PUTTING THE BRAKES ON HARLEY

BY: Joshua Kaufman & Marcia Auberger © 2002

As I stroll through my local art gallery, I come across a painting of a street scene; the street could be any street in any town, but it catches my eye nonetheless. The street scene is crowded with people busy with their days, couples pushing strollers, and vendors selling their wares. Parked along the curb in the street scene is a group of motorcycles. All the names are there, Harley- Davidsonâ , Hondaâ , Kawasakiâ , 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 again on the motorcycles and the names of the manufacturers clearly depicted on the fuel tanks. I ask myself, did the artist have permission to use these trademarks? Did they need permission? Could they be infringing someone’s trademark? Is it a fair use?

Artists today routinely incorporate trademarks in their art, whether as in the street scene described above or where the goods of another are prominently featured. Just as routinely, artists are now the recipients of cease and desist letters from trademark owners claiming infringement. In fact, as an artist or publisher you may have been such a recipient, anxiously opening an envelope with the name of a law firm on the exterior and reading with increasing trepidation a letter that accuses you of illegal and infringing acts. Because these letters come from lawyers that, in many cases, are representing large companies, they usually have the desired effect of scaring the artist or publisher into complying with their demands. Why now? Artists have incorporated trademarks and popular cultural icons in the art for decades without any claims from the trademark owners. The answer is simple, money! With the explosion in licensing, companies which were once flattered to have their trademarks included in artworks now see licensing opportunities. Claims of trademark infringement are becoming increasingly common against artists. Some of these claims are legitimate complaints made against artists who do not fully understand this area of the law. Many, however, are inappropriate in that they make charges of trademark infringement in circumstances where infringement is unlikely to be found.

A little background, a trademark is defined as any word, symbol, name, device or combination of these that are 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 non-functional 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. Once you use the mark in commerce you have it for as long as you keep using it. Although registration with the US Patent and Trademark Office is not required to acquire trademark rights, federal registration provides additional benefits, and registration should be undertaken 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 such use or control such use through a license agreement. Many companies have entire departments that focus on policing and enforcing their trademark rights and as such, will assert trademark infringement every time it views one of its 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 that 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 confusion created can be that the defendant’s products are the same as that of the plaintiff, or that the defendant is somehow associated, affiliated, connected, approved, authorized or sponsored by trademark owner.

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 was federally registered, attorneys fees would also be available to a successful plaintiff. Monetary damages are also available under the Lanham Act for misdesignation of affiliation.

Determining whether an infringement has occurred when an artist incorporates a trademark into artwork requires one to view the work, to see how the mark(s) are being used, and to determine if such use is an infringing use of such mark(s). Using the example of the painting of the street scene, one can assume that the artist is not selling motorcycles, or baby strollers, or any of the products depicted in the painting. Arguably, the artist is not using the mark as a trademark as he 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 will claim that incorporating a trademark in artwork causes consumers to believe that 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 photograph, and offers them for sale at a H.O.G. Rally. In this fact scenario, certainly the trademark owner would seek to prevent the photographer from selling or displaying the photographs in this manner on the grounds that there is the potential that consumers would believe that the photographer is associated, affiliated, or connected with Harley-Davidson®, and that they have approved, authorized or sponsored the photographs. While certain fact scenarios as this one are more obvious that the artist will have a problem with the trademark owner, 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.

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: 1) his/her product or service cannot be readily identified without pointing to the registrant’s mark; 2) he/she only uses as much of the mark as is necessary to identify the goods or services; and 3) he/she does nothing with the mark to suggest that the registrant has given his approval to the defendant.

If we transfer this legalese into an art world example of the painting of the street scene, one would argue that there is no other way to create a realistic painting without using trademarks; second, that the marks are being used accurately and solely to convey information regarding the brand of the product; and 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 web sites that advise 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 will usually boil down to whether or not the art buying public is going to believe that 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 is generally 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?

Who is liable if an infringement occurs? The artist and perhaps the gallery owner and publisher. 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 may also exist if you intentionally encourage another person to violate a trademark. The important issues in determining liability for contributory trademark infringement are 1) if you are aware of the infringement, 2) if you have the ability to monitor and control the use of your product or service, and 3) you are in a position to receive some benefit from the violation.

How does one avoid an infringement claim yet still use trademarks in artworks? The easiest ways to avoid being on the receiving end of a cease and desist letter are to 1) not use trademarks in your artwork or 2) obtain permission from the trademark owner. Absent these obvious remedies, there is no absolute way to avoid receiving a cease and desist letter.

While protecting one's trademarks is a fair and legitimate goal, currently there are many entities overstepping the boundaries of legitimate claims and attempting to bully artists into compliance with their demands even when they are not based on supportable legal positions. The best remedy industry wide would be to acquiesce to valid concerns and fight the frivolous ones. Trademark owners will continue to send cease and desist letters to artists, publishers and galleries whether or not they have merit if they know that’s all it takes to stop an artist that is not paying them royalties.

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Joshua Kaufman and Marcia Auberger are partners in the law firm of Venable, Baetjer, Howard and Civiletti, LLP. While they are based in Washington, DC. Mr. Kaufman is one of the country’s foremost attorneys in the field of art and licensing law. He has published over 200 articles on various topics in the field. A large number of his articles can be read and downloaded from his web site at www.jjkaufman.com. Ms. Auberger is an experienced trademark lawyer with a large international practice.

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