The Urban Artist’s Guide To Intellectual Property
Disclaimer: This article is an informative guide for artists to conduct preliminary research pertaining to their legal rights. DO NOT TAKE THIS ARTICLE AS SUBSTITUTE FOR LEGAL COUNSEL. Although any information on the current state of the law is thoroughly researched it is intended as information, not advice. Secondly, this article is tailored to the 9th circuit (Montana, Idaho, Oregon, Washington, Alaska, Nevada, California, Arizona, and Hawaii). Although the principles of other circuits may be similar, the information given is specifically tailored to aforementioned states.
Issues concerning intellectual property, criminality, and the moral rights of artists continue to arise in the urban art movement. This article is an attempt to break down such complicated legal concepts, and provide a framework by which artists and creative professionals can begin to understand their legal rights and limitations.
To reiterate the disclaimer above, this article should not be taken as either legal advice or a complete recitation of any the legal concepts of trademarks, copyright, and publicity rights. Conversely, any artist utilizing the information herein should take it as a broad explanation of the rights and concepts that typically apply to artwork in general.
The modern urban artist relies on trademarks more than any other artistic movement in history. The use of symbols or acronyms is commonly used in the urban art scene, due to the artists’ need to convey authorship in an anonymous and unique manner. A symbol or name can quickly convey who created the work, a necessity in a world where street art is commonly destroyed immediately after its creation.
Many of the images used by artists to signal authorship of their work are protected by copyright, which will be discussed below. However, many pseudonyms and symbols used by artists may also receive trademark protection. Trademarks protect different interests than copyrights, and require different formalities to obtain such protection. The arena of trademark law is dense and diverse; here we will cover how it relates specifically to uses by modern urban artists.
What is a Trademark?
Essentially, a trademark is a word, symbol, or combination thereof that a person or entity utilizes as a means to identify or distinguish their goods or services.[i] In other words, it lets the consumer know that a certain product or piece of artwork came from a particular source or artist. The reason the law affords such protection is to both to reward the labor spent generating goodwill associated with the mark, and to protect the consuming public against deception.[ii]
In other words, if an artist spends years creating a body of recognized and valuable work under a pseudonym, it would be unfair for another artist to use the same pseudonym to profit off work not created by the original artist. Similarly, such a practice would deceive the purchasers of the second artist’s work who relied on the famous pseudonym in making their purchase decision. These public policy goals should be kept in mind, as they serve as the foundation for the rules discussed below.
Generally, the requirements for trademark protection include distinctiveness and use of the mark in commerce.[iii] In artwork, the relevant categories include “design marks” and “word marks” (although sounds and even scents may qualify for protection). The most common example of a trademark in modern urban art world is Shepard Fairey’s “Obey Icon” This mark contains both the word mark “Obey” and the design mark of the image itself (a simplistic rendition of cult wrestler “Andre the Giant”).
Finally, it is important to note that trademarks may be protected on a statewide level through statutes and laws created by judicial systems, or on a national level though the Lanham Act. The requirements for protection vary from state to state, and the following represents the general framework by which trademark rights are granted on a federal level under the Lanham Act.
Courts have set out different levels of “distinctiveness” in order to analyze whether a mark can immediately receive protection.[iv] “Arbitrary” marks are words that have a common English meaning, but do not relate to the product that it identifies (i.e “Obey”). “Fanciful” marks convey no meaning at all, other than the trademark meaning (i.e. “Banksy”). Both of these types of marks typically receive protection immediately upon use.[v]
On the other hand, words that are “generic” or “descriptive” will not receive protection.[vi] These marks describe the product or service that they relate to. For example, if Shepard Fairey chose to use the term “propaganda art” instead of “obey” he would likely not receive trademark protection. “Propaganda art” describes his artwork, and would likely be found to be “descriptive.”[vii]
However, descriptive or generic marks can also receive protection if they have acquired “secondary meaning.” For a mark to acquire secondary meaning, the public must have been exposed to the mark enough to identify it as an indicator of source.[viii] Let’s consider British street artist Dean Stockton’s use of the pseudonym “D*Face.”
A portion of Stockton’s work consists of him “defacing” famous artistic works. While the mark “DFace” may be descriptive of the art itself, it has acquired secondary meaning though Stockton’s consistent use of the pseudonym. In other words, when a person sees the term “DFace” on a painting, they don’t identify it as descriptive of the subject matter, but instead identify it as a work of Dean Stockton.
