Incidental and Intentional Uses of Trademarks in Artwork: The Limits and Exceptions to Trademark Protection
Not only is a clever or established business name capable of luring customers, but also are logos, packaging, product shapes, colors, and other unique product characteristics. All of these devices—business and product names, logos, sounds, smells, colors, and packaging—purposely carry a message to potential consumers, and the intent of the message is simple: a certain device comes from a specific company or source, and therefore a consumer should chose that product or service over another. Understanding the importance of this message to overall business and marketing success, companies strive to create devices (names, symbols, logos etc.) that are unusual enough to be distinguishable from other products and services offered, as to qualify for protection under trademark law.
Many artists, however, utilize trademarks in their work for numerous purposes distinct from that of a company or brand. Some artists seek to use trade or service marks intentionally in their works for purposes of satire, parody, or commentary, while others use marks incidentally in depicting a scene—whether in a photograph, painting, drawing, or sculpture—in an attempt to creatively capture a particular and realistic scene or event. Importantly, both intentional and incidental uses of trademarks in art—including fine art, writing, sculpture, photography, music and the like—raise unique questions and concerns not necessarily addressed by the conventional application of trademark law, namely the Lanham Act. The issues raised by the use of trade or service marks in artworks are undoubtedly enormous in context, but typically center around one predominant, important, and reoccurring question: If and under what circumstances is the use of a trademark, either incidentally or intentionally, permissible in artworks? An answer requires careful consideration of not only the basic fundamentals of trademark law, traditional defenses, and also competing interests of free expression espoused by the First Amendment.
While trademark law is rooted in a number of sources including federal and state trademark statutes, federal and state statutes addressing “unfair competition,” and federal and state case law—it is predominately governed by the Lanham Act. The purpose underlying Trademark Law is distinguishable from other forms of intellectual property—such as Copyright and Patent Law—as uniquely concerned with the trademark owner’s goodwill and reputation, and consumer protection.
Qualifying for Trademark Protection:
In order to qualify for protection, one must demonstrate that the device meets fundamental requirements of a trade or service mark. The Lanham Act defines a trademark as, “any word, name, symbol, or device, or any combination thereof” used by a person “to identify and distinguish his or her goods from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown.” A service mark, on the other hand, distinguishes the services of one person or entity from the services of another. Trade and service marks, while bearing reference to two different types of marks, are afforded the similar protection against potential infringers under the Lanham Act. Importantly, not all words, names, symbols or devices are capable of qualifying as a protectable mark; and rather, one seeking legal protection either as a trade or service mark, must demonstrate that the mark is used in commerce, and that the mark performs the job of identification—identifying one source and distinguishing it from others. If a mark is incapable of serving this identification purpose, it is not protectable under trademark law.
Permissible v. Impermissible Use:
Although trademark law is intended to protect consumers, enforcement remains vested in the holder or owner of the trade or service mark. Generally, once a valid trademark is secured, the mark holder possesses a number of exclusive rights that attach to the trademark, and infringed upon if and when another party uses an identical or confusingly similar trademark in relation to identical or similar services or products without authorization.
Thus, if one uses a trade or service mark absent permission from a mark holder, in a way that is likely to cause consumer confusion as to the product or service’s origin, the holder or owner of the mark, may bring action against an unauthorized user for infringement. Where infringement is found, an injunction may be awarded, and additionally, or the in the alternative, monetary damages may be awarded. All remedies for infringement are equitable in nature, and courts are granted significant discretion in providing relief to an aggrieved party.
Traditional Likelihood of Confusion Test:
The Lanham Act protects owners of registered trade or service marks from uses that are “likely to cause confusion, or cause mistake, or deceive,” consumers. Thus, under a traditional application of the Lanham Act, a finding of liability for infringement requires a showing of a “likelihood of confusion” by a reasonably prudent buyer. This is a factual determination, whereby a significant number of courts apply an expansive interpretation, extending to “protection against use of [a trademark owner’s] mark on any product or service which would reasonable be thought by the buying public to come from the same source, or thought to be affiliated with connected with, or sponsored by, the trademark owner.” While each federal circuit court has adopted its own related flexible list of factors to evaluate a likelihood of confusion, the Tenth Circuit typically assesses “likelihood of confusion” according to a six-prong test, in which the following are considered: (1) the degree of similarity between the marks; (2) the intent of the alleged infringer in using the mark; (3) evidence of actual [consumer] confusion; (4) similarity of products and manner of marketing; (5) the degree of care likely to be exercised by purchasers; and (6) the strength or weakness of the marks. No one factor is determinative.
“Fair Use”—Permissible Unauthorized Uses & Defenses:
Protection under trademark law is limited, and the Lanham Act does not prevent all unauthorized uses of a trade or service mark. While it is impermissible to use another’s trade or service mark in a way that would cause consumer confusion, it is permissible to use a trademark, in good faith, to describe or comment on either a user’s own goods or services or the mark holder’s goods or service. Permissible uses of unauthorized trade or service mark use is otherwise known as “fair use.”
