When Andy Warhol created his iconic “Campbell’s Soup Cans” and “Brillo Boxes” works in the 1960s,1 it was rare for brand owners to assert Lanham Act claims over non-commercial uses of trademarks in artistic works. The climate has changed dramatically since then, as brand owners have become fiercely protective of their valuable trademarks, often seeking to stop any unauthorized use no matter how trivial or fleeting. The motivations for zealous enforcement of trademark rights include: establishing that a plaintiff’s mark is “strong” through proactive “policing”; avoiding equitable defenses such as laches and acquiescence; and building a reputation of aggressive enforcement aimed at discouraging encroachment by competitors.
Where trademarks are used in artistic works, two competing interests come into playa trademark owner’s right to prevent consumer confusion, and the First Amendment right of freedom of expression. Both are important and worthy of strong protection. On the one hand, brand owners have the right of exclusive control over their goodwill and business reputation, and on the other hand, authors and artists (as well as all other U.S. citizens) enjoy the fundamental right of freedom of speech and expression. So where lies the boundary between a trademark owner’s right to prevent against confusion and the public’s right of freedom of expression? Several recent federal court decisions provide guidance.
