Say I take a photo of a cigar box that clearly shows the cigar makers logo...I add some artistic elements to the image and want to sell the image to individual as art...are there any trademark or copyright concerns here? Thank you.
When you appropriate someone's logo without their permission, and use it to sell something, that's trademark infringement. Don't do it - unless you have a license from the trademark owner.
Kevin B. Murphy, B.S., M.B.A., J.D.
Attorney at Law & Franchise Expert
Director of Operations - Mr. Franchise
FRANCHISE FOUNDATIONS APC
Agree with the above - to sell the image you should contact the company and get permission.
I am licensed to practice law in Colorado and Washington. My responses here are intended to provide information, but should not be considered legal advice. Further, my response to your question has not created an attorney client relationship. Choosing an attorney is an important decision and should be made carefully. My contact information can be found at www.laszlolaw.com/attorneys/michael-j-laszlo
I agree with my colleagues. Unless you get written authorization, simply do not do it.
A 1973 Federal Court case, In Re E.I. DuPont De Nemours & Co., 476 F.2d 1357, provided a checklist for the analysis of the act leading to an infringement claim and the
"likelihood" of confusion, mistake or deception as follows where the court considered:
a. similarity or dissimilarity of the marks in their entireties as to appearance, sound, and
b. similarity or dissimilarity and nature of the goods or services involved;
c. similarity or dissimilarity of trade channels and marketing methods;
d. whether the products are sold to ordinary or discriminating purchasers, and under what
conditions they are sold;
e. fame of plaintiff's mark;
f. the variety of goods on which a mark is used;
g. nature and extent of actual confusion, if any;
A summary of trademark infringement is the use of a mark which is similar in sight and or sound for a similar product or service such that the consumer would be confused as to the source of the product. Thus a question is raised: is the cigar box art used as a product or service which will confuse consumers of cigars as to the source of the product?
Another question which someone may answer–did Andy Warhol get permission from Campbells Soup?
My comments have been made without discussion. An attorney client relationship has not been established. There may be conflicts which prohibit my providing you with specific legal guidance. Any contact with you beyond these few general words will start with a disclosure of the former employer so that a conflict check can be made. You should discuss with an attorney.
In the Ninth Circuit, when considering whether a work of art infringes a trademark the test is NOT the normal “likelihood of confusion” analysis but rather a more fundamental First Amendment balancing test: Specifically, the Lanham Act “should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression." Mattel, Inc. v. MCA Records, Inc., 296 F. 3d 894 (9th Cir.2002) (quoting Rogers v. Grimaldi, 875 F.2d 994, 999 (2nd Cir.1989) and noting that "If we see a painting titled `Campbell's Chicken Noodle Soup,' we're unlikely to believe that Campbell's has branched into the art business.”).
The application of this balancing test – instead of the likelihood of confusion test – makes good sense in order to preserve the free flow of communicative ideas and because, in most situations, the art that shows the trademark is not a good in competition with the branded good.
So the answer for this questioner, at least in the Ninth Circuit, is that YES, it may be lawful to take a photograph of a cigar box, alter or add some elements, and then sell the photograph – all without infringing the trademark that brands the cigars. Only your own attorney can pass on the question, however, after reviewing your photographs.
The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.
Colorado is in the 10th Circuit, but you could be sued where the brand owner has it's offices. For cigars, that is likely Florida, which is the 11th Circuit. If you are sued, you might well be sued in the forum where the trademark owner thinks the law favors them the most. So, to be risk free, you need to take the least favorable law on this subject and see if you avoid infringement under that law. That means you cannot avoid risk on this project unless you get permission.
So, with the above in mind, the question becomes is the risk an acceptable one from a business standpoint? I tend to think the risk is acceptable for you, as I doubt a cigar company is going to object to true art with its boxes depicted artistically. That might change if the cigar company is tied in with a big tobacco company that does lots of consumer advertising and/or one that already merchandizes out its logos on a wide variety of products. If your pop art photo of a cigar box with artistic elements seems to be independent of the brand, then you should, like Andy Warhol, avoid suit. On the other hand, this is not without risk.
If this is a one-time thing, then as a lawyer I would say it is borderline legal. As a business advisor, I would think it is an acceptable risk. However, the business decision with its legal implications, is yours to make. Most prudent businessmen, evaluating this fact situation, would consult a trademark attorney so that they have advice to fall back upon in saying they thought this was legal and that they did not deliberately or willfully infringe. You would do well to be prudent as failure to get such an opinion will weigh against you in the mind of any judge or jury, and getting it will weigh in your favor. On a close case such as this, that could make the winning difference on the issue.
So far, this is free to you. Until you pay a fee, I am not your lawyer and you are not my client, so you take any free advice at your sole risk. I am licensed in IL, MO, TX and am a Reg. Pat. Atty. so advice in any other jurisdiction is general advice and should be confirmed with an attorney licensed in that jurisdiction.
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