There are two specific occasions where use will be deemed “fair use,” and are available as a defense in trademark infringement cases: classic and nominative. Classic fair use is said to occur where one has used a trademark owner’s mark only to describe the qualities or characteristics of his own product, and not to describe the owner’s product. To prevail on a classic fair use defense, the unauthorized user of a mark must demonstrate: that it has not used the mark in dispute, as a trademark; that it used the mark fairly and in good faith; and, that it has used the mark only to describe its own goods or services. The second fair use defense—nominative fair use—applies where one has used another’s mark to “name” or identify (i.e. refer to) the other’s goods or services, and is typically found in comparative advertising, where the mark user specifically does not endeavor to capitalize on consumer confusion. To demonstrate nominative fair use, a defendant must show that the trademark owner’s product or service in question is not readily identifiable without use of the mark; that only so much of the mark is used as reasonably necessarily to identify the trademark owner’s product or service; and, that the user does nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.
Trademark Use and Artworks
The Lanham Act, First Amendment, and Artworks
First Amendment protection is not limited to written or spoken words, and rather, encompasses other methods of expression such as music, pictures, films, photographs, paintings, drawings, engravings, prints and sculptures.The fact that a mode of expression is embodied in a form, such as a painting, that is sold for profit does not alter the protection provided by the First Amendment. Therefore, not only is the Lanham Act relevant, but consideration of the First Amendment is becomes essential when evaluating the use of trade or service marks in expressive forms such as artwork.
Despite applicability of the First Amendment, with respect to authorized use of trademarks in artwork, the traditional likelihood of confusion test remains relevant, as the First Amendment will fail to provide protection for anyone who labels its commercial goods or services with a confusing similar mark; however, significantly, “trademark rights do not entitle the [trademark] holder to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view.” In other words, when trademarks are used in artwork, whether incidentally or intentionally, and become subject to a trademark infringement suit, the Court must first identify purpose of the work at the outset, and make a determination as to whether creative or expressive elements exist. If the primary purpose of the work is to suggest a commercial transaction, then the traditional likelihood of confusion test will apply; however, where the work is found to be defined as expressive (i.e. artwork), application of the traditional “likeliness of confusion” test, alone, falls short in failing to account for First Amendment rights.
Acknowledging First Amendment concerns in artwork, the majority of courts have concluded that the Lanham Act must be balanced against the First Amendment when considering trademarks in artworks. Initially, when handling suits for alleged trademark infringement in artwork, courts followed a more traditional “alternative means” approach, whereby trademark rights were upheld upon a finding that there was an adequate alternative avenue of communication for an alleged infringer’s message. In 1994, Rogers v. Grimaldi, however, expressly rejected the alternative means approach as insufficient means to “accommodate the public’s interest in free expression,” and denied the Lanham Act’s direct applicability to all works that could be considered a form of artistic expression. Instead, Rogers articulated a First Amendment balancing test, and ultimately concluded and that the Lanham Act should be applied to artistic works only in instances where “public interest in avoiding consumer confusion outweighs the public interest in free expression.”
To prevail under Rodgers the unauthorized user of a trademark must first show that the use of the trademark holder’s mark “surpasses the minimum threshold of artistic relevance to the [work’s] content. Once an accused infringer establishes artistic relevance, they must then assert that use of the mark has not explicitly misled as to the source or content of the work. Failure to meet either prong may lead to a finding of infringement.
While the First Amendment is a potential shield for any artist wanting to utilize another’s trademark in their artwork, notably, not all Courts will apply a First Amendment analysis when faced with an infringement suit for artwork that has utilized another’s trademark. In order to supplement discourse more closely aligned to conventional trademark law, and as to avoid questions of constitutional law where narrower grounds are available, in lieu of the balancing test enumerated in Rogers, some courts apply similar criteria under a “fair use” heading—particularly in cases where a mark is intentionally used for purposes of satire or parody. For example, in Mattel Inc. v. Walking Mt. Productions, Mattel brought action for trademark and trade-dress infringement under the Lanham Act against an artist who depicted nude Barbie Dolls in photographs. The artist utilized the Barbie Dolls in the photographs in an attempt to make social or political commentary. The Mattel Court acknowledged Rodgers, but ultimately concluded that Rogers had not previously been applied to cases of alleged trade-dress infringement, and rather than engage in a First Amendment analysis, the Court determined that the artist’s use was permissible as nominative fair use. In this situation, ultimately, fair use applied because the artist’s use of the mark was considered “necessary” to identify a component of the work, used only so much of the mark as required, and did not suggest or imply sponsorship or endorsement of the trademark owner. Thus where either artworks use trade or service marks in a descriptive sense, or to make commentary, the value of a relevant fair use defense should not be overlooked.
A determination of whether an artist’s use of a trade or service mark takes numerous considerations including principals underlying trademark law, consumer confusion, traditional fair use defenses, and the First Amendment. Whether a work depicts a trademark either with commercial or expressive intent remains a paramount consideration when evaluating the use of a trademark in artwork. Trademark law ultimately protects trademark owners from use that is likely to cause consumer confusion as to its source or origin; however, expressive use of trademarks—whether under a fair use analysis, or first amendment—is far less likely to be precluded. Defenses, and their success, will ultimately vary depending on the function of the mark in the artwork, and typically whether a court is able to classify the use as “necessary, “relevant,” “incidental,” or “artistically relevant,” to the artwork. Works that utilize a trademark in a descriptive sense or to comment on a brand logo or product may enjoy the greatest amount of protection by invoking fair use; however, when fair-use may not be available as a defense, the First Amendment may provide an artist a powerful shield from liability.
Want to use a trademark in your own artwork? Remember, when in doubt, it’s always a good idea to contact an intellectual property attorney who is well versed and experienced in this area of law.