A frequently-asked question of Intellectual Property lawyers relates to pop artists' use of famous, trademarked products in the context of artistic expression, and whether such uses are protected free speech, or are really nothing more than infringement and dilution cloaked in the guise of art. Examples include Andy Warhol's famous paintings of Campbell's soup cans (above), as well as the juxtaposition of famous brand logos on guns and weapons of war such as Peter Gronquists' controversial uses (see below). The legal analysis is not simple, and depends largely on the factual circumstances surrounding the use of the trademarked products.
A trademark is a word, symbol or design used to identify the source of a product. In order for a court to determine if the unauthorized use of a trademark constitutes unlawful infringement, at least eight (8) non-exhaustive factors are considered, including: (a) the strength of the mark; (b) degree of similarity between marks; (c) proximity of the products; (d) likelihood that senior user will bridge the gap between the goods; (e) actual confusion; (f) junior user's bad faith; (g) quality of the junior user's product; and (h) sophistication of the relevant consumers. Polaroid Corporation v. Polarad Electronics Corp., 287 F. 2d 492 (2nd Cir. 1961). Additionally, the Court will consider if the use is "likely to dilute" the fame of a famous trademark through either blurring or tarnishment. 15 U.S.C. § 1125.
Even when grounds for a potential infringement or dilution claim exist, certain defenses are available to an artist depicting the trademarks in an artistic creation. Primarily, the artist may be able to defend the claim on the grounds of "fair use" of the trademark. However, fair use is an affirmative defense, which means that it is only asserted once the artist has been sued in court.
An illustrative case involving the use of trademarked products as part of an artistic creation is Mattel Inc. v. Walking Mountain Prods., 353 F.3d 792 (9th Cir. 2003). In that case, photographer Thomas Forsythe developed a photographic series entitled "Food Chain Barbie," which depicted Barbie dolls in various disturbing and provocative positions, such as being roasted in an oven or in a blender and fondue pot (see below):
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| Copyright Thomas Forsythe |
After being sued by Mattel, Forsythe argued that his creative images attempted to "critique [ ] the objectification of women associated with [Barbie]," and to "lambast [ ] the conventional beauty myth and the societal acceptance of women as objects because this is what Barbie embodies." Id.
The Ninth Circuit Court of Appeals found that Forsythe's use of the Barbie dolls in this manner constituted fair use, as it was transformative, defining this requirement as: "add[ing] something new, with a further purpose or different character, altering the first with new expression, meaning, or message." Id.
The Ninth Circuit explained that "when [trade]marks 'transcend their identifying purpose' and 'enter public discourse and become an integral part of our vocabulary,' they 'assume[ ] a role outside the bounds of trademark law.' Where a mark assumes such cultural significance, First Amendment protections come into play: '[T]he trademark owner does not have the right to control public discourse whenever the public imbues his mark with a meaning beyond its source-identifying function.'" Id.
To try to address concerns about exposure to claims for trademark infringement, some artists incorporate disclaimers in their catalogs or on websites that advise the consumer that the use of the trademarks is not licensed or authorized by the trademark owner. While a disclaimer can help address possible confusion, it does not guarantee freedom from liability.
Ultimately, to prevail in convincing a Court that a particular use of a trademark in a painting or photograph is sufficiently transformative to shield that use behind the First Amendment, will depend on the facts of the given case.
The legal outcome, much as the appreciation of the pop art itself, may very well depend on the viewpoint of the beholder.
