Banksy on branding. The elusive street artist is seemingly frustrated with his own commercial success. To him great street artists need to remain criminal to keep their art pure. Most appropriation art could violate commercial law but is not criminal, unless it involves a violation of Copyright law’s DMCA. The image above is not a copyright infringement, but is potentially trademark infringement and dilution of Coca Cola’s famous trademarks in the shape of the bottle and the coca-cola script.
If Banksy’s use of Coca Cola’s trademarks are a fair use there would not be an infringment. The test for trademark fair use is different from copyright fair use. In fact there are a few trademark fair use tests.
The fair use provision in the trademark statute, 15 USC § 1115(b)(4), permits use of a registered mark if the allegedly infringing use is “descriptive of and used fairly and in good faith only to describe the goods or services of such [allegedly infringing] party, or their geographic origin.” So Apple Computers cannot prevent a farmer from using the word Apple to sell his fruit products. This test does not help Banksy.
A second trademark test is judge-made-law known as the “Nomintive Use Test” that allows use of the trademark of another as a reference to describe the other’s product, or to compare it to their own. Nomintive fair use is important in the U.S. to permit free speech in product criticism and analysis and for comparative advertising. Under the Nomintive Use Test, a store that sells Apple computers is permitted to say that it sells Apple computers. Or Samsung may compare its Galaxy phone to Apple’s iPad tablet.
The Ninth Circuit Court further refined the nominative fair use test in the “New Kids on the Block” case for situations when one needs to use or make reference to another person’s trademark. Three factors must be considered:
- The person, product, or service cannot be readily identified without using its trademark to describe the product, service, or person.
- The user uses only as much of the trademark as is reasonably necessary to identify the product, service, or person. (e.g. the words but not the typeface or logo design).
- The user does nothing to suggest sponsorship or endorsement by the trademark holder.
A nominative use is by definition a “non-trademark use” so it also cannot dilute or tarnish the trademark. Dilution is a trademark-like harm that applies only to uses that blur or tarnish famous marks.
Applying the test to Banksy: (1) he uses his own text to form the outline shape of the Coke bottle. (2) There is no reference to the the vertical ribs or product name. He used the famous script but not the word mark Coca-Cola. So Banksy used only enough of the trademarks to conjure up Coke. Sees to be nominative use.
But, (3) is Banksy actually using Coke to make a point about his personal discomfort with monetization and leveraging Coke to make his statement more graphic? Does Coke endorse Bankys’ stance? What if this is on a t-shirt? Is it still a fair use?
Appropriation art is a big business today, popular due to its commentary on culture and branding. How long it continues to get a pass from infringement of intellectual property laws remains to be seen.