Graffiti Artist vs. North Face: What is Fluid Trademark?

 by Shekinah Apedo

In January 2021, renown New York graffiti artist, Leonard McGurr a.k.a. Futura, filed a trademark lawsuit against apparel company, The North Face, for unauthorized use of his atom design on their product line, FUTURELIGHT™. Due to not registering a federal copyright for the design, Futura couldn’t claim copyright infringement, so he sued under unfair competition and claimed fluid trademark. 

What are those legal terms? Unfair competition is where one business intends to induce consumer confusion by using the similar mark of another. Fluid trademark is a mark, logo, or design that has variations, but maintains the underlying design. The best example of a fluid trademark is the Google Doodle. When the Doodle is used to commemorate a holiday or famous person on the homepage, the Google trademark is still recognizable. 

In March, North Face filed a motion to dismiss stating that Futura's use of atom designs “are merely ornamental and fail to function as a trademark,” that his designs are “artwork, not source indicators,” and his “inconsistent use” and “lack of use” of the designs “undercuts the claim that the designs function as a trademark.” Essentially, because Futura doesn't have a claim to copyright, the defense attacked his claim at trademark, saying he never ascribed the atom design to a specific service (i.e. art services) or good (i.e. t-shirt, sketchbook), as required for trademarks. To break it down, a trademark is a symbol or logo that distinguishes a product from other sources. For example, Nike's swoosh distinguishes its sneakers from Adidas runners. Nike is the source, the sneaker is the good, and swoosh identifies Nike as the source. If Futura doesn't meet the requirements of a trademark, then North Face could not have been on notice that it existed.

In April, Judge Stanley Blumenfeld granted the motion to dismiss, agreeing with North Face, that Futura hadn't sufficiently established that the atom design was a trademark. In a frank opinion, the judge stated, "Plaintiff's novel theory of fluid trademarks, if permitted as proposed here, would give new meaning to federal trademark law with far-reaching consequences." Responding to Futura's comparing his signature styles to Van Gogh and Jackson Pollack, the judge wrote: "While Plaintiff argues that signature artistic elements like Van Gogh’s haystacks or signature styles such as Jackson Pollack’s ordinarily are not source identifiers for the purposes of trademark law, he concludes that contemporary art, especially street art, is different." In short, the judge found that Futura didn't use a consistent underlying design that's required for fluid trademarks, rather he only used variations.

In a turn of events, despite having a good case, The North Face released a statement on June 30th agreeing to discontinue the FUTURELIGHT logo. This is the right PR move.

"While The North Face is confident there has been no infringement in this case, we are committed to supporting creative artists and their communities. As a sign of that commitment and a sincere gesture of goodwill, we will begin to phase out and discontinue the use of the FUTURELIGHT™ circular nanospinning logo design out of deep respect for Futura and his work."

The contents of this blog are for informational purposes only and may not be relied on as legal advice.