Cautionary Tale: Marketing “Street Cred” – The Katten Kattwalk | Issue 23 | Katten Muchin Rosenman LLP
Over the past year, I have closely followed the increase in litigation by artists against retailers – clothing brands, automotive brands, and food and beverage chains – for alleged copying of their artwork. distinctive in fashion designs and marketing campaigns. So-called “street performers” – many of whom began to illegally “mark” subway cars, bridges and viaducts, but have since gained some level of legitimacy – are largely responsible for this recent trend.
A growing list of retailers have found themselves trapped in disputes with street performers. The list includes American Eagle Outfitters, Coach, Fiat, General Motors, H&M, Epic Records, McDonald’s, MercedesBenz, Moschino, Roberto Cavali and Starbucks.
More often than not, artists make claims of copyright infringement, either because their works have allegedly been incorporated into the design of clothing or other merchandise, or because publicly available photographs of their works have been made. included in advertising material.
A notable case concerns Christophe Roberts, an established artist who also possesses great credibility on the streets. In March, he filed a lawsuit against Puma North America, claiming that Puma had infringed its trademark.
Prior to an undisclosed settlement, Roberts claimed that Puma had used its hallmark “Roar” “in major national advertising campaigns targeting its products to National Basketball League consumers.” Roberts v. Puma North America, Inc., case n ° 21-cv-2559 (SDNY filed on March 25, 2021).
The Puma case stands out for two reasons. First, Roberts is not just a tagger known only for street art. On the contrary, he is widely recognized as a “multidisciplinary” artist who works in sculpture, graphic design and painting. He has received commissions from a number of prominent clients and his works have been exhibited in many venues and events including Lyons Wier Gallery in New York, NBA Allstar Week in Chicago, NBA Art Week in Vancouver. , Widen + Kennedy in Portland, New Gallery of Modern Art in Charlotte, Long View Gallery in Washington, DC, Mocada Museum in Brooklyn and Royal Ontario Museum in Toronto.
Roberts is particularly known for a series of sculptures he created from recycled Nike shoe boxes. It is featured on Nike’s website and in the retailer’s flagship store in New York City, as well as at the Staples Center in Los Angeles. For this reason, Roberts is also well known among sneakerheads, or people who collect and trade sneakers as a hobby and who are generally familiar with the history of athletic shoes. (For more information, visit https://en.wikipedia.org/wiki/Sneaker_collecting.)
Second, the Puma case is special because Roberts did not make a claim for copyright infringement in his work. Instead, he sued for trademark infringement.
Roberts maintained that he was using his “Roar” brand as “branding” and “business card”. Its trademark consists of a hand-drawn outline of a set of serrated teeth and is registered with the United States Patent and Trademark Office. Roberts alleged that he used the mark extensively, not only in his artwork and art installations, but also on social media and in the sale of t-shirts, jackets, branded hats, posters and pins.
According to Roberts, on or about June 2018, Puma began to publicly use the Roar mark on merchandise and in the marketing and promotion of Puma merchandise. Specifically, it was alleged that Puma had mistakenly appropriated Roberts’ “Roar” mark by extensively incorporating a similar calligraphic ink outline and contoured representation of teeth into various lines of its clothing and other products.
Roberts sought, among other remedies, a permanent injunction prohibiting Puma’s use of the “Roar” mark, a court order ordering the destruction of all Puma merchandise, signs, advertisements, labels and packaging bearing the “Roar” mark. And unspecified damages, including restitution by Puma of any profit attributable to its use of the “Roar” trademark.
In April, Roberts filed a motion for a temporary injunction and a preliminary injunction to bar Puma from the continued use of its allegedly infringing design on clothing and in marketing and advertising during the litigation. Puma opposed the motion, arguing, among other things, that it had developed its tooth designs as part of “an ongoing focus on feline imagery, which has become closely associated with the brand known through its logo. world famous leaping cat “. According to Puma, “the designers involved in this project did not know Roberts, did not know his art, and did not copy his work, but instead developed their own different and unique approach to feline teeth.”
Following arguments, the court on May 12 dismissed Roberts’ request for a temporary restraining order and preliminary injunction. He found that Roberts did not demonstrate a likelihood of success on the merits of his claims because Puma’s use of its own tooth designs was unlikely to lead consumers to believe that Puma’s designs were produced by or affiliated with Roberts.
For all intents and purposes, the denial of an TRO and the preliminary injunction took all air out of Roberts’ trial. Puma filed a response and counterclaim to Roberts ‘complaint, but soon after, the parties negotiated a confidential settlement agreement and stipulated that Roberts’ action be dismissed.
Without knowing the terms of the settlement, it’s hard to assess how positive the outcome has been for Puma. Nonetheless, the lawsuit reminds all businesses that seek to generate “street cred” by incorporating contemporary images (such as graffiti-like elements) into their fashions and advertising campaigns that they must proceed with caution and that an experienced lawyer assesses the legal risks. before proceeding.
“Game with graffiti: the use of street art on advertising products involves significant risks” Kattison Avenue, summer 2020
“The North Face’s ‘FUTURELIGHT’ clothing line undermines the graffiti artist’s name and distinctive ‘Atom’ design” Kattison Avenue, Spring 2021
Read Katten Kattwalk | Number 23, please click here.