Like artistic pseudonyms, design elements can be used to immediately signal the source of a specific work. Notably, pop superstar “KAWS” uses crosses on his character’s eyes in the majority of his paintings, and previously mentioned D*Face uses wings exploding out of his character’s heads. Such design elements are never inherently distinctive and must acquire secondary meaning in order to receive protection. Furthermore, such designs must not be “aesthetically functional.”[ix]
Think about it like this: if the design serves a non-trademark function it will not receive trademark protection. Courts want to make sure that providing protection to a design element will not prevent other artists from using a similar technique. In other words, it would hinder competition (and creativity) to allow only one artist to depict wings on a drawing. For example, let’s compare the design marks of D*Face and KAWS.
First, Dface’s wings are seen in the majority of his work and serves as a signal to the viewer that the work is his. Due to his popularity, the wings themselves have likely acquired secondary meaning. But, do they serve a functional purpose? Likely not. Wings protruding out of character’s heads are essentially meaningless, other then to signify Dface as the source of the work. Further, due to the unique design, size, and placement, protection of this mark would not hinder other artists from using wings in their artwork.
Conversely, the crosses through KAWS’s character’s eyes serve a function – to indicate the character is dead. From Disney to Nickelodeon, this design is commonly used to indicate the death of a cartoon character. Thus, these crosses serve a function other then signaling KAWS as the source of the artwork. Even though KAWS is extremely renowned and could evidence a vast amount of recognition or “secondary meaning,” he would be unable to protect this design element due to its functionality.
Use in Commerce
The second requirement for federal trademark protection is that the mark must be “used in commerce.” In other words, the word or design indicating the artist as the source of the work must be affixed to goods or accompanying packing material that are sold in interstate commerce.[x] Goods or artistic services that are strictly sold intrastate may qualify for state protection, and such requirements vary from state to state.
Without actual use in commerce, an artist may still reserve their desired trademark by filing an “intent to use” application with the US Patent and Trademark Office (“USPTO”). This system allows people to notify the USTPO that they intent to use a specific mark, although the formal requirements discussed above have not been satisfied.
Registering a Mark with the USPTO
While not necessary in some situations, registering a mark with the USPTO provides the owner with a number of benefits. When a mark is registered with the USPTO it provides a warning to others that the mark is in use by a specific owner, and provides the owner with incontestable evidence that they were the first one to use the mark if their ownership is challenged down the line.
Trademark registration is a fairly straightforward process, but nonetheless should always be performed by legal counsel. First, when deciding on a mark to use, one should always perform a detailed search via the Trademark Electronic Search System (“TESS”) on the USPTO’s website. This search will bring up any current or abandoned marks with the same or similar names. While a TESS search is a good first step, its always prudent to order an in-depth trademark search report before proceeding with a trademark application.
Once a mark is cleared, and assuming it satisfies the requirements discussed above, a trademark application can be filed through the USPTO’s website. Once the application is submitted, it will be reviewed by the USPTO and published in their “Gazette.” This publication allows anyone who believes that the new mark will damage or infringe upon his or her mark to formally oppose its registration. Assuming no such opposition is filed, the mark will mature to registration and the owner will be issued a certificate within approximately three months after the date of publication
Copyright offers broad protection to artists at the moment they create their work. Unlike trademarks, the goals of copyright protection center on incentivizing artistic creation.[xi] In essence, without copyright protection, artists of any medium would be unable to make a living through the process of artistic creation.
What is Copyright?
In order to acquire copyright protection, a work must be original and fixed in a tangible medium of expression.[xii] First, “originality” means that the work owes its origin to its author, and is not a copy of a previously existing work. Secondly, “fixed” requires that the artwork is literally stable enough to be perceived or reproduced.[xiii] Contrary to popular myths, copyright protection does not require any bureaucratic paperwork or a little “©” symbol next to an artistic work. The rights discussed below resign with the author of the work for their lifetime plus an additional 70 years.[xiv]
For example, let’s consider Banky’s iconic “anarchy rat” stencil. The image consists of a smirking rat holding a placard featuring an elongated “A” with a circle around it. First, the work became “fixed” in the wall (“a tangible medium”) the moment Banksy sprayed paint over his stencil. A viewer can perceive and enjoy this clever little creature, thus satisfying the fixation requirement. Secondly, the work as a whole is “original.” In other words, Banksy created the piece himself, and did not copy the expression of another artist.
Conversely, Banksy did not create the “anarchy” symbol embodied in the rat’s picket sign. In legal terms, this icon of the punk rock movement is not “original” to Banksy. Thus, Banksy would not own the copyright in this symbol. However, Banksy does own the copyright in the portrayal of the rat and anarchy sign together in the original and iconic work of art. Finally, Banksy’s ownership of the copyright to his work survives its destruction or sale. Thus, legally, Banksy alone has the right to produce or sell copies of this anarchistic animal, regardless if it is destroyed, removed, or sold.
