This case involves two works by the late artist Robert Indiana. The first is the famous “LOVE” image, created by Indiana in the 1960s and brought to life in paintings, as sculptures, and on commercial products (including postcards commissioned by MOMA as early as 1964). The second work, entitled “HOPE,” was created in 2007 and became well-known through its association with Barack Obama’s presidential campaign. Below are images of the two works, from the complaint:

In the 1990s, Indiana entered into agreements with Morgan Art Foundation (“MAF”), pursuant to which he conveyed to MAF all “copyright, trademark, and other rights” in “LOVE,” including the exclusive right to produce and sell reproductions. In 2008, Indiana signed a contract with art publisher Michael McKenzie authorizing McKenzie (and his company) to produce and sell works based on the “HOPE” image. Given the similarity between “LOVE” and “HOPE,” conflict was, perhaps, inevitable.

In the years following Indiana’s death, Indiana’s estate became embroiled in numerous lawsuits involving allegations of forgery, breach of contract, copyright infringement, financial mismanagement, fraud, elder abuse, and more. (See this article for a deep dive.) Most of the issues were resolved by 2023. However, a lawsuit between McKenzie and MAF (and other defendants) wages on. The most interesting part of the lawsuit (IMHO) is McKenzie's claim that the defendants violated the Lanham Act by misrepresenting to the public that “LOVE” remains subject to copyright protection since, as McKenzie puts it, “LOVE” is “in the public domain, not copyrightable and not copyrighted.” Specifically, McKenzie contends that Indiana published LOVE in the 1960s without affixing a copyright notice (which, under the then-applicable 1909 Copyright Act, would have resulted in the work falling into the public domain). McKenzie also claims that “LOVE” would not have qualified for copyright protection in the first instance because “the law will not allow for the copyrighting of a word, regardless of form or aggrandizement.”

How could the copyright status of “LOVE” be the basis for Lanham Act claims? McKenzie’s argument boils down to this:

1. The “LOVE” image and the “HOPE” image are “in direct competition” with each other. 
2. Even though defendants knew at some point that “LOVE” was not protected by copyright, they continued to “fraudulently represent that they had and still have a copyright on the LOVE image.” 
3. These false claims made the “LOVE” image “appear more valuable than the HOPE image given [the “LOVE” image’s] supposedly copyright-protected status” and enabled the defendants to collect millions of dollars in fees from third party licensees and product sales.
4. This conduct injured McKenzie because he was deprived of millions of dollars from licensing “HOPE.”

A person is liable for violations of Section 43(a) of the Lanham Act for using, in connection with goods or services, “any false designation of origin, false or misleading description of fact, or false or misleading representation of fact,” that:

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or (B) in commercial advertising or promotion, [which] misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities. (15 U.S.C. § 1125(a)(1).)

McKenzie alleged that the misrepresentations about the copyright status of “HOPE” constituted a false representation of affiliation under § 43(a)(1)(A) and false advertising under § 43(a)(1)(B).

The defendants moved to dismiss under Rule 12(b)(6), arguing that these claims were foreclosed by Dastar Corp. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). In that case, the Supreme Court considered whether petitioner Dastar had engaged in reverse passing off in violation of § 43(a)(1)(A) when it released (under its own name) a video series about World War II that consisted, almost entirely, of content that had fallen into the public domain without crediting the original producer (respondent Fox). Based on the statutory language and history, the Court held that Dastar's conduct did not violate the Lanham Act's prohibition on false designation of origin because the term "origin" refers to the producer of the tangible goods sold (the video cassettes), not the creator of the underlying content embodied in those tangible goods (the series). Reading the Lanham Act to require attribution to the original creator would, the Court said, lead to “serious practical problems” since multiple creators could plausibly claim to be the “origin” of a creative work like a film (e.g., the screenwriter, the director, the studio, the author of an underlying property upon which the film is based). And, critically, such an interpretation would “cause the Lanham Act to conflict with the law of copyright." The Court elaborated on this point:

