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5 Art & L. 32 (1979-1980)
A New Weapon for Artists' Rights: Section 439(a) of the Lanham Trademark Act

handle is hein.journals/cjla5 and id is 34 raw text is: Volunteer Lawyers for the Arts obligations on Egan which can only be regarded as dealer was obligated to inventory the works All of these fiduciary in nature - he agrees to accept the works, to obligations are reflective of and consisttnt with a properly prepare them for sale and exhibition, to use standard artist - art dealer consignment aangement his best efforts-to .sil-the works at fair-pricel and pay Accordingly, there is a conflict on the face of the May decedent one half of the selling price received, without 1963 -agreement between the sale provisioips of deducting therefrom aqy expenses incurred by paragraphs 1 and 3 on the one 'hand and the con- respondent in connection -with his fulfillment of the signment provisions of the recitals and paragraph 2 on foregoing contractual obligations. Furthermore, the art the other. Trademark A New Weapon for Artists' Rights:' Section 439(a) of The LanhamTrademark Act by David S. SoKolow Section 43(a) of the.atnham Trademark Act, has become an Increasingly Im- portant weapon In recent years for artists seeking to protect their reputations-and the integrity of their works, Originally enacted to broaden the scope of claims for false advertising, which was severely restricted at common law and under-the prior federal trademark statute, 2 section 43(a) has been liberally construed by the courts since 1954 a% a national law of unfair competition3 encompassing cases far beyond the purview of Its drafters. This judicial expansion of the reach of section 43(a) is of particular significance to artists In every field - to- writers who seek to protect their literary works from unauthorized alteration,' to artists who want to prevent the reproduction of their' paintings under the name of another, or to singers who want to be free from promoters' rereleasing old albums with recent photographs on the cover, to name just a few examples.. Section 43(a) protfibits the use of a false designation of origin, or any false description or representation In con- nection with any goods or services which are Introduced in commerce.4 This might include a record album con- taining 24 songs by 24 different artists with a large photograph of Barbra Strelsand and the legend Strelsand's latesti on the album cover. A plaintiff bringing an action under section 43(a) need not show that the defendant had an intention to deceive 'the public; the likelihood of public confusion rqther than the willfulness of the defendaht Is the litmus of anaction under section 43(a). In other words, if the record promoter had Inadvertently, rather than Intentionally, used Streleand's photograph (an unlikely possibility), Strelsand could still sue him under section 43(a) so long as she could show that the public was likely to be confused as to the contents of the album. Moreover, section 43(a) explicitly provides fora private cause of action by any person who believes that he is or is likely to be damaged by the use of any such false description or representation.6 This ianguage has been construed by the courts to mean that the plaintiff need not be in, direct competition with. the defendant in order to have sufficient likelihood of damage to bring Suit, In addition to Strelsand herself, heIr agent, manager or recording company could presumably sue -under section 43(a). Some courts would even allow consumers to sue, provided they could demonstrate the requisite injury. 7 At common law, an action for false advertising was available only where plaintiff could demonstrate that the defendant was passing off his inferior goods as plaintiff's. Section 43(a) con- tained .no such restriction; yet, for prac- tically the first decade after the passage of the Lanham Act, it was held that section 43(a) should be applied only In cases that involved passing off. In a landmark case, hQwever, L'Alglon Apparel, Inc. v. Lana Lobell, Inc., 8 the Third Circuit refused to read a passingoff limitation into section 43(a). The court adopted a broad for- mulation of the remedial nature of section 43(a): ,It seems to us that Congress has defined a statutory civil wrong or false representation of goods in commerce and has given a broad class of suitors Injured or likely to be.injured by such wrong the right'to relief in the federal courts. 9 Following the lead of the Third Circuit in L'Alglon, other courts have generally construed section 43(a)10ln a liberal fashion. Most notably, the courts have held that plaintiff need not hold a registered trademark to bring suit under section 43(a). - This. is especially Im- portant in the case of artists, like Streisand, who do not trademark their names and faces. However, it Is generally held that section 43(a) will protect unregistered marks only if they have acquired secondary meaning, that Is, if they have attained distinctiveness for the 32 public as identifying a particular source of. manufacture or creation. Streisand could undoubtedly show that her face and her name had acquired secondary meaning for the record-buying public.' To prevail In a section 43(a) action, plaintiff must show, that defendant's rdpresentation Is false or misleading. It, need not literally be false, so long as It creates a false Impression or has the tendency to deceive a substantial portion of its audience. 1 Even If Strelsand were one of the 24 artists who sang on the record, the coyer creates the misleading impression that-it is St'eisand's latest album. In addition, plaintiff must' demonstrate that the misrepresentation is 'material to a consumer's purchasing decision. Streisand would have to show that people would purchase the record thinking It was a new Strelsand album. Finally, plaintiff must have been Injured or be likely to be Injured by defendant's conduct. If the public were dissatisfied with the record, they might refrain from purchasing Streisand's future albums, and she would suffer the lost profits. The liberal construction accorded section 43(a) and the relatively minimal requlrements imposed on a section 43(a) 'plaintiff mean that section 43(a) is generally available in a wide variety of claims - for false advertising, for unfair competition, and even for the violation of an artist's moral rights.12 The varying types of clirms that artists have brought under section 43(a) are examined below. PROTECTION OF NAMES AND DISTINGUISHING CHARACTERISTICS To anyone who goes to the movies, listens to the radio, or watches television, the plaintiffs of virtually every case mentioned below will be familiar. Prac- tically ,every artist who has sought to prevent the misuse of his name or work David S. Sokolow is a graduate of Columbia Law School and participated in the VLA-Columbia Law School art law clinical pbogram in 1979.

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