Using famous logos or registered trade marks in artwork could potentially cause issues regarding trade mark infringement. This is true in particular if the original owner did not grant permission. In 2021, Nike made headlines by taking on MSCHF and rapper Lil Nas X in a case of trade mark infringement. Several principles from this case are relevant to Australian artists. This article will review how Australia balances trade mark laws and artistic rights.
Case Summary
Nike is a highly well-known global brand. In 2021, it was engaged in a case of trade mark infringement against MSCHF. The US-based art collective collaborated with rapper Lil Nas X to produce ‘Satan shoes’, which purportedly contained human blood in the soles. Sticking to the ominous theme, MSCHF made only 666 pairs of shoes at the time of manufacturing.
The problem with the shoes was that they were modified versions of Nike’s Air Max 97s’ and also contained Nike’s prominent swoop tick logo. Nike thus initiated a lawsuit against MSCHF on the basis of trade mark infringement, false designation of origin and trade mark dilution. MSCHF argued that the Satan shoes were ‘works of art’. The matter later settled with MSCHF agreeing to issue a voluntary recall and provide refunds to customers.
Trade Marks and Reputation
Generally, artists collaborate with brands to use famous logos either via permission or through a conditional license.
However, there are also numerous examples of artists using well-known trade marks without permission. A notable example is Andy Warhol’s famous Campbell’s Soup artwork, produced in 1962. Campbell’s Soup could have initiated action against Warhol for trade mark infringement. However, Campbell’s Soup chose an alternative route and used Warhol’s artwork as part of a marketing angle instead. This ended up benefitting the brand overall through its positive connection with Warhol.
Evidently, reputation is an integral part of a collaboration between an artist and a brand. It is often the basis of how consent is granted to an artist to use a well-known trade mark. In 2019, MSCHF produced a range of “Jesus shoes” modelled on the Nike Air Max 97s. Nike did not see an issue with this but did object to the release of the Satan shoe in 2021, likely because of the controversial feedback that came with the new association.
Continue reading this article below the formThe Australian Position
Australian trade marks are regulated and enforced under the Trade Marks Act 1995 (the ‘Act’). Contrary to the United States and Europe, there is no human rights-based approach to freedom of expression concerning trade mark regulation. As a result, the general interpretation of the law is strict.
Trade Mark Infringement In Australia and Defences
In Australia, trade mark infringement occurs when there is unauthorised use of a sign in trade or commerce. The infringing mark must be substantially identical or deceptively similar to a registered trade mark. When this occurs, the owner of has the right to commence proceedings against the allegedly infringing party. Importantly, the unauthorised use must also breach the law. For example, the use of the registered trade mark for unrelated goods or services may be enough to avoid infringement.
The defences to trade mark infringement are outlined in the Act and only cover certain circumstances. You should be aware of these defences, as they may provide you protection if you are an artist accused of infringement. Some defences include:
- a ‘good faith’ use of someone’s business name or own name;
- Where the sign simply reflects the intended purpose of the goods and services;
- if the person using the trade mark could register it if they applied; or
- existence of some other limitation or condition invalidates the infringement.
The Balance Between Art and Trade Mark Law
The relationship between trade mark law and artistic expression is a nuanced and complex one, often requiring a careful balancing act. On one hand, trade marks are designed to protect the interests of businesses by ensuring that consumers are not misled about the origin of products or services. This protection is crucial for maintaining the brand’s integrity and reputation. On the other hand, art sometimes uses well-known symbols and trade marks to make powerful statements or commentary.
In Australia, the strict interpretation of the Act tends to favour trade mark owners, leaving less room for artistic freedom. This can create a challenging environment for artists who wish to incorporate famous logos into their work. If you are an Australian artist, the safest route is to seek permission from the trade mark owner before using their logos. This can help avoid potential legal battles and the associated costs.
This guide explains the essentials of trade marks and the steps required to register a trade mark.
Key Takeaways
The Nike vs Satan shoes case has shown that there can be legal consequences if an artist chooses to abide by the ‘any publicity is good publicity’ line. The Australian legal system has not had a significant case to provide adequate protection supporting an artistic expression right. Therefore, you as an Australian artist should be careful when using famous logos and registered trade marks. Crucially, the first step is to seek permission from the trade mark owner. There are defences available to trade mark infringement, but these are limited, particularly where art is concerned. If you receive a notice alleging infringement, you must understand your rights before responding to it.
If you are concerned about infringing a trade mark in your artwork, our experienced trade mark lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 1800 485 742 or visit our membership page.
Frequently Asked Questions
There are several defences to trade mark infringement in Australia. For example, using a trade mark for the purposes of comparative advertisement is a defence to trade mark infringement.
The law on this subject in Australia is not entirely clear. Therefore, you should always seek permission from the trade mark owner, or seek legal advice.
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