Monday, May 03, 2021

Does Gordon v. Drape really mean what it says about explicit misleadingness?

Testing Gordon v. Drape with the paintings of Tom Sachs, some of which reproduce famous product labels in their entirety (or nearly so). The introduction to the coffee table book I just bought says,

From Reese’s Peanut Butter Cups and Snickers bars to images of American flags and Air Force One, Sachs takes familiar brands, symbols, and commodities as his subjects. He represents these iconic images in his deliberately imperfect and conspicuously handmade aesthetic, wanting us to see the uneven brushstrokes and roughly hewn surfaces that distinguish his “handmade paintings.” By drawing attention to how his objects are made, he deconstructs the formidable and complex systems that powerful logos and brands represent. In Tom’s words, “When I look at these paintings, to me they all speak about power. There is power in logos and there is power in good advertising.”

On Artsy, the description says:

Critiquing the speed and regularity with which a materialistic society replaces commodities, Sachs uses both a profusion of commercial icons in his work and builds his own functioning versions of consumer goods using re-purposed items, such as the glossy, black Prada Toilet (1997), a workable toilet constructed out of Prada’s up-market packaging, with the company’s logo prominently displayed on the sculpture. Sachs’s works are emphatically process-oriented, an expression of the artist’s DIY spirit, divulging even the flaws of his complex and labor-intensive projects.

So, are his works explicitly misleading? See below for some examples:


Note the detail on this painting:

If you think the "Tom Sachs" signature on the side helps, what about this one?


Anonymous said...

How can something hanging on a museum/art gallery wall mislead as to source, let alone explicitly? Seems like context would be key. Creative arguments on sponsorship/endorsement confusion notwithstanding, I don't think folks view products/marks depicted in artistic works shown as part of a formal display the same way as products/marks shown in traditional commercial advertisements. The LV/Hyundai case comes to mind (although I never bought the confusion theory there). Either way, that case is probably the outer limit of what can plausibly amount to actionable sponsorship confusion.

Who knows though. There's probably some blackmagic Hal Poret-designed survey supporting Hershey Co.'s hypothetical confusion claim here.

Rebecca Tushnet said...

I think that's right but I note that the Gordon court suggested that a painting could be explicitly misleading--though it assumed that it would be misleading because of the placement of a trademark in the place signatures usually appear. The court didn't explain that it was adding in the context--the placement of the mark within the painting--to derive its result and it generated uncertainty by equating a trademark with a signature, which really could be "explicitly" misleading in my opinion.

Anonymous said...

I take it you're referring to the Disney example. To the extent that example works (and setting aside your point about conflating TMs with signatures), it strikes me as not very illuminating. Disney was a man who himself made creative works. Drawings/paintings of Mickey Mouse signed by "Disney" are real things (I believe my law school library had an original drawing on display somewhere). I could get on board with the idea that a consumer might see such a painting with "Disney" at the bottom and believe there's a connection (to him or the modern company). But does that really hold with a painting of a Reese's or Snickers signed by "Reese" or "Snicker"? I have a hard time buying that. Hershey's, as far as I know, has never been known as a purveyor of anything close to what is legally understood as "artistic works."

Maybe the example made sense for Gordon since the cards weren't too different from the original work (i.e. they were essentially creative works derived from an earlier creative work). I've always thought Rogers shouldn't apply in that context, so the Disney example still isn't doing much for me. The whole point of the balancing behind Rogers is put a thumb on the scale for "expressive" speech vs. "commercial" speech (set aside the issues with the labels "expressive" and "commercial") because on is supposed to be more valuable than the other. I get caught up on the "vs." part. When it's "expressive" speech vs. "expressive" speech, why are we still putting a thumb on the scale? I'm not saying there couldn't be reasons, but I'm not aware of any opinions actually grappling with the issue. Cliff Notes gave us the distinction for title vs. title cases, but I don't think that fully explains/addresses why Rogers should or shouldn't apply in a case like Gordon. Perhaps my conceptual structure is flawed.

A whole different can of worms from the original point of your post, to be sure.

Rebecca Tushnet said...

I basically agree, which is why I think the painting analogy was extraordinarily flawed: the punchline of a joke in a greeting card has a completely different social function than a signature on a painting, and thus shouldn't be considered "explicitly misleading." Gordon v Drape is evidence that we would be better off with the Second Circuit approach of Cliffs Notes in (supposedly) expressive work v. expressive work cases, which at least doesn't treat all elements of expressive works, including their full content, as potentially trademarks but focuses on title/cover.
That said, I do think that Cliffs Notes is right: there's a good argument for being extra hesitant to impose liability when the defendant's use is in noncommercial speech/the expressive content is the product being sold, even if the plaintiff's mark is also for noncommercial speech. In other areas than IP, we worry about government intervention into the marketplace of ideas even through upholding private causes of action and the logic seems the same here.

Anonymous said...

Ah, well I have to agree with your ultimate point, which I take to generally suggest IP law shouldn't be used to prevent "expressive" speech. FWIW, I personally would like to see "expressive" speech defined much broader than courts have so far allowed.

I suppose the Rogers rule succeeds at that, but by modern doctrine, it also seems like the rule is pretty unsustainable. There's no textual basis to require "explicitly misleading" conduct before imposing liability. I think I'd favor a totality of the circumstances approach (like almost everything else in TM law) that examines the level/nature of the alleged confusion. That approach could filter out cases where the claim is premised on endorsement/sponsorship confusion since those cases almost always rely on a survey with zero evidence of actual confusion.

It could also assess the value of the so-called "expressive" speech rather than rely on the "artistic work" proxy, which I tend to think should be relevant. You might say we don't want judges making subjective assessments on the value of speech, and while I don't disagree, I've never found that answer entirely satisfactory. The Bad Spaniels toy and a Federico Fellini film are not the same!

Rebecca Tushnet said...

I'm not a fan of the totality of the circumstances approach, because it is a recipe for suppressing noncommercial speech both by judges who don't like the expression (Balducci) and before a ruling on the merits because the multifactor test can rarely be evaluated on a motion to dismiss, meaning that an artist has to be willing and able to get to summary judgment at least. I take the point about textualism but barely any modern TM doctrine has a textual basis; if we accept that the Lanham Act left space for common law judging to continue, then Rogers is simply an example of that.

Without Rogers, and with applying TM to noncommercial speech, we have to confront whether it is constitutional to apply content-based regulation of this kind to noncommercial speech, and mere falsity (even if present) isn't enough to justify the regulation, as we know from Alvarez. Now that irreparable harm is presumed, and there's no harm requirement in the prima facie case for infringement, I don't think the Lanham Act can survive strict scrutiny as applied to noncommercial speech. Rogers is thus a doctrine of constitutional avoidance, though it might not go far enough!