Trade Dress Is Not a Garment How To Protect Your Name, Work’s Style

June 2023, by Daniel Grant

© [lisima] / Adobe Stock 

When is imitation not flattery? It’s when the purpose is to confuse the public and undermine a better-known artist’s market. 

Some legal decisions have established a relatively new area of art law, protecting the trademark qualities of artists’ work, such as the style and overall impression of the art. 

Trademark law is usually associated with manufacturing, protecting a company’s logo, or other distinct marks. It has been applied to the arts as rights of publicity, such as the face, name, signature, or endorsement of the artist. 

Legal judgments have also extended trademark protection to “words, symbols, collections of colors, and designs.” Trademark infringement is different than copyright infringement, as the artwork is not copied exactly or copied with only minor changes made (those are copyright issues); it refers to aping significant elements of another artist’s unique style. 

Artistic style itself is not copyrightable — neither are perspective, color, medium, use of light, and subject matter. But the “feel” of the work is subject to trademark (in legal parlance, trade dress) protections under the Lanham Act. 

That federal statute, a law governing unfair competition, prohibits one individual or company from offering products or services that are confusingly like those of a competitor. 

There is no fixed point at which a person can claim one artwork has been copied from another, and some judge or arbitrator must look at the two pieces for similarities that go beyond influence and conventions of the genre. In legal cases that have been decided, compelling evidence has revealed specific intent to imitate another’s work. 

In the visual arts, there have been two decisions. The first, in 1992, involved Israeli artist Itzchak Tarkay, whose painting was found to have been copied stylistically and thematically by another artist, Patricia Govezensky, at the bidding of an art distribution company, Simcha International, Inc. 

“At the trial,” said Sondra Harris, one of the attorneys representing Tarkay, “defendant’s counsel mixed up works by Tarkay and Govezensky. They were that close.” There were no awards or damages assigned, she added, as “the company basically went out of business and, when Govezensky went back to painting, her work was in a completely different style.” 

The second case, decided in 1994, concluded Florida art dealer Philip Wasserman persuaded Florida sculptor Dwight Conley to create works in the unique “fragmentation” style of Paul Wegner. In this case, all waxes and molds for the offending Conley sculptures were ordered destroyed, and the completed pieces were turned over to Wegner, as well as payment of costs, damages, and attorneys’ fees. 

Despite the degree to which artists attempt to find a unique mode of expression, similarities between artists’ work, especially those working within the same genre or even at the same time, are bound to occur. “Consumer confusion” may arise when similar-looking works are exhibited to collectors who do not immediately look for the artist’s signature, according to Joshua Kaufman, an attorney based in Washington, D.C., who represented Wegner. 

“Within a span of one week, Wegner received calls from three of his collectors who asked him, ‘What happened to your work? It looks like it deteriorated.’ They had seen Conley’s imitations of Wegner’s work from a distance and just assumed it was Wegner’s. That can affect an artist’s reputation as well as sales, if people think the quality has gone downhill,” Kaufman said. 

Damage awards result from the fact the imitator’s work is usually priced lower than that of the better-known artist’s, which may affect sales. 

Deciding when one contemporary artist imitates the feeling and impression of the work of another is up to the judges of the legal system. There may be some factual evidence to rely upon: Did Artist B ever see the work of Artist A? When were the respective works made? Will someone admit to being told to stylistically copy another’s work? Are there certain idiosyncrasies or errors in common (a misplaced thumbnail, for instance)? 

The strength of Wegner’s case rested on “sworn affidavits by three people who were on hand when Wasserman brought photographs of Wegner’s work to Conley and said, ‘make your work as close to these as you can,’” Kaufman said.  

In less clear-cut situations, much relies on a judge finding a striking visual similarity between two works. In the Tarkay case, according to the written decision, the court examined “the color patterns and shading of the Tarkay works, the placement of figures in each of the pictures examined, the physical attributes of his women, the depiction of women sitting and reclining, their characteristic clothing vis-à-vis those portrayed by Patricia [Govezensky]” to find that “consumer confusion is a likely result.” 

The courts apply two main tests for trademark cases to determine whether one artist may have stylistically copied another: The first is establishing that the allegedly copied work is identified by the public as being by the artist (in legal parlance, the art has acquired a “secondary meaning”). The second is proving the imitation is likely to cause confusion in the market. “What better for showing probable confusion than actual confusion,” Kaufman said. “Three people called up Wegner in one week.” 

Trademarking Your Name

You may see Bob Timberlake, an 86-year-old artist in Lexington, North Carolina, as a painter of mostly rural imagery, but he also is a brand. His name is trademarked, as is his signature and an image of a quill, to identify a variety of products that he has designed or with which he is associated. 

He works with 15 or so licensees to produce such things as Bob Timberlake living room furniture, picture frames, mirrors, colognes, dinnerware, decorative pottery, stoneware, electric lighting fixtures, fabric for upholstery, house paints, and wood stains. “There are close to a dozen trademarks,” said his son, Dan Timberlake, a lawyer and adviser to his father. 

Trademarks are words, logos, or images that specifically symbolize or refer to a company’s products and services. They always are used in a commercial context, although some artists have incorporated their designs into usable items, such as T-shirts, magnets, stationery, and baseball caps with Keith Haring’s radiant babies, or Donald Judd’s home furnishings. 

We usually do not think about artists having non-art items to sell or having a trademark to protect. More often, a commercial enterprise brings lawsuits against artists who use their trademarked (and copyrighted) images and other marks in their fine artwork. Sometimes, these companies win and other times they do not. 

Utah photographer Tom Forsythe is an artist who won. In 1997, he began creating a series of 78 images called “Food Chain Barbie” in which undressed Barbie dolls were depicted in a range of positions. 

