Incidental and Intentional Uses of Trademarks and Service Marks in Artwork
| Publication year | 2012 |
| Pages | 51 |
| Citation | Vol. 41 No. 9 Pg. 51 |
2012, September, Pg. 51. Incidental and Intentional Uses of Trademarks and Service Marks in Artwork
September 2012
Vol. 41, No. 9 [Page51]
Intellectual Property Law articles are sponsored by the CBA Intellectual Property Section. They provide information of interest to intellectual property attorneys who advise clients on protecting and exploiting various forms of intellectual property in the marketplace.
Coordinating Editors
K Kalan, Denver, of Berenbaum and Weinshienk PC-(303) 592-8301, kkalan@bw-legal.com; William F. Vobach, Littleton, of Swanson and Bratschun, L.L.C.-(303) 268-0066, bvobach@sbiplaw.com
About the Author
Christina Saunders is Managing Attorney at Nouveau Law LLC in Denver-(720) 204-5671, christina@nouveaulaw.com.
Artists often incidentally or intentionally use trademarks or service marks in works such as music, drawings, films, paintings, and sculptures. This article discusses the use of trademarks and service marks in the context of artistic works and the application of the Lanham Act and First Amendment protection with respect to such uses.
A clever or established business name is capable of luring customers, as are logos, packaging, product shapes, colors, and other unique product characteristics. These devices purposely carry a message to potential consumers. The intent of the message is simple: the product or service comes from a specific company or source; therefore, a consumer should choose that product or service over another. Understanding the importance of this message to overall business and marketing success, companies strive to create names, symbols, and logos that are unusual enough to be distinguishable from those of others and that qualify for protection under trademark law.
Many artists, however, use the trademarks or service marks of others in their work for numerous purposes distinct from those of a company. Some artists use trademarks or service marks intentionally in their works for purposes of satire, parody, or commentary. Others use marks incidentally in depicting a scene-whether in a photograph, painting, drawing, or sculpture-in an attempt to creatively capture a particular mood or realistic event. Both intentional and incidental uses of trademarks or service marks in art-including fine art, writing, sculpture, photography, and music-raise unique questions and concerns not necessarily addressed by the conventional application of trademark law (namely, the Lanham Act).(fn1) The issues raised by the use of trademarks or service marks in artworks are great in scope, but typically center around a predominant, important, and recurring issue: whether and under what circumstances the use of a trademark, either incidentally or intentionally, is permissible in artwork.An answer requires careful consideration of the basic fundamentals of trademark law and traditional defenses and competing interests of free expression espoused by the First Amendment.
Basic Principles of Trademark Law
Trademark law is based on federal and state trademark statutes,(fn2) as well as federal and state case law. Principals of unfair competition also play into the analysis.(fn3) However, the predominant trademark law is the Lanham Act.(fn4) Trademark law is distinguishable from other types of intellectual property protection-such as copyright and patent law-because it is uniquely concerned with the trademark owner's goodwill and reputation, and with consumer protection.(fn5)
Qualifying for Trademark Protection
To qualify for trademark protection, one must demonstrate that a mark meets certain fundamental requirements. 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."(fn6) A service mark distinguishes the services of one person or entity from the services of another.(fn7) Although trademarks and service marks are different types of marks, they are afforded similar protection against potential infringers under the Lanham Act.(fn8)
For the purposes of this article, the terms "trademarks" or "marks" is used refer to service marks, as well. Importantly, not all words, names, symbols, or devices are capable of qualifying as a protectable mark. Rather, one seeking legal protection for a trademark or service mark must demonstrate that the mark is used in commerce, and that the mark performs the job of identifying one source of the goods or services and distinguishing it from others.(fn9) If a mark is incapable of serving this purpose, it is not protectable under trademark law.(fn10)
Permissible Versus Impermissible Use
Although trademark law is intended to protect consumers, responsibility for the enforcement of trademark rights lies with the holder or owner of the mark.(fn11) Generally, once a valid trademark is secured, the holder possesses a number of exclusive rights that attach to the mark. If and when another party uses an identical or confusingly similar...
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