What Types of Work does Copyright Protect?
17 U.S.C §102 lays out several categories of work protected under copyright, which include: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works.
As explained in the previous section, such protection only applies to works in these sections that are “fixed in a tangible medium of expression.” Furthermore, such protection only extends to the expression of the work, not the idea contained in such expression.[xv] Using Banksy’s anarchy rat as an example, the protection of this image as “pictorial” work extends only to the exact expression of this image. In other words, Banksy would have no right to protect the idea of a mischievous rat holding a picket sign, only the right to the exact image he created. The expression would pertain to the exact lines and shading of the image and the colors or lack there of. In other words, another artist would be free to use a completely original expression of a rat holding a placard containing the anarchy symbol. However, as we will see below, the courts have created a specific exception to this rule to allow artists to expand upon existing works.
Do Illegal Works Qualify for Copyright Protection?
Intuitively, it would seem that the law would strip illegally created works of art from copyright protection. However, copyright law is neutral towards the legality of how a work was created. Arguably, Banksy would still receive copyright protection if he sprayed one of his rat across the White House itself. Instead, we choose to punish such mischievous deeds through both civil and criminal law. In California, one of Banky’s stencils could land him in jail for up to a year or up to a $50,000 fine.[xvi] One reason for this legal dichotomy lies within the nature of what copyright actually protects. See, Banksy owns the copyright only in the expression of his art, but is not entitled to the physical copy of such expression. The lucky owner of that defaced cement wall still retains the property right over their wall, and can freely do with it as they please.
When viewed in context, it makes sense that a property owner can freely dispose of or sell their defaced property. They neither asked for, nor sanctioned, Banksy’s activity, and thus should not have to restrict their rights based on his illegal actions.
What Rights Does Copyright Protect?
17 U.S.C §106 lays out the specific bundle of rights that the owner of any copyrighted work exclusively owns. These include: (1) the right of reproduction; (2) the right to produce derivatives; (3) the right of distribution; (4) the right of public performance; and (5) the right to publicly display the work. When someone other than the copyright owner exercises any of the aforementioned rights without permission they may be infringing on the copyright of the owner. In regards to art the main rights include reproduction, distribution, and display. We will cover each one of these in turn.
First, the right of reproduction covers the reproduction of the work through subsequent “fixations” of the work. In regards to artwork this would cover the physical reproduction of a copyrighted image onto a poster or print. Further, even the reproduction of a portion of the copyrighted work may qualify under this right. In fact, even if the reproduction was not created for nefarious financial gain it may still infringe upon the reproduction right of a copyright owner (although they may be covered under a separate exception or defense).[xvii]
The right of distribution often goes hand in hand with reproduction, and it covers the transfer of copies of copyrighted material to the public. So in the event that a manufacturer produced posters of a copyrighted image and a website hosted and sold such poster, the manufacture would have violated the right of reproduction, while the website would be separately liable under the violation of the right of distribution.[xviii] However, a major limitation on this right is the “first sale doctrine.” This rule provides that once a copyrighted work is lawfully sold, the purchaser is then free to resell the work.[xix] In essence this allows for the secondary market of both artwork and other copyrighted materials such as movies and literature.
Finally, the right of public display covers the right to display artwork at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered, or the transmission of the work to the public through a mechanical device.[xx] That is a lofty definition, so lets start with the instances in which this right is not invoked. First, it does not apply to private displays, such as hanging a piece of artwork or watching a movie in the comfort of your own home. Secondly, as discussed above, the “first sale doctrine” also applies here, so galleries or museums are allowed to publicly display artwork, which was legally purchased. On the other hand, an artist would have the exclusive right to display their work in a place open to the public. Moreover, they would retain the right to have their work transmitted to the public through a mechanical device such as a computer.
In order to see these rights in action let’s consider one of the most famous copyright lawsuits of the decade: Associated Press v. Shepard Fairey. The case revolved around Shepard’s use of one of the Associated Press’s (“AP”) photographs as the source material for his “Hope” poster. If Shepard was found to have violated the AP’s exclusive copyrights, the case eventually settled without judgment, such a finding would involve all of the rights discussed above. First, Shepard reproduced the copyrighted image onto posters; then, he subsequently distributed such posters to purchasers and campaign headquarters; and finally, he displayed the copyrighted image both on his website and in the public on numerous occasions. However, as we will see there is a legal carve out that Shepard argued in defense of his actions.
