has an “m” with three arches (and thus four legs)); while the First Japanese Temple Garden Image watermark* appears to include an extra letter or character between the “a” and “g” and some letters are distorted. Furthermore, the photographer’s name in each image is heavily distorted. But, while these features might alert some people to the fact that the watermarks* are not, as Stability puts it, “the real thing”, I consider that there would be a significant proportion of average consumers who would not be so alerted.

While I accept Mr Stanley’s evidence that one would expect the Getty Images logo to be precisely rendered on the Getty Images Website, I do not consider that the rendering of the watermarks* in these images is so imprecise as to displace the impression that these images originate from Getty Images (at least for users of DreamStudio) or that the service that is being provided by Stability is in some way connected to Getty Images, perhaps because Getty Images has licensed its Content for use by Stability in training the Model (for all users), or perhaps because the images are in some way licensed to Getty Images.

Of course, as I have already said, it is a novel feature of this case that every time a watermark* is generated it will be generated in relation to a unique image and will or may appear in different forms. This is because the Model learns from its training data the statistics of patterns or probability distribution associated with certain concepts – the Model then generates new images by sampling from the distribution. Thus there are many ways in which one synthetically generated Getty Images or iStock watermark* will appear visually different from another synthetically generated Getty Images or iStock watermark*. That makes this a highly fact sensitive enquiry, which inevitably requires consideration of both the specific image and watermark* generated. The more distorted, blurred or recognisably “off” the image and/or the watermark* is, the more likely it is that the average consumer will realise that there can be no material link or connection of any kind with Getty Images.

In closing Stability relied upon an observation from Ms Cameron to the effect that an image generated by one of the users posting as part of the Reddit Exchanges was no more than “very reminiscent” of the Getty Images watermark. This image illustrates the point I have made in the previous paragraph nicely:

Aside from the fact that the relevant Model used to generate this image (which appears in Annex 8I) is not known, this is an example of a watermark* which is very obviously imprecisely rendered, unclear and noticeably “off”, including by reason of the nature of the image on which it is rendered. But it is not representative of all watermarks* generated in real life, as the Musician Image and the Japanese Temple Garden Images show. Watermarks* could seemingly be rendered in a wide variety of different forms on an infinite variety of different images.

As for the available images bearing the iStock watermark* - these show designs which do not purport to be in any way photo-realistic: see the Spaceship Image and the Dream Image set out later in this judgment at paragraph 402. Accordingly, I fail to see how Stability’s submissions about the content of the synthetic images themselves could possibly apply to these. Some of the watermarks* on the iStock images in Annex 8H and Annex 8I are slightly distorted and blurred, but others, including the two images on which Getty Images relies for the comparison between Mark and Sign are much less so and I do not consider the average consumer looking at the Spaceship Image and the Dream Image would consider them to be recognisably “off” or to speak to the proposition that the watermarks* are purely the artefacts of the image synthesis process rather than the purveyors of some commercial origin message.

In response to Getty Images’ point that the average consumer may think that a synthetic image bearing a watermark* was trained on Getty Image assets under license by Getty Images, Stability makes a couple of points. First it submits that watermarks* are “on any view a rare occurrence” and that the average user of any of the access mechanisms will have generated a host of synthetic images before ever coming across one. Thus, it says, it makes no sense for a particular image to indicate some further licence arrangement. I reject this argument. I cannot say whether the generation of watermarks* by v1.x or v2.x is a rare occurrence for reasons I have explained when dealing with the threshold question. Some of the observations in the Reddit exchanges might suggest otherwise. Further there is no basis whatever for me to determine that the average consumer seeing a watermark* will already have generated numerous images and will not therefore perceive that there may be a licence arrangement with Getty Images (at least in respect of some images).

Second, Stability contends that the average consumer (who I accept will be used to seeing legitimate watermarks appearing on a variety of images) will “of course be familiar with the reason why watermarks exist: it is to render an image commercially unusable unless a licence fee is paid”. This is consistent with Mr Stanley’s evidence that one reason for including watermarks on Getty Images Content is “to stop unauthorised use of imagery”. However, I do not see how this assists Stability. The user’s familiarity with the use of watermarks and the rationale for that use seems to me only to enhance the perception (at least where the unsophisticated average consumer using DreamStudio is concerned) that a watermark* appearing on a synthetic image is intended to convey a message that the image should not be used because it is in some way licensed to Getty Images.

