'Arm not amused by your art!

Seeking to send a message about consumerism, Russian artist Petro Wodkins has created a website which purports to offer Armani branded nappies.

The website - www.armanirussia.ru (currently still active) - contains photographs taken by Wodkins of babies wearing Armani branded nappies, which were made by one of his friends, as well as images from Armani's actual website. Indeed, Wodkins' site very much mirrors Armani's website, which is hosted at www.armani.com/ru.

Accordingly, to set up the 'artwork', Wodkins not only registered the domain name armanirussia.ru, but downloaded features and content from Armani's actual website.

For IP lawyers, the obvious problems with this approach are immediately apparent. Wodkins is using Armani's trade mark [albeit perhaps not as a trade mark] and its copyright works without authorisation.  And Armani is not happy - although, oddly, not for those reasons.  In a statement to Yahoo! Shine, Armani said:

"Following reports of the business activities of the e-commerce website Armanirussia.ru the Armani Group wishes to emphasize its non-involvement in the initiative. The items for sale, especially in the baby section, are counterfeit, as are the photographs advertising them. [Not clear why they claim the photos are counterfeit.]

No permission was ever granted in this regard by the Armani Group, who avails exclusively of its partnership with Yoox for e-commerce purposes. Legal action for the immediate closure of the website and the re-appropriation of the domain by the Armani Group has been promptly initiated."

From Wodkins' side, he has explained his work as follows:

"I think we see things close to Armani Diapers all the time...People sacrifice and abandon what they deep down think is right, for a higher purpose, to belong and to find shelter and comfort. I'd say deep down everyone is feeling that a scarf for $1,000 is wrong, but the scarf serves a higher purpose - to give you what you feel you need...  

Mainly, I'm trying to make people see...Not necessarily what I want them to see but at least to open their eyes."

It seems that while Armani's eyes may be open, they are not liking what they see.

If you want to see the work, you may need to be quick, before Armani's lawyers shut down the site.

Source: The Huffington Post, 24 July 2013, Yahoo! Shine, 17 July 2013

"Prominence Invites Creative Comment"

Warner Bros, maker of the latest Batman film, The Dark Knight Rises, very recently defeated a trademark infringement lawsuit brought by software company, Fortres Grand.  The gravamen of the case was the movie's depiction of a fictional software product called Clean Slate that allowed characters to erase records of their criminal past.  As it would happen, Fortres Grand is the real-life maker of a software product also called Clean Slate.  Fortres Grand filed the lawsuit alleging that the movie's use of the Clean Slate name raised a likelihood of consumer confusion, the judge however disagreed, holding that consumer confusion was unlikely, and further that the movie's use of the name was fair use.

Several months earlier another film, Flight, was involved in a trademark squabble for its depiction of real-life brands without approval of the owners.  In Flight, a pilot's substance abuse problems were portrayed by using many real alcoholic beverage brands such as Budweiser, resulting in a request by Anheuser-Busch InBev, owner of the Budweiser mark, that its brand names be obscured in the film.

These two disputes seem to present a mirror-image of each other.  One in which a fictional work accidentally uses the name of a real brand, and one in which a fictional work portrays a real brand in a manner that the owner of the trademark finds objectionable.  These scenarios may fuel allegations of trademark infringement, tarnishment, false association, or product defamation, but such claims are likely to fail due to the First Amendment rights of filmmakers.  Distilled, the issue is whether trademark law gives brand owners the ability to censor creative works, and the answer is most often no.  When weighed against each other, the property right in a trademark by and large does not prevail over the First Amendment protection of artistic expression.

I can't help but wonder what it is about film that causes brand owners to object so readily, even when their trademark-related claims are weak.  Perhaps licensing and product placement have conditioned viewers to accept, or assume, that brands appear in films at the will of the brand owner.  Does this situation thus make viewers experience brands in films in a way that is more "real," (or perhaps more confusing)?

Pondering this question, I set about researching trademark disputes related to literary works, wondering when, if ever, trademark owners brought similar claims related to the content of books.  After turning over many stones, I identified many disputes related to book titles, yet was unable to find any cases truly challenging use of brands in books.  The closest case I could find related to a series of books about the "Pee Wee Scouts."  Doubleday, publisher of the books, was sued in federal court in New York for allegedly infringing the trademarks of the Boy Scouts and Girl Scouts.  Citing the title "Pee Wee Scouts" as well as certain content of the books (such as scouts using handbooks or attending national conventions), plaintiffs alleged that consumers would be confused into thinking the books were created or sponsored by plaintiffs.  The court disagreed, dismissing the case on summary judgment, a result that was resoundingly affirmed on appeal.

In a 2006 interview with the Paris Review, Stephen King spoke candidly on his reasons for very frequently using brand names in his works, even when he received literary (non-trademark related) criticism for doing so.  His answer focused heavily on creating accurate cultural references, on enhancing the image a reader may perceive while reading the book (think Jack Torrance taking all that Excedrin in The Shining).  Still these reasons seem just as viable in the context of film.  Indeed, there should be no difference.  As the court provided in the Pee Wee Scouts case, "It is at once apparent, when we deal with the content of a book or motion picture, that we deal with no ordinary subject in commerce. . . . Their importance as an organ of public opinion is not lessened by the fact that they are designed to entertain as well as to inform; . . . books and motion pictures are a constitutionally protected form of expression notwithstanding that their production, distribution and exhibition is a large-scale business conducted for private profit."  Girl Scouts of the United States v. Bantam Doubleday Dell Publishing Group, Inc., 808 F. Supp. 1112, 1120 (S.D.N.Y. 1992) (internal citations and quotations omitted).



