The Use of Trademarks in Art

It’s a question that concerns many artists: Are there legal consequences for depicting a trademark in your work without authorization from the mark’s owner? 

 

This issue arises in an enormous range of contexts. Many artists produce work that directly satirizes, parodies or comments upon a product, public figure, or brand. An equally significant number create works that incorporate a logo, brand or product incidentally– whether through a photograph of a city skyline, a painting of significant event, or just a creative reflection of the elements that shape our daily lives.

 

Trademark law, like every form of intellectual property law, is based around concepts of protection. However, unlike copyright and patent law, trademark laws are primarily designed to protect the consumers - not the creators - of a brand or product. Therefore, in a traditional trademark infringement contest, the dispute often focuses less on whether a mark was actually misappropriated, and more on whether its misuse has created confusion in the marketplace by misleading or misinforming about the source of a product or the content of brand messaging.

 

Because of these concerns, when a creative work becomes the subject of an infringement lawsuit, a court must identify the purpose of the work early in the process.  If the primary function of the work is to suggest a commercial transaction, it will typically be viewed as visual media, not art, even if creative elements are employed. Once this happens, the case will continue in a traditional trademark infringement pattern using the “likelihood of consumer confusion” test.

 

On the other hand, if a creative work’s primary value is derived not from its commercial intent but from its creative or expressive weight, courts will typically label it as an artistic work.  This is good news for a potentially infringing artist, because artistic works qualify for First Amendment protection by virtue of their status as forms of expression.  Courts will typically make efforts to protect these works on the grounds that the public interest in preserving free expression is extremely high.  This is true even if the work is sold for profit.  Once a work is viewed as non-commercial art, a test for consumer confusion is not appropriate because it fails to adequately consider the interests protected by the First Amendment. (For more information on the theory behind this type of First Amendment protection, see ETW Corporation v. Jireh Publishing, Inc., in which Tiger Woods failed in an infringement suit against the painter who depicted his 1997 victory at Augusta).

 

Throughout the debates invoking this type of protection, we see legal opinions justifying the use of trademarks in art by using words like “descriptive”, “incidental”, “necessary”, and “artistically relevant” to describe the artist’s need to incorporate trademarks into his or her work. Factors considered by courts in a First Amendment defense include whether the use of the mark was relevant to the artist’s work and whether the artist explicitly misled viewers to believe that his work was sponsored by the trademark owner. Some courts, seeking a way to supplement these opinions with discourse more closely associated with a true intellectual property dispute, will apply similar criteria under the heading of a “fair use” defense. A fair use defense will apply when the artist’s use of the mark is necessary to identify a component of the work, uses only as much of the mark as “necessary” for the work’s purpose, and does not suggest or imply sponsorship or endorsement by the trademark owner.  

 

These defenses also vary in form depending on the function of the mark inside the work.  For works that display a brand, logo or product only incidentally, a defense of “descriptive use” is sometimes applied.  In the “descriptive use” defense, the court asks whether an artists’ use of the brand, logo or product was merely “descriptive”, or in other words, necessary for conveying the larger spirit, message, or context of the work. An example might be a painting of a Steelers’ game that depicts team logos on the players’ helmets. (See Univ. of Alabama Board of Trustees v. New Life Art, Inc. for a similar case in which artist Daniel Moore prevailed in his depiction of University of Alabama football uniforms).

 

Works that comment on a brand, logo or product that is well known may enjoy an additional level of protection. Remember - trademark law allows mark owners to control others’ use of their marks to prevent consumer confusion. Trademark laws do not permit a trademark owner to control or repress the public discourse surrounding a mark that has become so culturally significant that it has acquired a secondary meaning beyond its branding function. 

 

A famous example of this theory is photographer Thomas Forsythe, who in 1997 photographed his “Food Chain Barbie” series. The series showed Barbie dolls in various states of undress and in danger of physical harm at the hands of malevolent household appliances. When Forsythe ended up in court against Mattel, he argued that his work was intended as a comment on society’s artificial and exaggerated notions of feminine perfection, and that he had incorporated the Barbie mark not as a brand, but as a culturally significant symbol embodying his critique. The court came on board and ruled for Forsythe, recognizing that the “Barbie” mark is a rather obvious focal point for this type of criticism. 

 

So… you won’t get sued? Not so fast. Remember that every legal opinion shaping the way our courts view trademarks in art was formed because an artist was sued.  Use caution and analyze your appetite for risk. When in doubt, contact a mark owner about acquiring a license.

 

 

This article is based on an analysis of several judicial decisions disputing the use of trademarks in fine art. Readers should note that case law, by its nature, is highly changeable and discourse in this area of law should not be viewed as settled. Every question of trademark use is unique, and the content of this article should not replace the current and specific advice of a trademark attorney.