Blog Series: One Man’s IP Is Another Man’s Art (Part II)

By August 25, 2014Art, Trademark

In our last post, we addressed the legal implications of using architecture or a landmark in a painting or similar artistic work.  This month, we turn to the issue of using another’s trademark in an artistic work.

First, a trademark primer: A trademark can consist of a word mark or phrase without any design elements (such as the word STARBUCKS) and can also consist of a logo or design (such as the image of Starbucks’s green “siren,” pictured below).

In the very recent case of University of Alabama Board of Trustees v. New Life Art, Inc., the University of Alabama brought a trademark infringement lawsuit against an artist who painted famous football scenes showing the school’s team, which, of course, included the school’s football uniforms, logos, and other trademarks.  The artist then reproduced his paintings as prints, calendars, mugs, and other articles.  The court stated that the First Amendment interests in artistic expression outweighed any consumer confusion that might exist from the artist’s uses, and that an “artistically expressive use of a trademark” does not violate U.S. trademark and unfair competition law “unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless it explicitly misleads as to the source or the content of the work.”  The court ultimately held that the artist’s paintings, prints, and calendars resulted in no violation of law, though it is notable that the court did not rule on whether the use of the works on commercial products (such as mugs) was permissible.

Though we would caution an artist against printing an artistic work that depicts another’s trademark on mugs, key chains, flags, and other commercial products, it seems from the court’s ruling in the University of Alabama case that so long as an artist does not use another’s trademark to indicate the source of the artist’s goods, nor suggest that his works were sponsored or produced by a particular company, such use is an artistically expressive use of a trademark and is permissible.  Keep in mind that an artist cannot use the mark to signify sponsorship or suggest that a particular company is the source of his paintings. Though these uses are likely to be considered non-infringing and are not likely to violate U.S. trademark law, it is always best to consult with an attorney in this regard.