You may be wondering: how are artists able to pay tribute to or parody copyrighted material without infringing on the rights discussed above? The answer is the Fair Use Doctrine. This affirmative defense to a claim of copyright infringement is essentially the legal recognition that artists may need to borrow the copyrighted material of others in an effort to comment upon, expand, or parody the work of another.[xxi] Throughout the development of this area of the law, courts have recognized that such use is essential to first amendment rights of free speech, and should be allowed in certain instances.
The defense of fair use is broken up into four “factors.” Factors are essentially tests the court uses to weigh whether a work of art is in fact a “fair use” of the previous material. Through careful planning an artist can convey an artistic message while stacking these factors in their favor. This section is specifically tailored to applicable to works of “parody.” A parody must comment on the underlying work that is used. For example, if an artist wanted to comment on the Disney Corporation, they may be allowed to incorporate an image of Mickey Mouse. However, as we will see, the same image of Mickey Mouse may not be allowed to comment on US imperialism or greed, even though Mickey has become an icon for such things in the artistic community.
Factor 1: The Purpose and Character of the Work
This factor considers whether an artist plans on profiting from their artwork, and whether the artwork is “transformative.” In other words, does the artwork add something new that alters the first with a different purpose or message? Courts consider this to be the most important factor in the fair use analysis. Further, the more transformative a work is, the less the other factors will matter in the analysis.
If a piece of artwork was created for a non-commercial purpose such as charity or personal use then courts tend to weigh this factor in the artist’s favor. However, if the artist plans on, or has, sold or licensed the work in any fashion, courts require them to show that the work is “transformative.”
In order for the work to be considered “transformative” the art must reasonably be perceived as commenting on the original or criticizing it, to some degree.[xxii] Tom Forsythe’s “Baked Barbies” photograph is a perfect example of this principle. This photograph depicts a number of naked Barbie Dolls roasting in an oven. This provocative image has been interpreted as an attack on Barbie’s influence on gender stereotypes. The court agreed, finding that Forsythe’s use of lighting, background, and props presents the viewer with a different association and context than normally occupies the iconic figure.[xxiii] However, the work does not need to be as blatant as a Barbie Casserole. If an artist wants to create a more nuanced criticism, they may have to incorporate less of the underlying work.
Factor 2: Is the Work Artistic?
This factor examines whether the underlying work is “close to the core of intended copyright protection”?[xxiv] In other words, is the underlying work something that traditionally would be protected by copyright? Things that are traditionally protected by copyright include music, art, literature, and cinema. This is a difficult factor to win because artists will usually incorporate other artistic expression into their work. Luckily, this factor holds the least amount of weight.
Factor 3: The Amount of Overlying Work that Was Used
Artists are allowed to borrow enough from the original work in order to identify it as the subject of the parody.[xxv] A court will have discretion to identify whether the amount of the copyrighted work used falls within the allowed amount. In making this determination, courts will consider the “purpose” of the artwork. In other words, if the purpose of the work is clearly to criticize the underlying image, the artist may be allowed to copy more than needed to simply identify the subject of parody. For example, if an artist wanted to comment on the greed of the Disney Corporation, they would likely be allowed to illustrate Mickey Mouse as he appears in a Disney cartoon and add their own expression to the illustration. However, if they wanted to comment on American greed in general, they may not be allowed to copy Mickey Mouse verbatim as he appears in a Disney cartoon. Although Mickey Mouse is arguably a symbol of capitalism, such a parody does not take direct aim at Mickey or the Disney Corporation.
Factor 4: The Effect on The Original’s Market Value
This final factor evaluates the artwork’s effect on the “potential market value” of the original work. In other words, does the art provide a potential alternative to the original work?[xxvi] Luckily, if the criticism is clear, courts tend not to consider such works a threat to the market value of the original.
Let us use Mickey again as an explanation of this factor. Say Disney releases an art print of Mickey Mouse and an artist wants to comment on the Disney Corporation by using Mickey’s image from the released print. The artist then incorporates the image of Mickey with a nuclear bomb explosion in the background and dollar signs in place of Mickey’s eyes. A person who wants to purchase the heartwarming print of Mickey Mouse would likely not purchase the intensely anti-Disney print instead, due to the drastic differences in the images. Alternatively, if the artist simply took the image of Mickey and changed the background color, a person who sought to buy the original Mickey print may see the art as an alternative if they preferred the background choice to the original print.
Finally, the use of copyrighted material from a medium different from visual art will likely not affect the value of the original. For example, if an artist wanted to make an illustration from the lyrics of a popular song, courts are likely to find that the artwork will not hurt the market value for the song. The song and art fulfill two very different consumer needs.