Hat tip to Bob Cumbow and the World Trademark Review.

Banksy's legal protection

The IPKat reports here that although Bansky is relatively relaxed in respect of the use of his artwork by others he has a registered trade marks for his name.

Thus, it seems that Banksy appreciates the importance of protecting the rights in his name, albeit that it is not his real one.

Ansel Adams Print Battle Concludes

Genuine?

A trade mark dispute which has raged for almost a year between Ansel Adams’ Trust and Rick Norsigian has finally settled.

Last year, Norsigian sold 65 different prints online that he claimed were made from original Ansel Adams glass plates he purchased at a garage sale 10 years ago. The late photographer’s Trust claimed that the plates were not genuine and launched trade mark infringement proceedings against Norsigian in August 2010. According to the Bay Citizen, the Trust asserted “trade mark infringement, trade mark dilution, false advertising and false endorsement, among other charges.”

Even after the legal action commenced, Norsigian continued to sell the prints for between $1,500 and $7,500 under the Ansel Adams name.

Fake?

As part of their claim, the Adams Trust reportedly claimed that even if the prints are genuine, Norsigian was still unable to sell the prints using Adams’ name. The Trust’s lawyer reportedly said that "[the images] are not made by Ansel Adams, even if they were, they are negatives and [Norsigian] would not have the right to use [Adams'] name on any of the prints."

Perhaps a better argument would have been that making prints from the negative without owning the copyright would constitute copyright infringement – however, this would involve accepting that the prints are genuine Adams, a position that the Trust was surprisingly reluctant to accept.
The potential copyright infringement claim is particularly interesting considering that there is currently only one Adams mark on the USPTO register for ANSEL ADAMS ANSEL ADAMS GALLERY. Two marks for ANSEL ADAMS were filed on 23 August 2010 (after the suit was reportedly filed). The Trust reportedly claimed that they expected something like these allegedly fake Adams images to arise but only took registration action when it actually did.

In order to spice up the legal shenanigans, or possibly provide a bargaining chip toward negotiation, in December, Norsigian launched defamation proceedings against the Trust claiming that the “trust slandered him and engaged in a civil conspiracy that has hurt his efforts.” According to the Bay Citizen, Norsigian’s case arose from comments made by Bill Turnage, the Adams Trust’s managing trustee, who told CNN that the efforts made to authenticate the plates was the work of “a bunch of crooks” and likened it to Goebbels’ “Big Lie” technique.

Thankfully, the issue has now been amicably resolved. According to a joint statement, “Norsigian … may continue to sell negatives, prints, posters and other merchandise associated with negatives, subject to a disclaimer approved by The Trust, and provided they do so in a manner consistent with state and federal law.” Details about the settlement are confidential, however, no money appears to have exchanged hands. The legal costs of each side's litigation were absorbed by the individual parties.

Presumably Norsigian has a certain amount of time to comply with the settlement agreement – the website still contains several references to Ansel Adams, is titled the “lost negatives” and contains no obvious disclaimer.

Painting plus "suggestive word" can be a trade mark, says Swedish court

Could this be a trade mark? Yes,
if you add a "suggestive word"

The Swedish Court of Patent Appeals gave judgment recently in a case involving the use of paintings as figurative trade marks for food and beverages (PBR 08-005, 08-007, 08-050).  The trade mark applicant,  Kvibergs Marknad AB, sought to register paintings by PS Kröyer, Alexander Roslin and Gustav Klimt as trade marks.  In 2007 the Swedish Patent and Registration Office refused these applications on the basis that they were merely decorative, not distinctive, and the public would see them only as paintings, not as trade marks.

The Court of Patent Appeals agreed in principle: where a trade mark is made up of elements that are not a means of individualisation of a product, it will not be perceived as a distinctive mark - this is particularly true where an element of the mark is well known in a different context. However, one of the marks applied for consisted of what the Court called "a figurative element together with a word of a suggestive nature". This figurative mark could function as a trade mark and, therefore, the bar to registration had been overcome. The court directed that the Patent and Registration Office reassess the application in light of the court's decision.

Source: "Paintings cannot be registered as figurative trademarks" by Tom Kronhöffer and Sofia Ekdahl (MAQS Law Firm, Stockholm) in World Trademark Review

No freedom of art for witty German egg cup

Meet the eiPott. A Hamburg Appeal Court has held that use of the trade mark EIPOTT in relation to the attractive egg cup holder displayed above constituted an infringement of Articles 9(1)(b) and (c) of the Community Trade Mark Regulation. The fact that the word eiPott ("egg pot" in English) sounds uncannily like "iPod" didn't help.

Writes Anna Sophie Steinmeister, (Bardehle Pagenberg, Munich), in her note "'Humorous' mark not protected by freedom of art", published online on World Trademark Review here:

"The decision is also significant in that it establishes general rules on the issue of whether the user’s right to freedom of art may prevent a finding of trademark infringement. In this respect, the decision shows that use of a trademark in a witty and humorous manner will not imply that there is no trademark infringement if the mark is used for the main purpose of exploiting its distinctiveness".