Trademark Travails

]> Knowing the letter of the law is critical when using trademarks in licensed art. Strolling through my local art gallery, I come across a painting of a street

April 6, 2018

8 Min Read


Knowing the letter of the law is critical when using trademarks in licensed art.


Strolling through my local art gallery, I come across a painting of a street scene. The scene is crowded with people busy with their days, couples pushing strollers and vendors selling their wares. Parked along the curb is a group of motorcycles. All the names are there: Harley-Davidson, Honda, Kawasaki, Yamaha, and Suzuki. As an art lover, I think about why the artist chose this particular street corner.

I wonder who the people are and where they are going. As a trademark attorney, however, my eyes focus on the names of the motorcycle manufacturers clearly depicted on the fuel tanks. Did the artist have permission to use these trademarks? Was permission needed? Could this be an infringement of a company's trademark? Is it fair use?

Artists today routinely incorporate trademarks in their artwork, as in the street scene. Just as routinely, artists are now the recipients of cease-and-desist letters from trademark owners claiming infringement. Because these letters come from lawyers, who, in many cases, are representing large companies, they usually have the desired effect of scaring the artist or publisher into complying with their demands. However, artists have incorporated trademarks and popular cultural icons into their artwork for decades without any claims from trademark owners. So why are trademark owners staking claim now? The answer is simple: money. With the explosion in licensing, companies that once were flattered to have their trademarks included in artwork now see licensing opportunities. Claims of trademark infringement against artists are becoming increasingly common. Some of these claims are legitimate complaints made against artists who do not fully understand this area of the law. Many, however, are inappropriate, claiming charges of trademark infringement in circumstances where infringement is unlikely to be found.

Cease and Desist

A trademark is defined as any word, symbol, name, device, or combination of these used in conjunction with goods or services (referred to as a service mark for services) to identify the source and quality of those goods or services. Words, pictures, initials, color, and nonfunctional characteristics of a product -such as shape and configuration-can serve as a trademark or service mark. Trademark or service mark rights arise through use, such as affixing the trademark to the goods or using the service mark in conjunction with the service. Although registration with the U.S. Patent and Trademark Office is not required to acquire trademark rights, federal registration provides additional benefits, and you should register if you can afford it.

Trademark owners are required to vigorously pursue all manners of potential infringement of their marks or they run the risk of being considered to have abandoned that mark. This means that if the trademark owner knows of an unauthorized use of a mark, it must seek to prevent or control such use through a license agreement. Many companies have entire departments that focus on policing and enforcing their trademark rights and will assert trademark infringement every time they view one of their trademarks being used by a third party. The cease-and-desist letter is step one in that process of enforcing those rights.

The elements for a successful trademark infringement claim have been well established under both federal and state case law. A plaintiff in a trademark infringement case has the burden of proving that the defendant's use of a mark has created a likelihood of confusion about the origin of the defendant's goods or services. Assuming the plaintiff has protectable rights in the mark, the plaintiff must show the defendant is using a confusingly similar mark in such a way that it creates a likelihood of confusion, mistake, and/or deception with the consuming public.

The most common form of relief granted to a successful plaintiff in a trademark infringement lawsuit is an injunction against further infringement. If the infringed mark were federally registered, attorney fees also would be available to a successful plaintiff. Monetary damages are also available under the Lanham Act for misdesignation of affiliation.

Determining whether a trademark infringement has occurred in artwork requires one to:

  • View the artwork.

  • See how the mark(s) are being used.

  • Determine if such use is an infringing use of such mark(s).

Using the example of the street scene painting, one can assume the artist is not selling motorcycles or baby strollers or any of the products depicted in the artwork. Arguably, the artist is not using the mark as a trademark as the artist is not offering a product that is likely to be confused with the trademark owner's product. Therefore, and absent other factors, it would be difficult to show the likelihood of confusion necessary for trademark infringement to occur as a result of the artist's use of the trademarks in this type of work.

In many instances, however, the trademark owner claims that incorporating a trademark in artwork causes consumers to believe the artist is associated, affiliated, or connected with the trademark owner, and that the trademark owner has approved, authorized, or sponsored the artwork. For example, a photographer takes a photo of the fuel tank of a Harley-Davidson motorcycle, with the name the dominant feature; makes copies of the photo; and offers them for sale at a H.O.G. rally. In this case, the trademark owner would seek to prevent the photographer from selling or displaying the photographs on the grounds that consumers might believe the photographer is associated, affiliated, or connected with Harley-Davidson, and that the company has approved, authorized, or sponsored the photos. In this scenario, it is obvious the artist will have a problem with the trademark owner. But most cases are not as clear. Where there is no clear case of infringement, trademark owners will put most of the efforts into the cease-and-desist letter with the expectation that the artist, with limited funds, will either stop using the trademarks or will continue with permission and the payment of a license fee.

The Defense

Even if grounds for an infringement claim exist, certain defenses are available to the artist. First, the artist may be able to defend the claim on the grounds of fair use. The "nominative fair use" defense arises when a potential infringer (or defendant) uses the registered trademark to identify the registrant's product or service in conjunction with his or her own. To invoke this defense, the defendant must prove the following elements:

  • His/her product or service cannot be readily identified without pointing to the registrant's mark.

  • He/she only uses as much of the mark as is necessary to identify the goods or services.

  • He/she does nothing with the mark to suggest the registrant has given approval to the defendant.

Transferring this legalese into the painting of the street scene example, one first would argue there is no other way to create a realistic painting without using trademarks. Second, the marks are being used accurately and solely to convey information regarding the brand of the product. Third, the artist's use of the trademarks could not be construed to indicate sponsorship or endorsement by the trademark owner.

Additionally, if no income is solicited or earned by using someone else's mark, this use is not normally an infringement. Some artists incorporate disclaimers in their catalogs, with their works, or on their Websites advising the consumer that the use of the trademarks is not licensed or authorized by the trademark owner. While a disclaimer helps, it does not guarantee unlimited use of a trademark.

Generally in art/trademark cases, the ultimate deciding factor usually boils down to whether or not the art-buying public is going to believe there is a relationship between the artist and the trademark owners whose products appear in the artwork. While artists are certainly aware of the aggressive nature of trademark owners and trademark licensing in the arts, the art-buying public generally is not. They, as consumers of art (the public upon which the legal standard is set), are not likely to think about what licensing arrangements are in place or if there is an affiliation between the trademark owner and the artist. This being the case, is there then "a likelihood of confusion" as required by law for an infringement to have occurred?

Determining Liability

If an infringement does occur, the artist and perhaps the gallery owner and publisher are liable. Using someone's mark directly in a product or service one sells produces liability under the theory of "contributory trademark infringement." This liability may exist if one knowingly allows someone else to violate another party's trademark rights and personally gain from such violation. It also may exist if you intentionally encourage another person to violate a trademark. The important issues in determining liability for contributory trademark infringement are:

  • If you are aware of the infringement.

  • If you have the ability to monitor and control the use of your product or service.

  • You are in a position to receive some benefit from the violation.

Aside from obtaining permission from all trademark owners up front, the best remedy for artists is to acquiesce to valid trademark concerns and fight the frivolous ones. Trademark owners will continue to send cease-and-desist letters to artists, publishers, and galleries if they know that's all it takes to stop an artist who is not paying them royalties.

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