Finally, Stability contends that there is no evidence to support the two distinct propositions advanced by Getty Images in support of its case that the Signs would be perceived by the average consumer as being used in relation to goods and services, namely (i) that consumers will think that the watermarked* images originate from Getty Images; and (ii) that consumers will think that the watermarked* images were generated by a model which was trained on Getty Images assets under licence from Getty Images.

Stability says that if this were true, Getty’s Salesforce Materials would be riddled with queries (including about licensing) and it suggests that there is not a single Getty Images customer raising these issues. There are certainly no witnesses before the court to explain that this is how they responded to the generation of a watermark* on a synthetic image output from one of the Models.

I reject Stability’s submission (which appears to me to be inconsistent with its case that users will not want to generate images bearing watermarks*) that because a watermark conventionally indicates that a licence is required, Getty Images could be expected to be receiving numerous enquiries about licenses. Users of DreamStudio (when using the Model in default mode) can choose from one of four images on screen; any user (accessing via any of the access mechanisms) can prompt the Model to produce further images. They can play around with the text used in their prompts to achieve the image they want. Because those users will not want to generate images bearing watermarks*, it seems to me that the vast majority are likely merely to discard such images; they are most unlikely to approach Getty Images to ask for, or check, the licensing position. This goes some considerable way towards explaining the lack of evidence of any queries in this case.

In any event, however, while it is true that there is very little evidence of queries being raised, the cupboard is not entirely bare. There is in fact the October 2022 SalesForce Message (to which I have already referred) which expressly shows a consumer asking the question:

“…recently I came across a prompt that results in well over 50% of the images showing an iStock watermark, are these images legal to use in my projects? How does Stable Diffusion go about licensing material from you?

This user appears to have formed the impression (i) that Stability had obtained a licence from Getty Images to use these images; and (ii) that the presence of the watermark* on the images might be read as prohibiting his use of them in his projects. This latter understanding is consistent with Ms Cameron’s evidence that the presence of a watermark “would certainly make me question if it was licensed or not”. Stability points out that following the explanation from Getty Images by way of reply to this message to the effect that there is no affiliation with Getty Images, the user replies “I kind of assumed as much, but if they aren’t licensing content from you then please explain the attached Images”. Stability suggests that it is clear from this that the user had in fact made no origin association assumption in response to the watermark*.

On balance I disagree. This user was sufficiently confused as to origin to cause him to write to Getty Images and pose the questions set out in his email, including the question about whether he could legally use the images he had generated which included the watermark*. I do not consider his eventual reply to establish that there had been no origin association – indeed he still poses a question about how the images could have come about if they are not being licensed by Getty Images.

The user raising this issue is based in the United States, but for reasons I have already given, I consider this message to be evidence that Getty Images’ case on use of the Sign in the United Kingdom is consistent with reality. Indeed this accords with my own impression. I reject the suggestion that this user is merely an “outlier”, unrepresentative of the average consumer. I have already said that various of the Reddit Exchanges also suggest users perceiving brand messaging when encountering a watermark*: e.g. “I can clearly see istock as watermark, not sure istock will approve those generated pictures” and making an association between Stability and Getty Images in respect of the training of the Model.

For all the reasons I have identified above, I consider that (subject to the points I have made above about the fact sensitive nature of the enquiry in relation to every example of a generated watermark* on a synthetic image) there is evidence in this case of output images, generated by v1.x and v2.1, which include the Sign and which, in my judgment, will be perceived by the average consumer as a commercial communication by Stability. Stability is running a business in the UK and providing Stable Diffusion to consumers as part of that business. The Signs are affixed to synthetic images generated by customers owing to the functionality of the Model, itself dependent upon its training data (over which Stability has absolute control and/or responsibility). It is in this way that Stability “offers and puts synthetic images bearing the Signs on the market” and this is Stability’s commercial communication to the consumer. I do not consider this to be in any way analogous to the Trebor Bassett scenario, or indeed to the decision in Merck, at [275], to the effect that the use of the word Merck “in a context which consumers would understand to be a description of an entity engaged in an activity other than the provision of goods and services” was not trade mark use.

For all the reasons I have given, I find that the use of the Sign (assuming it to be sufficiently clear and subject to the fact sensitive analysis referred to at paragraphs 381 and 385 above in relation to the synthetic image on which it appears) is such as to create the impression that there is a material link in the course of trade between the goods concerned and the trade mark proprietor. The average consumer using DreamStudio may interpret the Sign as designating Getty Images as the undertaking of origin of the images. The average consumer using all access mechanisms may interpret the Sign as indicative of a connection between Getty Images and Stability, including because the Models have been trained on Getty Images Content and licensed for use.