“The right to copy, and to copy without attribution, once a copyright has expired, like the right to make an article whose patent has expired – including the right to make it in precisely the shape it carried when patented – passes to the public. In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying. The rights of a patentee or copyright holder are part of a carefully crafted bargain, under which, once the patent or copyright monopoly has expired, the public may use the invention or work at will and without attribution. Thus, in construing the Lanham Act, we have been careful to caution against misuse or over-extension of trademark and related protections into areas traditionally occupied by patent or copyright. The Lanham Act, we have said, does not exist to reward manufacturers for their innovation in creating a particular device; that is the purpose of the patent law and its period of exclusivity. Federal trademark law has no necessary relation to invention or discovery, but rather, by preventing competitors from copying a source-identifying mark, “reduces the customer’s costs of shopping and making purchasing decisions, and helps as a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product. Assuming for the sake of argument that Dastar’s representation of itself as the ‘Producer’ of its videos amounted to a representation that it originated the creative work conveyed by the videos, allowing a cause of action under § 43(a) for that representation would create a species of mutant copyright law that limits the public’s federal right to ‘copy and to use’ expired copyrights." (Citations omitted and cleaned up.)

Judge Jennifer Reardon (S.D.N.Y.) granted the defendants’ motion to dismiss the Lanham Act claims on several grounds. First, Judge Rearden held that Dastar bars claims under § 43(a)(1)(A) “for false representation of affiliation between the author and a distributor of communicative products, even if through a false assertion of license” and that this was precisely what McKenzie had alleged:  i.e., that the defendants had “deceive[d] the general public and the relevant market that they have a copyright to LOVE – i.e., that Indiana (or his estate) provided them with the right to license products bearing the LOVE image." Judge Rearden also found that the defendants' alleged misrepresentation about the copyrightability of “LOVE” were not cognizable under § 43(a)(1)(B) in light of Dastar. As alternate grounds for the dismissal, the court found that McKenzie had not alleged facts to support that the defendants had caused an injury cognizable under the Lanham Act – since he had failed to allege that potential licensees were deceived by the fraudulent copyright” and withheld business – and that the claim was barred by laches. The judge was just not having it.

McKenzie's Lanham Act claims faced significant obstacles. In addition to laches and the causation issues identified by the court, I see several other challenges. First, I think it is possible that some of the sophisticated parties entering into licensing deals with the defendants were aware of the questions surrounding the copyright status of “LOVE,” which had been widely reported. These licensees may have wanted to do business with the defendants – even if “LOVE” was in the public domain – so they could tout that their editions were authorized by Indiana's estate (something that counts in the art world). In addition, it is hardly obvious that “LOVE” and “HOPE” are competitive products, and McKenzie would have had a devil of a time proving that he lost sales of “HOPE” due to the defendants' misrepresentations about "LOVE.” 

Whether Dastar mandates dismissal of these Lanham Act claims is less clear. Unlike in Dastar, this is not a reverse passing off case, and McKenzie (unlike Fox in Dastar) was not leveraging the Lanham Act to try to prevent others from using a public domain work. On the contrary, McKenzie's position is that the world is free to exploit “LOVE” and that the defendants are making false representations to prevent that from happening. It's hard to see how false advertising claims concerning the copyright status of a work of art poses the danger, identified by SCOTUS in Dastar, of creating a “mutant copyright law.” Simply put, McKenzie isn't weaponizing trademark law in an attempt to extend protection for a work that has fallen into the public domain.

Finally, for purpose of the motion to dismiss, the court was required to accept the allegations in the complaint as true, including that “LOVE” is in the public domain. The extent to which different iterations of “LOVE” created by Indiana over the years (including derivatives created after March 1, 1989 when US copyright law did away with the notice affixation requirement) might enjoy some copyright protection – thin as that protection might be (see this post and this one) – is an interesting one that would make a great law school exam question.

McKenzie v. Artist Rights Society, Inc., No. 22 Civ. 1619 (JHR), 2024 WL 4803870 (S.D.N.Y. Nov. 15, 2024)