In recent years, there have been a number of cases brought in federal courts regarding the unauthorized use of graffiti art in advertising. In the 2014 case, Anasagasti v. American Eagle Outfiters, Inc., well-known Miami street artist David Anasagasti sued American Eagle for copyright infringement alleging unauthorized use of his signature “droopy eyes” in their global store displays and website. Italian brand Robert Cavalli was also sued in 2014 by Californian graffiti artists for using their work on the Just Cavalli clothing line. In 2018, Jason Williams, a Brooklyn moralist, sent a cease-and-desist letter to H&M for using his moral in their ads. H&M filed suit (which was later withdrawn) asking the court to declare that Jason Williams had no copyright to assert because his art was a criminal act. More recently, the Southern District of New York dismissed Gayle’s alleged copyright infringement case concerning a shot of graffiti on a dumpster that appeared in the HBO series Vinyl. The court ruled that the graffiti was never fully visible, let along legible and was there for de minimus.
When I first discovered this issue, I immediately thought of the trademark law implications that arise from these situations and whether the artists are successful – or not – in bringing trademark claims as well. I noticed that most of these cases have been brought under copyright claims; nonetheless, street artists are also filing claims under §43(a) of the Lanham Act for trademark infringement. However, courts are reluctant to grant trademark protection since expressive works are traditionally protected under copyright law. Most street artists, as opposed to creators of “fine art,” use marks in a trademark manner to build reputations and identify the source of their works. However, their claims of trademark infringement are often dismissed.
As I continued to research the impact of trademark law on the protection of graffiti art, I came across 2017 Boston College Law Review article “Get Your Own Street Cred: An Argument for Trademark Protection for Street Art” by Danielle Crinnion. In the article, Crinnion provides the transformative history of graffiti to “street art,” while also proposing three possible alternative interpretation of trademark law that should be adopted to provide street artists with protection against potential infringement.
Crinnion explains the evolution of graffiti culture’s association with a wide spectrum of positive, but mostly negative imagery, such as drugs, crime, music, and gangs. Street art, however, is becoming an accepted form of art as its departure from negative associations has dramatically increased. Furthermore, Crinnion explains street art’s deep roots “in the culture of tagging, in which a writer’s status within the tagging community depends on the repetition of their tag on public walls.” This manner of artistic branding establishes that street art is “uniquely situated for trademark protection.” However, many street artists veer away from commercialization and avoid the confines of galleries and museums. Thus, the connection to non-commercialization creates challenges for street artists claiming trademark rights under §43(a) of the Lanham Act, which requires that marks are used in commerce in connection with offered goods/services to qualify for federal protection against infringement. However, street art’s ties to the art world and increased commercial value has made it more attractive to companies who want to use graffiti and the artist’s reputation to increase their own street cred. Crinnion expresses that retailers sometimes seek approval from artists to use their marks or enter into collaborations, but there are times when brands use street art without consent. It is in situations like this where street artists fight back to protect their intellectual rights against infringing brands and are assisting in this battle by the courts. For example, the court in Craiglist Inc. v. 3Taps Inc. discussed the uniqueness of street art compared to other fine art forms. Additionally, the court found that both copyright and trademark violations may exist simultaneously when the use of a mark causes customers confusion and diminishes the mark’s value. In the same case involving the Just Cavalli clothing line (Williams v. Cavalli), the court held that the street artists had a valid claim of trademark infringement against Cavalli for misrepresenting to the public that its collection was being produced by or in association with the artists. However, Crinnion cites several cases where street artists have not been able to claim use in commerce through connections with collaborations and other avenues, resulting in the dismissal of their claims.
In the remainder of her article, Crinnion explains that the solution to this problem of federal trademark protection for street artists in centered around an “[re]interpretation of trademark law that protects consumers from market confusion and protects artists from the misuse of their marks.” First, Crinnion examines the increased popularity of street art and its connection to infringement for likelihood of confusion under §43(a) of the Lanham Act. Under the current case law, Crinnion states, graffiti writers and street artists who do not commercialize through the sale of merchandise featuring their mark as a source identifier or by participating in collaborations with commercial brands are left without trademark protection. Thus, Crinnion proposes that the requirement should be interpreted broadly to allow street artists the opportunity to bring trademark infringement claims against infringing retailers based on non-commercialized street art’s commercial value and heightened recognition of the artists (or street art itself) by the public. Moreover, its growing popularity increases the likelihood that a consumer will assume that a retailer’s use of a street artist’s signature artistic element indicates some sort of collaboration, and ultimately public confusion – the exact misperception the Lanham Act was enacted to mitigate.
Secondly, Crinnion relied on the 2001 Eleventh Circuit case Planetary Motion, Inc. v. Techsplosion, Inc. to examine the alternative standard to distinguish street art from other forms of art. Crinnion suggested that classifying street art as a charitable activity – distinguishable from other visual art forms for its aim to beautify or provide a free product to the community – would make it eligible for protection. Furthermore, Crinnion states that street art is additionally distinguishable because “stylistic elements do not merely function as the work itself because they also serve as marketing tools.” Street artists rely on repetitive stylistic elements to establish their brand and acquire respect and notability in their community and beyond. Moreover, Crinnion recognizes the distinct rights created by copyright and trademark law that “warrant simultaneous protection” based on the situation; however, she states that copyright law may simply protect a creative work. It does not protect a street artist’s right to control the goodwill surrounding mark – a distinct right that leads to distinct damage remedies street artists should be entitled.
Lastly, Crinnion states that the “use in commerce” requirement under §43(a) should be supplemented by Congress with a fame requirement similar to the rules of §2(a) that protect famous individuals from marks registered by third parties that falsely suggest connections to that person. Moreover, Crinnion proposes that street artists should not be required to prove commercialization to be eligible for trademark protection under §43(a). As Crinnion explains, a narrow reading of the Commerce Clause requires non-commercial activity to have a direct effect on the economy in order to be regulated by Congress. Under these standard, Crinnion states, it is difficult for non-commercial street art to satisfy this requirement. On the other hand, Crinnion also recognizes the challenge in proving the use of a street artist’s signature, signature style, or pseudonym in a type of commerce that lawfully regulated under the Commerce Clause. Nonetheless, Crinnion suggests that a broad interpretation of the Commerce Clause would allow street art to qualify as “use in commerce” since it is an activity that substantially affects commerce.
What do you think about Crinnion’s suggestions? Do you think they will provide artists with a better chance to file successful claims of trademark infringement? Are there any other suggestions would effectuate such a goal? For access to Danielle Crinnion’s Boston College Law Review article, please visit: https://lawdigitalcommons.bc.edu/cgi/viewcontent.cgi?article=3552&context=bclr.