A few years ago, I spoke to an artist whose work was displayed in a gallery in the French Quarter on Royal Street. When I entered the gallery, I immediately noticed that many of the artist’s paintings bore a striking similarity to paintings I had seen not an hour before, around Jackson Square, just a few blocks away. All of the artwork expressed a similar visual theme. I commented on the similarity to the artist, who bemoaned that he created the theme paintings and the others, on Jackson Square, “copied” it. Now, the painters around Jackson Square did not exactly copy any of the artist’s paintings; none of them were attributed to the artist, nor were they pastiches of the artist’s theme. Rather, the Jackson Square paintings looked as if their painters tried to exploit the artist’s theme. Did this artist have a legal leg to stand on against such exploitation? Yes, but not under copyright law as some might first expect. Instead, the artist may have been able to successfully sue under a trademark cause of action called “passing off.”
First, a short aside. The Louisiana Unfair Trade Practices Act is the state law in Louisiana for dealing with (drum roll, please) unfair trade practices. In SDT Industries, Inc. v. Leeper the Louisiana Court of Appeals for the Second Circuit said, “[a] practice is unfair when it offends public policy and when the practice is immoral, unethical, oppressive, unscrupulous, or substantially injurious to consumers.” 793 So.2d 327 at 333. Furthermore, the defendant must specifically intend to harm the competition by his or her acts. Id. What does this mean for our artist? Well, the artist will not win against the Jackson Square painters unless he can prove that intent. He cannot easily prove it, though, because the artist’s works sell for thousands of dollars and the Jackson Square paintings sell for much, much less. Because of the disparity in price, a court might find that the artist does not really compete with the Jackson Square painters and thus inferentially conclude that the painters lack the requisite intent to harm competition. So, Louisiana law is out as a legal theory for the artist in this particular case.
Alright, now to the meaty stuff. Let’s get a bit specific: what I am discussing here (repeated visual art themes) is not really a trademark, it’s actually called trade dress and while there are differences between the two, for the purposes of this particular issue, they might as well be one in the same.
The Lanham Act, the source of federal trademark law, is more generous in its protection than the Louisiana Unfair Trade Practices Act. Under Section 43 (a) of the Lanham Act, a party “passes off” their own work as produced, affiliated, connected, associated, sponsored, or approved by a competitor when it uses the competitor’s trademark or trade dress in a manner likely to confuse consumers about the source, affiliation, &c., of the goods. Thus the competitor (our artist) must prove two elements: 1) the competitor has a valid trademark and 2) the likelihood of confusion. The Fifth Circuit has established a valid trademark exists when the mark is sufficiently distinctive or has secondary meaning and is nonfunctional. Sicilia De R. Biebow & Co. v. Cox, 732 F.2d 417 at 425 (1984). This article is too short to discuss distinctiveness and secondary meaning, so I will just say that the elements in the paintings displayed sufficient creativity and uniqueness that made the theme instantly recognizable, as I described by my reaction in the introduction.
The question of the extent to which art is functional or non-functional is one not well answered by case law. Certainly, it seems odd to talk about functional art. After all, as Oscar Wilde amusingly noted, “all art is quite useless.” Nevertheless, courts occasionally try to distinguish between non-functioning aesthetics and functional aesthetics. Please excuse me while I nerd out a bit about the law. Aesthetics have functionality when the commercial success of the product relies on the aesthetics and the aesthetics do identify the source of the product. The definable aesthetic theme that predominates the Royal Street artist’s and Jackson Square painter’s works is obviously critical to its commercial success, the theme is why people buy the paintings but it’s not as clear that the consumers identify the artist by the theme (although they certainly could). Let’s look at how federal courts come down on this doctrine. The Ninth Circuit, which covers much of the Western US, and the Second Circuit, which covers New York and a few other nearby states, both accept the doctrine of aesthetic functionality, at least to some degree, and use it as an affirmative defense (i.e., once a party is accused of infringing, they can argue the mark is not protectable because the art is functional). Christian Louboutin v. Yves Saint Laurent America Holding Inc., 696 F.3d 206 (2nd Cir. 2012); Fleisher Studios Inc. v. A.V.E.L.A. Inc., 636 F.3d 1115 (9th Cir. 2011). The Supreme Court seems open to the possibility of adopting aesthetic functionality, but has not yet squarely evaluated it. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001). For the time being, the Fifth Circuit, which covers Texas, Louisiana, and Mississippi, has not recognized the aesthetic functionality doctrine. See Board of Supervisors for La. State v. Smack Apparel, 550 F.3d 465 at 487-88 (5th Cir. 2008). However, it is possible that one day, with the right case, the Fifth Circuit will change or be forced to change the law to recognize aesthetic functionality. The theme in our artist’s painting, by the court’s refusal to recognize aesthetic functionality, has no function and so artist has a valid trade dress in his theme because the theme also exhibits distinctiveness.
Ok, so he has a valid trade dress. Now what? Unlike copyright, where the copyright owner has monopolizes the work, trademark really only matters in as much as the mark is used in trade. “Use it or lose it,” could be a guiding motto for trademark. In addition to merely using one’s mark, one also needs to police it: look for potential infringers and stop them. If the owner of a mark does not police their mark, they risk losing it as the mark becomes diluted through proliferation. So the artist needs to police his mark.
The obvious way to police the mark is to sue potential infringers. This isn’t just about suing for money because odds are, the Jackson Square painters don’t have much money to win. This is about the artist protecting his theme so that when anyone sees that theme, they know who the artist is as opposed to going, “ah, here’s another guy doing the same thing.” This is also about encouraging artistic creativity. This kind of trademark enforcement encourages art rather than stifles it because it presses others to become more creative, to come up with their own theme or their own way of presenting it.
Practically speaking, suing everyone is unnecessary, which is good for the artist because lawsuits are expensive. A simple cease and desist letter could be enough to get many infringers to stop. More stubborn cases could require a lawsuit but even then, most lawsuits settle, especially when the cost of pursuing it is high and the probable outcome is relatively clear.
So what does happen when you exploit an artist's theme? The artist should recognize the need to protect his theme from dilution. The artist should police his theme and look for infringers. The artist should take action against potential infringers. The artist should enjoy the fruits of his own labor and creativity.