A common question asked of experienced IP attorneys relates to artists’ use of famous trademark products in the context of artistic expression, and whether such uses are protected as free speech or nothing. more than a violation.
Examples include Andy Warhol’s famous pop culture paintings of Campbell’s soup cans, as well as the juxtaposition of famous brand logos on pistols and weapons of war.
The legal analysis is not simple and depends largely on the factual circumstances surrounding the use of the trademarked products.
A trademark is a word, symbol, or design that is used to identify the source of a product. Trademarks are protected against misappropriation under federal and state statutes and common law.
Trademarks can be registered with the United States Patent and Trademark Office, but they can also be protected without federal registration. The primary purpose of trademark law is to protect consumers against unauthorized uses that are “confusingly similar.”
For a court to determine whether the unauthorized use of a trademark constitutes an illegal infringement, at least eight (8) non-exhaustive factors are considered, including: (a) the strength of the trademark; (b) degree of similarity between brands; (c) proximity of products; (d) the probability that the senior user will fill the gap between the products; (e) actual confusion; (f) bad faith of the minor user; (g) product quality of the minor user; and (h) sophistication of the relevant consumers. Polaroid Corporation v. Polarad Electronics Corp., 287 F. 2d 492 (2nd Cir. 1961). Furthermore, the Court will consider whether the use is likely to “dilute” the fame of a famous mark, either by blurring or blurring it. 15 USC § 1125.
Even where there are grounds for possible infringement or a dilution claim, an artist representing trademarks in an artistic creation has certain defenses. First, the artist can defend the claim based on the “fair use” of the trademark. However, fair use is an affirmative defense, meaning that it is only asserted once the artist has been sued in court.
An illustrative case involving the use of trademarked products as part of an artistic creation is Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792 (Ninth Cir. 2003). In that case, photographer Thomas Forsythe developed a photographic series titled “Food Chain Barbie,” which showed Barbie dolls in various positions, such as roasted in an oven.
After being sued by Mattel, Forsythe argued that his creative images attempted to “criticize [ ] the objectification of women associated with [Barbie], “and to” ram [ ] the myth of conventional beauty and the social acceptance of women as objects because this is what Barbie embodies. ” ID.
The Ninth Circuit Court of Appeals found that Forsythe’s use of Barbie dolls in this manner constituted fair use, as it was transformer defining this requirement as: “add[ing] something new, with a different purpose or character, altering the first with a new expression, meaning or message “. ID.
The Ninth Circuit explained that “when [trade]Brands’ transcend their identification purpose ‘and’ enter public discourse and become an integral part of our vocabulary, ‘they’ assume[ ] a role outside the limits of trademark law. ‘When a brand takes on such cultural significance, First Amendment protections come into play:'[T]The trademark owner has no right to control public discourse as long as the public imbues his trademark with meaning beyond its source identification function. ‘” ID.
To try to address concerns about exposure to claims of trademark infringement, some artists incorporate disclaimers in their catalogs or on websites that advise the consumer that the use of trademarks is not licensed or authorized by the owner. of the trademark. While a disclaimer can help address potential confusion, it does not guarantee a disclaimer.
Ultimately, prevailing to convince a court that a particular use of a trademark in a painting or photograph is transformative enough to protect that use behind the First Amendment will depend on the facts of the case at hand.
The legal outcome, as well as the appreciation of the art itself, may very well depend on the viewer’s point of view.