I asked attorneys to weigh in on the following questions. Today we have input from intellectual property attorney, Marc Misthal. Marc is affilaited with Gottlieb, Rackman & Reisman, an IP boutique law firm that specilaizes in art-related issues. We also have some input from intellectual property attorney Jeffrey H. Greger and Monica P. McCabe from Vandenberg & Feliu LLP.
To start us off, Jeffrey H. Greger writes “Trademarks are defined as indicators of source, sponsorship, or affiliation. The laws governing trademarks prevent unauthorized use of a trademark which may confuse or falsely affiliate an unauthorized use with a trademark owner. The laws are designed to protect the public but most trademark owners lose sight of that fact. Rights in trademark are based on the first one to use a distinctive mark and such rights can last in perpetuity provided the mark continues in use.
Copyright is a completely different limited-in-time right which protects works of creative authorship in tangible form. One of the easiest concepts is a sculptor who makes a creation out of a lump of clay. The resulting sculpture is protected against copying.”
1. A lot of artists out there do work with post-consumer materials, like magazines, soda cans, cereal boxes, etc. I have heard the first sale doctrine should protect their right to produce work like this, but I’ve also seen many artists get sued for trademark infringement for producing work like this. Does the artist have the right to make art from post-consumer materials or does a company like Budweiser have the right to sue her for making a necklace out of an empty can of Bud Light and selling it? I know in the past famous collage artist Barbara Kruger has been sued for making collages of copyrighted materials.
“To answer your question, you have to differentiate between one-of-a kind works and reproduced works. In the first category, if an artist or business takes consumer materials, e.g. cereal boxes, newspaper excerpts, jewelry or eyeglasses, and incorporates these actual items into a work of art, for example in a collage, and sells that art, in the usual situation this is not copyright infringement, because (under the first sale doctrine, as you mentioned), one who legitimately acquires copyrighted material can generally use it (but NOT reproduce it) in any manner.
However, in the second category, if the artist or business takes consumer materials, and reproduces them alone or in combination, that might be copyright or trademark infringement, on the basis that the company who made the consumer materials might have copyright or trademark protection. The defense here is the “fair use” defense, meaning generally there is an artistic or transformative purpose for the reproduction, and it does not compete directly with the interests of the original product producer. There is often not a black and white answer to whether the fair use defense applies in a given situation.”
– Marc Misthal
Interestingly, Jeffrey H. Greger and Monica P. McCabe disagree with this assessment…
“Trademark exhaustion allows one to re-sell a genuine product on Ebay for example. If one transforms the product into something else, the trademark owner has lost the ability to control its own product which is the core concept behind trademark law. The public learns to trust the trademark as affiliated with the genuine owner who provides a level of accustomed quality which is also referred to as the “good will” built in a brand. Trademark owners are required to control and review for quality all goods bearing the owner’s mark.
So, what is wrong with selling model airplanes cut out of some old Budweiser beer cans? Anheuser Busch, the owner of the distinctive Budweiser trademark and logos and designs (trade dress) would likely object to such use on the belief that consumers are likely to assume a false affiliation with Budweiser. If the transformed cans were sold near a Busch Gardens Theme Park I could see a real problem. I bought one on the beach from a guy selling all different cans turned into model planes and there is no way I thought Busch sponsored or was affiliated. Nevertheless, the transformed use provides Busch with at least the right to object and file a law suit and Anheuser Busch is pretty aggressive in that department.”
– Jeffrey H. Greger
“The first sale doctrine is a copyright concept which allows a purchaser of a tangible artistic work, like a book, to resell it without violating any copyright laws. It is important to note however that the first sale doctrine only allows for one sale of the work and does not confer the rights the copyright owner would have such as the right to reproduce, display or perform the work. In short, the first sale doctrine does not apply to adaptations of a work. Rebinding a paperback book into a hardcover would come under the first sale doctrine, but taking different things and creating a new compilation (such as a collage) is an infringement of the copyright owner’s adaptation rights. In fact, in one case the court held that taking pages of an art book and mounting it onto ceramic tile was considered infringement because it was a derivative work of the original owner’s work.
The doctrine of fair use may be of more help in certain situations. The doctrine allows certain types of uses of a copyrighted works without permission of the owner primarily for uses in the area of commentary, parody, news reporting, research and education. Courts usually do not find fair use where the use of the copyrighted work is for commercial purposes. There is a four factor test that the courts will weigh: (1) the purpose and character of the use, including whether the use is for nonprofit, educational purposes; (2) the nature of the copyrighted work – whether it is factual or more creative; (3) the amount and substantiality used in relation to the copyrighted work as a whole; and (4) the effect of the use on the potential market for or value of the copyrighted work – could the use be in competition with the copyright holders. So, for instance, if an artist donates a collage to a school that incorporates only a small portion of the copyrighted work, it likely would not take away a potential market that the copyright owner may have. Thus, the artist may successfully use the defense of fair use if the copyright owner were to complain or sue.
