The Museum of Modern Art in New York City, commonly known as “MoMA,” has sued a cafe and art gallery, MoMaCha, also located in New York City. A couple months ago, MoMA filed a complaint in federal court against MoMaCha, asserting claims of trademark infringement, trademark dilution, and unfair competition. A few days after filing the complaint, MoMA also filed a motion for a preliminary injunction. The case is The Museum of Modern Art v. MoMaCha IP LLC et al., No. 18-cv-03364-LLS (S.D.N.Y.)

MoMaCha’s cafe and art gallery offers matcha green tea along with displays of modern and contemporary art. Similarly, MoMA is a museum that displays works of art, and also offers cafe services, in the same area of New York City. The complaint asserts that the parties’ marks are “extremely similar” because they both share the “MOMA” letters, they are both displayed in black-and-white text, and have similar capitalization, in that the “o” is lowercase and the second “M” is uppercase. Shown below are the parties’ stylized/design marks.In response to MoMA’s motion for preliminary injunction, MoMaCha argued that its name is not similar in look or meaning to MoMA’s name; rather, it is a combination of the words “mo” and “matcha” tea, creatively suggesting “more tea.” Furthermore, after the filing of the lawsuit, MoMaCha asserted that it would reduce any possibility of confusion by changing the style of its name to be all capital letters, “MOMACHA,” and by adding a disclaimer to its doors, menus, and website stating, “We have no affiliation with the Museum of Modern Art or any Museum.” (Their current website already shows these changes.) Additionally, MoMaCha argues that MoMA’s mark is weak and therefore entitled to only narrow protection, because it is simply “four letters written in black and white” which are nearly identical to “the commonly used Franklin Gothic font.”

MoMaCha’s arguments, and its voluntary re-design and disclaimer, are creative. But courts have held that disclaimers are not necessarily sufficient to avoid a likelihood of confusion–and sometimes disclaimers can even add to confusion. MoMA might have a difficult time winning a preliminary injunction, based on the high standards that are applicable. Nevertheless, the allegations of the complaint are compelling, based on the similarity of the marks and the relatedness of the parties’ goods/services that are offered in the same city.

How do you think this one will turn out? The briefing on MoMA’s preliminary injunction motion was completed last week. The court denied MoMA’s request for an oral argument, so a decision could be issued at any time, perhaps within the next month or two. Stay tuned for updates.

 

–James Mahoney, Razor’s Edge Communications

In one of the all-time great holiday films, “A Christmas Story,” Ralphie turns in a paper that he’s very proud of. He dreamily envisions his teacher’s ecstatic praise of “A+++++!!”

We’ve all felt that way. And, like Ralphie, we’ve all felt the sting of reality.

I thought about this recently when I had the good fortune to be among the photographers invited to exhibit a single image in a pop-up show. The collection was eclectic. All the shots were quality, though some had me scratching my head over why anyone would consider it even A-, let alone buy it.

It was the most recent reinforcement of something I realized a long time ago: no one makes anything that everyone loves, particularly in the creative arts. (The tremendous photographer Arno Minkkinen wrote, “Art is courage made visible,” to which, I’ll add “when you put your work out there for any idiot to comment on.”)

We tend to think that people who like something that we consider to be gauche or shabby or whatever, must be the thin lunatic fringe who have zero taste or aesthetic sense. But I suspect the reality is that even the most widely regarded “thing” is esteemed by only a sliver of the population.

That’s probably where the proverb “A job well done is its own reward” came from, and that’s certainly true. Even so, it’s nice to get an A+++++ once in awhile.

-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:

Chinatown / The Chinese translation of the trademarks from Mehmet Gözetlik on Vimeo.

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.

In other prints, “Car” replaces “FORD,” and (my favorite) “Caramel Macchiato” replaces “STARBUCKS.”

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?

 


  1. The remaining eight prints — featuring logos for 7-ELEVEN, Lufthansa, and Chiquita — are not listed for sale, but it’s unclear whether any of these companies have taken any action.
  2. I’d be very impressed indeed if Mr. Gozetlik had actually obtained all 20 licenses!

I am a huge fan of Banksy, the faceless graffiti artist from Great Britain with a wry sense of humor and an affinity for social commentary.  Before I was introduced to Banksy and other graffiti artists, “graffiti” was merely unattractive gobbledygook resembling children’s handwriting spray-painted on walls, bridges, stop signs, and train cars.  But Banksy and others take “graffiti” to new heights – in some cases, literally.

If you are the creative type and you haven’t watched his Oscar-nominated documentary, Exit Through the Gift Shop, I highly recommend putting it into your Netflix queue.  Banksy is a ballsy genius – he once painted murals on the West Bank barrier in Israel and has personally hung his own framed art in world-renowned museums as a prank.  His work has fascinating legal implications involving ownership rights and copyright law (not to mention that he’s vandalizing property), which I plan to explore these issues in future blog posts.

With the Olympics in the graffiti art capital, I expected to see several appearances by Banksy.  And he didn’t disappoint.  Just check out his website.  The Olympics Committee rules with an iron fist on the use of its trademark rings and flame, and due in part to the Olympic attention, many graffiti artists had their work painted over. Yet Banksy installed on a wall somewhere in London a javelin thrower hurling a missile with no country name just the five Olympic rings on his uniform.  Jonathon Keats of Forbes magazine called this image “the most iconic image of the Summer Olympics.”   And it’s a beautiful piece of …graffiti.

Mr. Keats concluded that Banksy deserves a gold medal, and I couldn’t agree more.  He gets a 10.0 from me.  Banksy is one icon in a new era in art – like a Warhol, a Picasso, a Dali, a Monet.  His work is intelligent, edgy, humorous and provocative – and most of the time installed illegally.  And in the event Banksy reads this, I would love it if he sent me two signed prints (one for my sister) or some Lady Di Notes too!  Check out his work and let me know what you think.