In 1999, Mattel brought a lawsuit against the artist, charging copyright and trademark infringement. Forsythe claimed in court papers that his work represented a critique of “the conventional beauty myth and the societal acceptance of women as objects because this is what Barbie embodies.” 

It took two courts and four years, but it was found that Forsythe produced parody, which is a protected “fair use” under U.S. copyright law, and he did not diminish the value of the Barbie doll for consumers. “However one may feel about his message — whether he is wrong or right, whether his methods are powerful or banal — his photographs parody Barbie and everything Mattel’s doll has come to signify,” the appeals court ruled in 2003. Additionally, Mattel’s demands and lawsuits were found by the appellate court to be “groundless and unreasonable,” obligating the company to pay the defendant’s legal fees and court costs. 

Bob Timberlake’s trademarks have been the subject of lawsuits, not so much to stop others from infringing on his marks but instead because other manufacturers have sought to stop him from trademarking a name close to theirs. Timberlake Cabinetry, a division of American Woodmark Corp., sought to prevent Bob Timberlake from registering his name on similar products that might compete in the market. Timberland, a manufacturer of outdoor clothes, shoes, and accessories, also tried to block the artist from registering his name, even though the two companies did not compete. “They both lost,” Dan Timberlake said, adding that the two lawsuits cost the artist between $250,000 and $300,000. 

Both copyright and trademark help protect artists from others who may attempt to pass off their work as that of the artists. The trademark blocks the other party from passing off counterfeit objects as those of the artist, while copyright protects the artist from the redistribution of the counterfeit items themselves. 

Tristan C. Robinson, a lawyer in The Woodlands, Texas, said either or both forms of intellectual property protection “can ensure that the public trust is maintained and that the product is from the artist we want it to be. To wit, I’m much more likely to buy someone’s artwork if I have a deep respect for the artist and I know I won’t be getting anything bogus or counterfeit.” 

Certain marks can be both copyrighted and trademarked when there is a distinct design element. A copyright application is registered with the U.S. Copyright Office. 

The process takes months and costs between $35 and $55, depending on if the image being registered has one author, if the author is also the owner, and if one is registering a single work or a collection. To receive a copyright, “the first threshold for an artist to overcome is to show the logo contains copyrightable artwork,” such as a distinctive image, Kaufman said. 

Trademarks are registered with the U.S. Patent and Trademark Office. The filing cost is $225. Kaufman noted, “Most artists may or may not realize it but their signature or their name is probably a trademark when they put it on their artwork and put their artwork into commerce.” 

This process also takes months. The trademark examiner (a lawyer assigned to look at the proposed logo or mark) determines if there are issues with the proposed mark, such as whether it is not distinct enough or too close to another trademark. If there are concerns, an “office action” is issued, requiring the applicant to respond to each issue. 

If there are no issues or if the applicant responds to the issues to the examiner’s satisfaction, then the mark becomes “Published for Opposition.” That is a period when anyone who thinks the applicant’s proposed mark may violate his or her rights can file an opposition to the mark’s registration. If all goes well during this roughly six-to-eight-month period, the trademark becomes registered. 

Both the copyright and trademark of a logo can be protected through the legal system, although the process and outcomes are somewhat different. One needs to register a copyright before filing a lawsuit and, for greater dollar penalties, in advance of an infringement itself. A trademark infringement lawsuit may be filed without registering the mark. 

A proven case of copyright infringement comes with monetary damages mandated under the federal statute. The normal outcome of a trademark infringement action is a court-ordered injunction to stop further infringement. Robinson noted that “although monetary awards are rare, they have been found to be appropriate in cases where the owner of the Mark can show that the infringer unjustly enriched themselves or that the owner suffered actual economic losses.” 

Some artists have placed identifying logos on their works. However, most artists seek to be associated in the public’s mind through their style and imagery rather than with a logo. 

Artists whose images and trademarks both have been infringed may file lawsuits under both copyright and trademark law. “A trademark creates the presumption that you have a brand, that the government believes your work is distinctive enough to merit a trademark,” said Christine Rafin, an intellectual property lawyer in New York City. However, she noted the use of a trademark, largely for licensing, is appropriate primarily “for artists when they have become successful.” 

Use of Logos in Your Work 

Corporate logos and other marks regularly appear in the work of artists. An artist sets up an easel at Times Square in New York City and paints a picture. 

That image may contain billboard advertising, automobile logos, and any number of products. Some artists, like Forsythe, use trademarks to critique corporations and consumer culture. The question is whether they are exercising their right to free expression or getting a free ride from a trademark holder’s logo and reputation. 

The legal test for trademark infringement is what the “ordinary person” is likely to believe. There is no rule of thumb concerning how much of the image may be taken up by the trademark before an artist is apt to lose an infringement lawsuit. 

“Is the trademark an incidental use as part of the scenery or so prominent that someone might think the trademark owner had something to do with the picture?” said William M. Borchard, a New York City trademark lawyer. “The principles of these laws are clear and easy to state, but the application of those principles to fact is not at all so clear.” 

Borchard said the difficulty of knowing in advance what may be deemed trademark infringement is compounded by the fact that judges generally have different beliefs regarding how much protection a trademark deserves. 

“On one side, there is the view that trademarks help consumers distinguish between products, which is helpful in our free enterprise economy,” he said. “The other view is that trademarks are anti-competitive, in that they cause consumers to behave irrationally, selecting one product over another when both are identical. Judges take one side or another on the issue of trademark. The ‘ordinary person’ turns out to be the judge, and you don’t know what kind of judge you’ll get on any given day.”