-Wes Anderson, Attorney
Famous brand owners, take note: a Turkish artist and designer named Mehmet Gozetlik recently released “Chinatown,” a mesmerizing series of photographs in which neon lights depict famous design marks, with the word mark replaced by its generic wording in Chinese. Is your brand one of them?
The Pepsi logo, for example, has been recreated in a meticulously crafted neon light, with the Chinese characters for “diet cola” appearing in the spot reserved for “PEPSI.” See for yourself in the video below:
According to the artist:
‘Chinatown’ pushes viewers to ask themselves what it means to see, hear, and become fully aware. ‘Chinatown’ also demonstrates our strangeness to 1.35 billion people in the world, when you can’t read Chinese.
You can see the full gallery of photographs on Gozetlik’s website. In all, 20 famous design marks are featured, each with generic Chinese lettering. Twelve of the prints are currently for sale at “Eyestorm,” a gallery with locations in London and New York.1
If you’re considering parting with $740 for a print, I suggest getting an order in now — if the brand owners fortunate enough to be featured take action, this could be a limited time offer.
Things get dicey where artistic works use trademarks, and the Lanham Act intersects with the First Amendment. The Lanham Act prohibits the use of a word, term, name, or symbol that “is likely to cause confusion, or to cause mistake, or to deceive as to the . . . origin, sponsorship, or approval of his or her goods, services, or commercial activities.” 15 U.S.C. § 1125(a)(1)(A). In other words, the central question is whether consumers would be confused as to whether Pepsi et al. sponsor or approve of Gozetlik’s artwork.
On the other hand, courts have found that the public interest in free expression can trump consumer confusion. The University of Alabama learned this three years ago, when it sued an artist who painted and sold images of Alabama Crimson Tide football games. These images, which sought fidelity to real-life events, contained the Tide’s iconic uniforms and designs. The Eleventh Circuit found in favor of the artist, and held that courts “should construe the Lanham Act narrowly when deciding whether an artistically expressive work infringes a trademark.” These so-called “artistically expressive” works do not violate the Lanham Act “unless the use of the mark has no artistic relevance to the underlying work whatsoever.”
Other brand owners choose to embrace artistic use of their marks. In response to Andy Warhol’s iconic Campbell’s Soup Cans painting, the Campbell Soup Company wrote Warhol a glowing letter in 1964 wishing him “continued success and good fortune” — and sent him some tomato soup to boot!
This presents brand owners with an interesting choice to make: pursue, or praise? No doubt, the photographs (and accompanying video, which earned a Vimeo “Staff Pick”) are gorgeous, and present a provocative message on globalization and language. The rave reviews from other corners of the Internet suggests that we trademark lawyers are just wet blankets.
But no one can deny that the photos’ recognizability — and indeed, their entire premise — starts with appropriating famous design marks. Nowhere on Gozetlik’s website (or Eyestorm’s) is there any mention of a license to use these marks.2 The commercial nature of Gozetlik’s work is clear — and by selling to U.S. consumers through a gallery with a U.S. location, the Lanham Act directly applies.
Gozetlik’s replacement of the respective word marks with generic wording is another troubling issue: aside from the general aversion to generic wording, would English-speaking viewers believe they were looking at the Chinese transliteration for “PEPSI,” rather than the accepted translation for “diet cola”? I must admit that, at first glance, I assumed the former.
So, what do you think? Should the brand owners featured in the collection take down “Chinatown”? Or should they back off entirely?
Perhaps most importantly, should Starbucks “pull a Campbell’s” and send some Caramel Macchiatos to the artist?