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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. Recently, 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 we balance trade mark laws and artistic rights in an Australian context. 

Nike vs Satan Shoes: Making a Case for Art

Nike is arguably one of the most well known global brands of the century. The brand’s well-known market presence is well on par with Satan’s even more long-standing reputation, whose job description now ranges from an agent of evil to muse for sneakerheads. Not to be outdone in matters of deception and fraud, Satan’s latest battle was against the Nike conglomerate in a case of trade mark infringement. 

Earlier this year, the US-based art collective MSCHF 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’. They also contained Nike’s prominent swoop tick logo. Nike took offence at the overt use of their design and logo. They then initiated a lawsuit against MSCHF on the basis of trademark infringement, false designation of origin and trademark 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. 

It is clear from MSCHF’s statements that MSCHF knowingly infringed on Nike’s trade mark rights, citing freedom of expression. This leads to the question, can you use famous logos and registered trade marks on the basis of artistic expression? 

Infringement or Collaboration? Why Reputation Matters

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 great example of this is Andy Warhol’s famous Campbell’s Soup artwork produced in 1962. Campbell’s Soup could have initiated action against Warhol for trademark 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 Campbell’s Soup brand overall through its positive connection with Warhol. 

Reputation is an integral part of a collaboration between an artist and a brand and often the basis of how consent is granted to an artist to make use of a well-known trade mark. In 2019, MSCHF had 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. Nike evidently did not enjoy the controversial feedback that came with the new association. In short, perhaps imitation is not always the sincerest form of flattery when figures of controversy are involved. 

The Australian Position

Australian trade marks are regulated and enforced under the Trade Marks Act 1995 (Cth). Unlike our American and European counterparts, we have not yet adopted a human rights-based approach to freedom of expression concerning trade mark regulation. As a result, the general interpretation of the law is strict, with some academic commentary even asserting that this is potentially detrimental to freedom of expression rights. 

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, in a manner that is substantially identical or deceptively similar to a registered trade mark. The owner of a trade mark has the right to commence proceedings against a party that they believe has infringed on the use of a trade mark. This is as long as the use breaches the law (for example, use of the registered trade mark for unrelated goods or services may be enough to avoid infringement). 

For an artist using logos or trade marks belonging to another brand, a very slim line of defence is available against allegations of trade mark infringement. 

It is also worth noting that the defences to trade mark infringement outlined in the Trade Marks Act only cover circumstances where the:

  • person uses a sign in good faith concerning the person’s name or the name of the person’s place of business; 
  • person uses a sign in good faith to indicate the kind, quality, quantity, intended purpose, value, geographical origin, time of production, time of rendering, or some other characteristic of goods and services; 
  • sign indicates the intended purpose of goods and services; or
  • sign is for the purposes of comparative advertising; 
  • person using the sign may be able to achieve registration of the sign if they applied for it; or
  • existence of some other limitation or condition invalidates the infringement.

Key Takeaways

The Nike vs Satan shoes case has taught us 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, Australian artists should be careful when using famous logos and registered trade marks in their mediums. They should attempt 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 that you have infringed a trade mark in your artwork and need assistance responding to an infringement notice, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.

Frequently Asked Questions

Are there defences to trade mark infringement in Australia?

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.

Can I use a trade mark for artistic purposes?

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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