Copying for Charity
Judging from my inbox, more than a few of you have heard that Louis Vuitton has sued Danish artist Nadia Plesner over the t-shirt design at left.
The image casts a Sudanese child from the troubled Darfur region in the role of Paris Hilton, complete with small pink-clad dog and designer handbag, in order to criticize the media's excessive coverage of attention-seeking celebutantes rather than genocidal conflict. In Nadia's words, "Since doing nothing but wearing designerbags and small ugly dogs appearantly is enough to get you on a magasine cover, maybe it is worth a try for people who actually deserves and needs attention." (The lack of undergarments may also evoke Ms. Hilton, but the artist doesn't mention her model's unmentionables.)
The issue for Louis Vuitton, however, is that Nadia didn't just depict any designer bag, but a version of the iconic Multicolore toile pattern, complete with the LV initials morphed into dollar and pound signs. The company objected to this use as trademark infringement and asked Ms. Plesner to stop selling the t-shirts. The letter is interesting in itself, since the tone is fairly unusual for a C&D -- "Hey, we're all artists here, and Takashi Murakami and Marc Jacobs collaborated on that bag," rather than the typical demands for an accounting of all units sold, disgorgement of funds, destruction of all remaining merchandise, and the head of the offending party on a platter. It even offers a nod to Nadia's "Save Darfur" mission. Still, LV very clearly wanted the shirts depicting its trademarks off the market -- and Nadia responded with a defense of her freedom of expression. (She also somewhat surprisingly started out by arguing that her drawing refers to designer bags in general and not LV in particular, but more on that in a moment.)
After Nadia and Louis Vuitton failed to reach an agreement, the company filed the lawsuit that has drawn far more attention than Nadia's initial project. Without deciding the case, let's take a look at why there's an impasse.
Q. Why do Louis Vuitton's lawyers object to the t-shirt?
A. The simplest answer is that their job is to protect LV's trademarks. And, legally speaking, they're supposed to object to unauthorized commercial distribution of those marks. A trademark holder that doesn't enforce its rights can ultimately lose them, as the marks may be considered abandoned or even generic. Every time you ask for a Kleenex instead of a tissue or make a Xerox instead of a photocopy, a trademark lawyer somewhere gets another grey hair.
The same is true for the extremely recognizable Multicolore pattern, which has been copied over and over again and is the subject of ongoing litigation between LV and other manufacturers. It is the responsibility of LV's lawyers to make sure that the public's association between the Multicolore design and the company is not weakened in any way. Thus Nadia's claim that her design "is inspired by - and refers to - designers bags in general - not a Louis Vuitton bag" is the last statement that would be reassuring or persuasive to a trademark lawyer.
Q. But Nadia created the t-shirts for charity -- doesn't that matter?
A. Yes and no. We all love a good cause, and we admire people who actually take action when confronted with evil.
From a trademark lawyer's perspective, however, unauthorized commercial distribution is a threat, whether or not the profits go to a good cause. Even charities that hold trademarks have problems protecting their marks from other philanthropic parties with similar purposes. A representative of a prominent health-related nonprofit organization once told my class that she spends much of her time admonishing other groups that have put her organization's logo on their educational literature or their healthy products. As she put it, "We're a charity, but we're not in the business of giving away our trademark." Similar issues arise when trademarks are "borrowed" for religious purposes. Trademark owners who object aren't necessarily grumpy atheists, just concerned about their marks.
LV's initial letter to Nadia reflects this tension between sympathizing with social concerns and protecting intellectual property -- hence the unusually moderate request and tone for a C&D.
Q. So why didn't Louis Vuitton just give Nadia permission to use its trademark?
A. One strategic option for any company whose trademarks have been used without authorization is to give permission, and also exercise some control, via a licensing agreement.
Of course, Nadia didn't ask for permission. And Louis Vuitton may or may not have been willing to grant it if she had, since its marks are constantly copied and copied again. Also, while Nadia's stated intent was to criticize media attention to celebrities instead of tragedies, her profits from the t-shirts go to Divest for Darfur, an organization that opposes financial investment that ultimately funds genocide. The presence of LV trademarks on the t-shirt could mistakenly be read to imply that Louis Vuitton had made investments that were helping to fund genocide -- not a message that the company would want broadcast, even in error. In U.S. legal terms, LV could argue that Nadia was not only engaged in dilution of its well-known marks by blurring (basically overuse by non-owners) but also by tarnishment (negative association).
