Cautionary Tale: Commercializing ‘Street Cred’ – The Katten Kattwalk | Issue 23 | Katten Muchin Rosenman LLP

Over the past year, I have closely followed the rise in legal battles brought by artists against retailers – clothing brands, automotive brands, and food and beverage chains – for allegedly copying their distinctive artwork in fashion designs and marketing campaigns. So-called “street artists” are primarily responsible for this latest trend, many of whom initially illegally “marked” subway cars, bridges and overpasses, but have now acquired a certain degree of legitimacy.

A growing list of retailers is caught up 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.

Most often, artists claim copyright infringement either because their work was allegedly incorporated into the design of clothing or other goods, or because photographs of their public works were included in promotional materials.

A notable case is Christophe Roberts, an established artist who also has a high level of street credibility. In March, he filed a lawsuit against Puma North America alleging that Puma had infringed its registered trademark.

Prior to an undisclosed settlement, Roberts claimed that Puma had used its distinctive “Roar” mark “in major national advertising campaigns targeting its products at National Basketball League consumers”. Roberts v Puma North America, Inc., Case No. 21-cv-2559 (SDNY, filed March 25, 2021).

The Puma case is distinctive for two reasons. First, Roberts isn’t just a tagger known only for street art. Rather, he is widely recognized as a “multidisciplinary” artist working in the fields of sculpture, graphic design, and painting. He has received commissions from a number of high profile clients and his work has been exhibited in numerous venues and events including the 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 made from recycled Nike shoe boxes. It can be seen on the Nike website and in the retailer’s flagship store in New York City and in the Staples Center in Los Angeles. For this reason Roberts is also known as “sneakerheads”, or people who collect and trade sneakers as a hobby and who usually know about the history of sports shoes. (For more information, see https://en.wikipedia.org/wiki/Sneaker_collecting.)

Second, the Puma case is distinctive because Roberts has made no claim of copyright infringement in his work. Instead, he sued for trademark infringement.

Roberts claimed that he used his “Roar” mark as his “brand image” and “calling card”. His trademark consists of a hand-drawn outline of a series of serrated teeth and is registered in the United States Patent and Trademark Office. Roberts claimed that he used this mark widely, not only in connection with his artwork and art installations, but also on social media and in connection with the sale of branded T-shirts, jackets, hats, posters and lapel pins.

According to Roberts, Puma began using the Roar mark publicly on merchandise items, as well as in the marketing and promotion of Puma merchandise, from or around June 2018. In particular, it was alleged that Puma improperly appropriated Roberts’ trademark “Roar” by extensively incorporating a similar calligraphic ink outline and contouring of teeth into various lines of its clothing and other merchandise.

Roberts requested, among other things, an injunction banning Puma from using the “Roar” mark, a court order that all Puma goods, signage, advertisements, labels and packaging bearing the “Roar” mark be destroyed and no closer Designated damages, including the skimming off of profits by Puma, which can be attributed to the use of the “Roar” trademark.

In April, Roberts filed a restraining order and injunction banning Pumas from using the allegedly infringing design on apparel, as well as in marketing and advertising during the pending litigation. Puma defied the motion, arguing, among other things, that it developed its tooth designs as part of an “ongoing focus on cat images that are closely related to the brand known for its world-famous jumping cat logo”. According to Puma, “the designers involved in this project did not know Roberts, knew nothing of his art and did not copy his work, but instead developed their own different and unique view of cat teeth”.

On May 12, based on arguments, the court denied Roberts’ application for a restraining order and an injunction. It found that Roberts had no chance of success based on its claims, as Puma’s use of its own tooth designs was unlikely to lead consumers to believe that Puma’s designs were made by Roberts or were associated with Roberts.

In all respects, the denial of a TRO and restraining order took all the air out of Roberts’ lawsuit. Puma filed a response and counterclaim to Roberts ‘complaint, but shortly thereafter the parties negotiated a confidential settlement agreement and agreed to dismiss Roberts’ lawsuit.

Without knowing the comparison conditions, it is difficult to assess how positive the outcome was for Puma. Still, the lawsuit is a reminder to all businesses that by including contemporary imagery (such as before proceeding)

See also:

“Graffiti Gambling: The Use of Street Art on Goods in Advertising Has Serious Risks,” Kattison Avenue, Summer 2020

“The North Face’s ‘FUTURELIGHT’ clothing line is set to violate the graffiti artist’s name and distinctive ‘Atom design’,” Kattison Avenue, Spring 2021

Read Katten Kattwalk | Issue 23, please click here.