In my judgment, this use is in the context of a commercial activity with a view to economic advantage (as Mr Auerhahn’s evidence confirmed) and is not a private matter. Stability maintains (albeit only in a footnote in closing) that the use in issue in these proceedings is a private use by a consumer. But this submission can only be premised on an assumption of total control on the part of the consumer, and that assumption is, in my judgment, erroneous for reasons I have already explained.

Stability made an additional point in its written submissions to the effect that the paradigm trade mark use takes place before any commercial transaction but that the watermarks* in this case will only be seen by consumers long after they have made the relevant commercial choice, namely to download, or sign up to gain access to, Stable Diffusion. Thus, submits Stability, the watermarks* post-date any conventional brand usage. In oral closings, Mr Cuddigan emphasised that this means that Stability cannot be regarded in any real sense as putting images onto the market “under the Sign”. However, I do not see how this submission can sensibly be pursued, in light of the decision in Iconix. As I also understood Mr Cuddigan to accept, it is a question of fact whether the consumer will perceive some disjunctive branding on an image appearing on a website he or she has already entered as a brand origin message. I have determined that question in Getty Images’ favour for all the reasons set out in this section.

Pursuant to the Order of 22 May 2025, the comparison between Mark and Sign is to be tried by reference to the following four examples set out below which I shall refer to respectively as “the Obama Image”, “the First Japanese Temple Garden Image”, “the Spaceships Image” and “the Dreaming Image”. The Obama Image and Spaceships Image were generated as a result of the Getty Watermark Experiments and are included in Annex 8H. The Obama Image was generated by v2.1 in response to a verbatim prompt, while the Spaceships Image was generated by v1.2 in response to a “vector art” prompt. The First Japanese Temple Garden Image (generated by v2.1) and the Dreaming Image (in respect of which the relevant Model is not known) were generated by real world users of Stable Diffusion and are included in Annex 8I. The Dreaming Image was generated by a prompt that included the words “vector art”.

In Opening, Getty Images provided a useful table in which they conducted a comparison of Marks and Sign, which I reproduce below (without Getty Images’ accompanying submissions). For the purpose of this exercise I understand Getty Images to have simply extracted the watermark* from the images identified above and inserted it into the table under the heading “Sign”. I have added reference to the relevant image in the table.

I have already indicated that UK859, UK005, UK297 and UK819 are all word marks and it is common ground that these registrations cover the word in any typeface/script (Dreamersclub Ltd’s Trade Mark Application [2019] RPC 16 per Phillip Johnson sitting as an Appointed Person at ([11]-[12]). UK925 is a figurative mark registered in black and white. Again it is not in dispute that it covers the word in that script in any colour (Kerly at [10-093]).

In closing, Mr Cronan for Stability submitted that blurring or changes to legibility or the addition of letters is not merely “typeface” or “script”, but amounts to additional visual content. In general terms I accept this submission, but I must consider the comparison to see whether any such additional visual content in fact appears in the example Signs in this case. Mr Cronan also identified a difference between the analysis of the word mark (which shows GETTY IMAGES as two words) and the analysis of the figurative mark (which is all lower case, is written as one word “gettyimages” and includes an emboldened part). This was not a difference that Getty Images focussed on in its submissions.

Looking first at the ISTOCK Marks and Signs, I agree with Getty Images that there is clear identity in every respect: aurally, visually and conceptually. I consider that the average consumer would regard these as identical. I did not understand Stability seriously to suggest otherwise. In its written submissions it made a point about the watermark* in the Spaceships Image being an integral part of the image because it is layered in between the background and foreground content. However, I do not consider this point to be at all persuasive. The Spaceships Image includes a pattern of what appear to be repeated watermarks*, some of which are obscured by the spaceships (as in the partial image included in Stability’s skeleton argument) and some are not. I do not consider the fact that some of the watermarks* are obscured, or layered between the background and foreground is likely to affect the perception of the average consumer of identicality. There is nothing unrepresentative or unrealistic in making a comparison by reference to the Spaceships Image, notwithstanding that it was generated pursuant to the Getty Watermarks Experiments.

I have found that users of v1.x of the Model in the real world have used the prompt “vector art” and have generated a synthetic image with an iStock watermark*. Although it is not possible to say to which version of the Model the Dreaming Image relates, it was produced by a user in real life and therefore (for present purposes) appears to me to be representative of a watermark* that could be created using a prompt which includes the words “vector art”.