Q. What about freedom of expression?
A. Free speech is an important right, and one that every democratic society protects in different ways. Intellectual property law establishes exclusive rights in specific expressions, but also attempts to maintain a balance between freedom of expression and creators' rights.
In other words, at the same time that the law protects trademarks, it creates defenses for those who wish to use them in discussion (like the use of the name "Louis Vuitton" thoughout this post). Different countries have different trademark laws and thus different defenses to unauthorized use. In the U.S., the general standard is "fair use," including parody, while other jurisdictions have specific rules about what is or is not allowed in terms of expression. To complicate matters even further, fair use of a trademark and fair use of copyrighted material are subject to different standards.
In general, under U.S. law a visual artist is safer using a trademark to comment on or make fun of the trademark owner itself (parody) than to make other social statements (satire). After all, it may be necessary to make limited use of a trademark to make a statement about its owner, but statements about other things can be made using other vocabulary. Of course, whether or not something qualifies as parody or other protected speech may require a judicial decision. Nadia writes that her goal was to make a statement about media coverage, not about Louis Vuitton.
In her response to Louis Vuitton, Nadia also mentions Zbigniew Libera, a Polish artist who created LEGO concentration camp sets with blocks donated by the Danish company. In the finished versions of the controversial work, Libera included a statement that his work was sponsored by LEGO. The company vehemently denied knowlege of exactly what the artist had intended and filed a lawsuit that was later withdrawn. The story is a cautionary tale for companies who choose to support artists -- whether by donating plastic blocks or the use of their designs -- but is ultimately quite different from Nadia's choice to act unbeknownst to Louis Vuitton.
Q. Do you think Paris Hilton will sue Nadia?
A. Actually, I try not to think about Paris Hilton.
But if I did, I might wonder whether she would assert a state law right of publicity claim against Nadia, much as she did against Hallmark. If Vanna White can win her case against Samsung for posing a robot in a blonde wig on a game show set, then Paris could consider suing an artist for selling images of an African child with Hilton-style accessories. Paris' case would be weaker here, however, since Nadia is criticizing the media for its coverage of Hilton's attention-seeking behavior and perhaps impliedly criticizing Hilton herself, rather than simply selling greeting cards or electronics.
Q. How can artists like Nadia avoid lawsuits by trademark holders?
A. There's a lot of confusion out there as to what artists can and cannot do legally with corporate logos. Unfortunately, the law in this area is not entirely clear, and greater specificity would benefit both trademark holders and artists. There are, however, some general principles.
For an independent artist, the safest option of all is not to use others' trademarks. Any such use is a risk, and defending a lawsuit is time-consuming and expensive, even for an artist who ultimately wins. (Now you know why so few lawyers have become great artists -- we're trained to think about worst-case scenarios.)
That being said, corporations are significant players in modern life, and as a society we need to be able to engage in commentary and criticism, whether that takes the form of op-eds or visual art. A trademark is shorthand for a corporate entity itself. The law thus recognizes and protects some critical or discursive use of trademarks.
Before an artist uses a corporate trademark, she should think about whether or not her intention is to comment on the trademark holder -- and assess the risk according to the relevant national law. If the use of someone else's trademark is just to make a visual joke or to sell the artist's own products, then that use is lawsuit bait, and the artist may very well be liable for damages. And by the way, some companies are more determined than others when it comes to enforcing their rights.
Of course, an artist's intent may be to transgress boudaries and challenge the law, but she should at least figure out where the line is before crossing it.
Q. And how should companies respond to unauthorized use of their trademarks by artists?
A. As we've discussed, trademark holders are required to attempt to assert control over unauthorized uses, lest they lose their trademark rights entirely. But for most holders of frequently copied trademarks, enforcement is a matter of allocating limited resources -- and managing public relations. It's impossible to stop every counterfeit handbag seller on every street corner in the world, or to review every art school sketch to determine whether it's fair use. Commercial sales in large multiples tend to make trademark lawyers see red; a one-off, transformative use may be worth only a shrug and a sigh.
Q. Who's going to win this case?
A. That's a question for a Danish court -- although a settlement is still possible. In the meantime, don't try this at home.
Many thanks to Jenny Leugemors and Jayshree Mahtani, the first two to alert Counterfeit Chic to the story!