Artists also need to worry about trademark infringement, i.e, confusion by the public as to the source of origin of the artist’s work. It is possible that someone might think the artist’s work is somehow affiliated with Budweiser. Under trademark principles, only Budweiser or its authorized licensees may use its trademark or logo. Others may use the trademark or logo merely to identify the beer sold under the mark. While some companies may appreciate the publicity from the use of their trademark in an artistic design, others may object to a commercial use of the trademark in such a manner. The safest course would be to seek permission from the trademark and/or copyright owner(s).”
– Monica P. McCabe
2. If artists are protected by first sale doctrine, could a company still claim infringement for trademark dilution or trade dress and would their claim be legitimate?
“Among the most famous cases in this area are those that relate to the well-known artist, Jeff Koons. In one case, he was sued by a photographer who claimed that Koons obtained a picture of a couple holding a group of eight puppies in a postcard, and used that picture to create a large 3-dimensional sculpture with the same theme and layout. The Federal Court of Appeals in New York ruled that Koons was guilty of copyright infringement.
In another and later case, Koons took a portion of an advertisement showing a woman’s legs, changed them so that they were dangling downwardly, and incorporated them into his own reproduction. The same Court of Appeals held that was “fair use” and held that there was no copyright infringement. That is why we say “fair use” is hard to explain and judge, without seeing the proposed item.”
– Marc Misthal
“Busch would no doubt claim all possible trademark claims including the basic false affiliation otherwise known as a likelihood of confusion and add to it a dilution claim which protects famous marks being used on goods other than those used by the trademark owner. Traditional trademark confusion claims are limited to similar goods. So use of the term BUD for non-beer related goods and services has been enjoined in past under the general dilution theories which include blurring and tarnishment of a famous and well-known mark.
You mention the Barbara Kruger copyright case. That case is reported as Ms. Kruger prevailing and dodging a bullet despite appropriating the photographic creation of another. Fortunately for Ms. Kruger, the copyright in that matter was not enforceable, as it was an expired foreign copyrighted work which fell into the public domain. Ordinarily copying or appropriating another’s creation would be actionable under U.S. Copyright laws.
When in doubt ask for permission or seek a clearance from a copyright attorney. If using another’s trademark, is it abundantly clear the trademark owner has not licensed the use or is affiliated? Trademark uses of another’s mark should be avoided if it likely to raise a question of false affiliation. When in doubt an express disclaimer of affiliation and/or appropriate trademark notice may limit risks of objection.
There are concepts of “fair use” a legal term, in both copyright and trademark law, such as when the use is for parody or satire, so exceptions to the rules always apply resulting in the “maybe” answer most lawyers will provide. First Amendment issues are also intertwined with artistic expression. But if the art takes the form of commercial intent-to-profit, one can see why an intellectual property owner, in this day and age of licensing IP rights in every shape and form, would likely object to most any use where money is at issue.”
– Jeffrey H. Greger
“The first sale doctrine gives very limited protection to the artist. The owner’s claim of trademark dilution trade dress along with trademark infringement, are other concerns. Again, I think it is helpful to define these “legalese” terms. Trademark dilution can occur when there is a famous mark like Tiffany involved – the owner can claim that the use of its mark is blurred, tarnished or lessened in its ability to distinguish its good and services. One can imagine an instance where a famous trademark owner may not like the controversial manner in which an artist uses it mark. Trade dress gives a broader scope of protection than trademark protection because it focuses on the entire image of a product rather than on a word or symbol; however, the trade dress must be considered distinctive such that a consumer would associate the trade dress with a particular good or service. For instance, the predominantly red and yellow aerosol spray can for Pam could be considered trade dress. The trade dress owner must show that the artist’s use of the trade dress creates confusion among the public – the question then becomes – would a customer be confused as to the affiliation between the creator of the collage and the brewery who made the beer? In some cases, it is possible but in others maybe not. Again, I think the safest cost is to seek permission from the trade dress or trademark owner.”
– Monica P. McCabe
I’d like to extend a special thanks to Jeffrey H. Greger on some back and forth over this issue as he answered my questions. I imagine it’s a hot topic for readers here at Smaller Box, since items made from post-consumer materials are a popular trend. I asked Jeffery if he could find any case law related to this issue and here’s what he reported back…
“Case law revealed an interesting dispute over refurbished, washed, remarked, golf balls. The reseller made a clear disclaimer that the balls were refurbished. The district court agreed and denied a trademark injunction and the appellate court affirmed two out of three.
Applying this to your readers, the take away, make a clear and conspicuous disclaimer and that would really reduce levels of risk. There are cases also on the fake sunglasses they sell on the Jersey Turnpike and NYC streets that say DKNY replicas as a disclaimer and fair use. Sufficient disclaimers go a long way to reducing risk of confusion and averting a trademark dispute. with famous marks the stakes are higher in view of possible dilution claims.
A complete transformation into something that looks like it may be licensed has risk without a clear disclaimer. Always issues of gray.”
– Jeffrey H. Greger
Additional Reading: Intellectual Property and the Arts
This content is copyrighted. See my content sharing policy here.