Fashion Law

Is making art using someone else’s IP legal?

The FLAG Art Foundation is a non-profit exhibition space for contemporary art. The FLAG Art Foundation’s Disturbing Innocence exhibit is open now and will run through January 31, 2015. The show screamed copyright law to me and thus this post was born.  

Image: Is it legal to use trademarks or copyrights without permission?

This exhibit features 50 artists whose modern art distort idealistic childhood images. The pieces in this collection are deliberately shocking. Scrolling through photos of this art, you may notice that the works of art make use of existing trademarks and copyrights that the mark holder may not authorize.

Mummified Barbie art, The FLAG Art Foundation's Disturbing Innocence exhibit       The FLAG Art Foundation's Disturbing Innocence exhibit

Is it acceptable for someone to make money using the intellectual property of others? 

Dare Wright art; The FLAG Art Foundation's Disturbing Innocence exhibit        Robert Gober; The FLAG Art Foundation's Disturbing Innocence exhibit
Artwork above by Dare Wright (left) and Robert Gober (right).
Jennifer Rubell's Lysa III sculpture; The FLAG Art Foundation's Disturbing Innocence exhibit
Jennifer Rubell’s “Lysa III” sculpture is a nutcracker doll Mattel has yet to make.
Chapman Brothers, Doggy; The FLAG Art Foundation's Disturbing Innocence exhibit   Chapman Brothers, Doggy; The FLAG Art Foundation's Disturbing Innocence exhibit
Chapman Brothers, “Doggy”
Chapman Brothers, Doggy; The FLAG Art Foundation's Disturbing Innocence exhibit
Play Date featuring Michael Jackson and Mansen by John Waters, Disturbing Innocence   Play Date featuring Michael Jackson by John Waters, Disturbing Innocence
“Play Date” by John Waters

Do mummified Barbies or a hairy Ken infringe Mattel’s rights? Is it acceptable to use customarily PG works of others in sexualized creations? Or a Nike swoosh along with Nike branded sneakers in art? M
aybe yes and maybe no.

Copyright and trademark law allow for defenses to infringement. For questions concerning alleged infringement, a U.S. court would consider the defenses to infringement.

The Copyright Act allows fair use as a common law defense. Fair use protects secondary works from copyright infringement claims if the works borrow from original works in particular ways. Section 107 of the Copyright Act provides that the fair use of a copyrighted work, for purposes such as criticism, is not an infringement of copyright. Fair use is an affirmative defense, so the burden of proof falls on defendants to justify the alleged copyright infringement.

A 4-factor test can be used to determine whether the use of someone else’s IP in a new work is a fair use:
(1) purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) nature of the copyrighted work; 
(3) amount and substantiality of the portion used in relation to the work as a whole; and
(4) effect of the use upon the potential market for or value of the copyrighted work.

According to the Ninth Circuit, the fair use doctrine confers a privilege on people other than the copyright owner, “to use the copyrighted material in a reasonable manner without his consent, notwithstanding the monopoly granted to the owner.” The doctrine is a means of balancing the need to provide individuals with sufficient incentives to create public works with the public’s interest in the dissemination of information.  

A parody is when someone imitates another’s work to comment on the original work for comic effect or social commentary. Parody is a defense to trademark infringement. As long as a parody can be reasonably perceived as commenting or critiquing an original work, its original purpose is inconsequential.
If you are interested in further reading on Fair Use, below are three great cases to brush up on:


Mattel, Inc. v. Walking Mountain Prods: In Mattel, the court ruled that works by Forsythe were a parody of Barbie and deemed highly transformative. Here photographer Tom Forsythe, who produces photographs with social and political overtones, developed a photograph series entitled “Food Chain Barbie.” The photographs depicted Barbie dolls in various absurd and often sexualized positions. After four years of litigation, this case was ultimately ruled fair use.

Campbell v. Acuff-Rose Music, Inc.: In Campbell, the court held up the fair use defense. This case concerned a rap song by 2 Live Crew. The rap song, entitled “Pretty Woman” borrowed from the Roy Orbison ballad entitled “Oh, Pretty Woman.” In this case the court held that even though 2 Live Crew’s parody took the first line of lyrics and characteristic opening bass riff from the original and therefore made the heart of the original the heart of the parody, this was purposely done “to purloin a substantial portion of the essence of the original.” By adding misogynistic epithets and explicit sexual demands, juxtaposing and mocking the innocent nature of the original love song, 2 Live Crew’s song had demonstrable parodic elements. There was also a lack of effect on the market for Orbison’s song.

SunTrust Bank v. Houghton Mifflin Company: In SunTrust Bank, a copied work was found to be transformative. Here the book “Gone With the Wind” (GWTW) was parodied by an African American author in a work titled “The Wind Done Gone” (TWDG). Here the court stated that “TWDG is more than an abstract, pure fictional work. It is principally and purposefully a critical statement that seeks to rebut and destroy the perspective, judgments, and mythology of GWTW.” When weighed against each other, the two sub-factors ended falling in favor of the new work: it was transformative enough to illustrate a new expression, so the fact that it was made with a commercial value did not preclude it from proving this factor present. The more transformative the new work, the less will be the significance of other factors.  

Rather than rely on fair use, you may be better off requesting a license for uses that copyright owners are likely to allow. Otherwise, keep in mind that fair use occurs when someone uses a trademarked term for its primary definition and not its secondary meaning.


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