While not technically “intellectual property,” publicity rights play a major role in artistic depictions of famous individuals. In essence, one has the right of publicity in the depiction of their likeness. This includes their face, body, voice, or any other identifying attributes associated with an individual. Much like the policy goals behind trademark protection, publicity rights are a legal recognition that people should be rewarded for the goodwill associated with ones image or likeness. Such rights come into play most often in advertising. For example, lets consider David Beckham’s H&M clothing campaign. In order to use the pictures of Beckham, H&M would first need to license the photographer’s copyright in the photo in order to reproduce, display, and distribute such pictures. Furthermore, they must also compensate Beckham for his publicity rights in order to use his likeness. This doctrine makes economic sense; Beckham clear adds credibility and value to H&M’s advertising, and he should be compensated for such.
Specifically, California law prohibits the knowing use of another’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent.[xxvii] In California, this rule applies to deceased persons, and allows their estate to enforce such rights. The main exceptions include use for in connection with any news, public affairs, or sports broadcast or account, or any political campaign.[xxviii] Furthermore, the right may be further limited by the First Amendment.
First amendment protection arises in works where the publicity used is incidental to a protected use such as news reporting or commentary. Typically, this would apply to use of a photograph in a news article. But, as we saw in the “fair use” section above, artistic works can provide a commentary worthy of First Amendment protection. Unsurprisingly, courts will apply the “transformative” test from the “fair use” analysis to assess whether the work was significantly transformative enough to qualify as protected speech.[xxix]
Most famously, the California Supreme Court applied this test to the sale of silkscreened tee shirts and prints featuring the images of the “Three Stooges.” The court unequivocally set forth the standard, which is weather; the artwork “adds significant creative elements so as to be transformed into something more than a mere celebrity likeness or imitation.”[xxx] The court found that the “artist’s skill and talent is manifestly subordinated to the overall goal of creating a conventional portrait of a celebrity so as to commercially exploit his or her fame.”[xxxi] Alternatively, the court compared these examples to the famous portraits of Andy Warhol (Marilyn, Mao, ect). Through the use of distortion and manipulation of context, “Warhol was able to convey a message that went beyond the commercial exploitation of celebrity images and became a form of ironic social comment on the dehumanization of celebrity itself.”[xxxii]
The Three Stooges vs. Warhol examples are very telling of when depiction of a celebrity will be allowed. Is the depiction an attempt to make a profit on a celebrity’s image, or an artistic rendition that provides commentary beyond a rendition of the likeness? This is often a difficult line to draw, and the more the likeness is changed or subverted, and the more expression that is added, will serve any artist to weigh the scales in their favor. Let’s consider D*face’s popular Warhol homage “Pop Tart.” The image features the Marilyn Monroe image popularized by Warhol, but decapitated with half the face melted off exposing a skull underneath. While it is arguable that some of the image’s value comes from Monroe’s likeness, the image clearly evidences a significant commentary on both the work of Andy Warhol and the darker side of celebrity
The information contained in this article is a simple overview of trademark, copyright, and publicity rights. Intellectual property is a very complex area of the law, and for many lawyers and artists it takes years of practical experience to fully comprehend. That being said, it is also an enormously important area. Knowledge of the aforementioned concepts can safeguard an artist from expensive lawsuits and stack the cards in their favor to adequately defend their intellectual property rights.
[i] Restatement (Third) of Unfair Competition § 9 (1995)
[ii] Stork Restaurant v. Sahati, 166 F.2d 348 (9th Cir. 1948)
[iii] Restatement (Third) of Unfair Competition § 18 (1995)
[iv] Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976)
[vi] Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4 (2d Cir. 1976)
[viii] Restatement (Third) of Unfair Competition § 13 (1995)
[ix] Restatement (Third) of Unfair Competition § 16 (1995).
[x] Restatement (Third) of Unfair Competition § 18 (1995).
[xi] United States Constitution, Article 1 section 8
[xii] 17 U.S.C. § 102
[xiii] 17 U.S.C. § 101
[xiv] 17 U.S.C. § 302
[xv] . 17 U.S.C §102
[xvi] . Cal. Pen. Code § 594
[xix] 17 U.S.C §109
[xx] 17 U.S.C §106
[xxi] 17 U.S.C §107
[xxii] Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 800 (9th Cir. 2003)
[xxiii] Id. at 806.
[xxiv] Id. at 803
[xxvi] Id. at 804
[xxvii] Cal. Civ. Code § 3344
[xxix] Comedy III Productions, Inc. v. Gary Saderup, Inc., 25 Cal. 4th 387, 404 (2001).
[xxx] Id. at 391
[xxxi] Id. at 409
[xxxii] Id. at 408-409