Basically, I plan to use, not the Mona Lisa, particularly, but just for example, as a trademark. Can I use a famous Old Master’s painting or some derivative of one, as a trademark?
Thanks,
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Oops! I forgot to add: If I cannot, how about something like a pixillated version?
Thx
Yes, the Mona Lisa is in the public domain. You can use it for whatever you want. Even with todays over-restrictive OP laws, 500 years is pretty well out of any copyright window.
Some museums try and copyright particular photographs of works in their collections. There’s a lot of debate on whether this is ligit, but to be on the safe side, I’d make sure your using a photograph in the public domain (ought to be trivial to find in the case of the worlds most famous painting).
Dutch Masters cigars famously uses Rembrandt’s “The Syndics of the Drapers’ Guild (De Staalmeesters)”.
You would have to make sure that no one else is using it as a trademark in your particular category, even if the image itself is no longer under copyright.
I wonder - can you actually trademark the Mona Lisa in this situation, or just use it in the same way you would use a trademark? It seems to me that it would be very easy to challenge that kind of trademark.
That depends on what you mean when you use the term “trademark” as a verb. “Trademark” as a verb has no meaning in trademark law. “Trademark” is a noun. The meaningful verbs are “use” and “register.”
Now, I’m assuming that when you ask “Can you actually trademark the Mona Lisa?” What you mean to ask is “Can you actually register the Mona Lisa as a trademark?” Or, more precisely, “Can you actually register a trademark that incorporates an image of the Mona Lisa?”
You might now ask, “If you knew what I meant to ask, then why are you nitpicking?”
The reason is that by equating the verb “to register” with the verb “to trademark,” you are actually misunderstanding the significance of registration and you’re also misunderstanding the source of trademark rights.
Registering a trademark gives you certain significant advantages but, and this is important, registration is not the source of trademark rights.
The source of trademark rights is use in commerce. And before you would be granted a trademark registration, you would have to show that you are using the purported trademark in commerce as an indicator of the source of goods or services.
So, if you want to use a trademark that somehow incorporates an image of the Mona Lisa, the first step is to start using it as a trademark. Then, if you and your trademark lawyer believe that registration is to your benefit, you may register it. In the United States you can register a trademark at the federal level and also at the state level. But even if you don’t register it, you can have enforceable rights in an unregistered trademark under both state and federal law.
So, using the word “trademark” as a verb leads you in the wrong direction.
Now, what might make using any specific trademark a bad idea? –
(1) If the mark you are using creates (a likelihood of or actual) confusion amongst consumers with respect to a trademark by a senior user. That could lead to a trademark infringement claim against you.
(2) If the mark you are using dilutes by blurring or tarnishment a “famous” trademark.
Now, those are both sources of danger in trademark law. You’re also asking about a source of danger from copyright law. So, we’ll add –
(3) If in using the mark, you are making unauthorized copies of an original, creative work of expression protected under copyright law.
Now, for you to be subject to a claim of copyright infringement from this direction, there would have to be someone who holds an enforceable copyright interest in the Mona Lisa. In this case, as comments above have pointed out, the Mona Lisa is in the public domain, so there is no risk of liability for copyright infringement.
Now, say you’ve established use in commerce for your Mona Lisa mark, and then you decide you want to obtain a federal registration for it. What happens now?
Well, in order to get a trademark registered under the Lanham Trademark Act of 1946 you have to show:
(1) That you are using it in commerce
(2) as an indicator of the source of goods or services
Now, even having shown these things, there are some things that will prevent the Patent and Trademark Office from issuing a registration. But, remember, failing to get a registration does not mean you are not allowed to use the trademark. It just means you don’t get the extra advantages of registration. You still can have unregistered trademark rights under state and federal law.
So what are the things that will prevent registration? There are several listed in Section 2 of the Lanham Act, 15 U.S.C. §1052:
Registration should be denied when a purported trademark:
(1) “consists of or comprises **immoral, deceptive, or scandalous **matter,”
(2) consists of a “matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute,”
(3) consists of “a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used,” (i.e., geographically misdescriptive)
(4) “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof,”
(5) “consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent,”
(6) consists of “the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow,”
(7) “consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive,” (i.e., causes confusion with another registered or unregistered trademark)
(8) “When used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them,” (to me this seems repetitive, but maybe I’m missing something)
And there are three more reasons that might get a registration denied:
(9) The purported trademark consists of a mark that “when used on or in connection with the goods of the applicant is merely descriptive [i.e., the mark is a generic term for the goods or services you’re using it for] or deceptively misdescriptive of them,”
(10) The mark is “used on or in connection with the goods of the applicant is primarily geographically descriptive of them,” and
(11) The purported mark “is primarily merely a surname.”
However, these three can be gotten around if you can show that your trademark is nevertheless “distinctive.” That is, that is, despite being generic, deceptively misdescriptive, primarily geographically descriptive, or a surname in a purely literal sense, that your use of the term has resulted in the public’s understanding of the mark as having a secondary meaning and thus has acquired distinctiveness. That is, the public nevertheless recognizes it as a source indicator merely because you’ve been using it as such.
Now, if a registration is issued, someone else who holds rights in a trademark might bring an action in court arguing that your registered mark creates confusion with respect to his or her senior rights or dilutes his or her “famous” trademark by blurring or tarnishment.
If a registration is not issued, that still doesn’t mean that you can’t use your Mona Lisa trademark unless, again, someone comes along and claims that your use is infringing or dilutive of a senior user’s “famous” trademark rights. And if that doesn’t happen, and you go along using this trademark, you can still enforce your unregistered trademark rights under state and federal laws. So if someone else comes along and uses a Mona Lisa trademark in a way you think infringes or dilutes your unregistered Mona Lisa trademark (provided it has become “famous”), you can bring claims to make them stop.
So, going back to the question of the Mona Lisa as a trademark, I would say that your only real concern is interfering with the trademark rights of someone else who is already using the Mona Lisa in his or her trademark.
I went to your link. I had no idea there were “sport” cigars. 
I think this is an important issue.
First, are you allowed to use a famous painting that’s in the public domain for commercial purposes? Second, can you then prevent other people from using that image for commercial purposes? If I’m understanding you correctly, the answers to those questions are yes and partly yes.
Hogarth gave the example of Dutch Masters using a Rembrandt painting on their packaging. If I’m following you correctly, Dutch Masters is allowed to do this. And now that they are doing this, they could stop another cigar company from using that same painting on its boxes.
But their exclusive use of the painting only applies to cigars or other related products. If a flower company wanted to use Rembrandt’s painting to sell tulips, it could do so because cigars and tulips are two distinct products.
To be precise, I’m saying that you can incorporate an image from a famous painting into a trademark. I won’t speak to other commercial purposes.
Correct.
Correct.
I would answer this with a “probably” or a “maybe.” It depends on a lot of factual questions that I don’t have the answers to. But, yes, in principle, if Dutch Masters uses the Rembrandt painting only for cigars and nothing else, and the flower company uses the Rembrandt painting only for flowers and nothing else, and the Dutch Masters trademark is not “famous.”
Wow! A lot of great info!
Thanks everybody!
Follow on question…if handsomeharry started using the Mona Lisa image as an identity mark for his company and his business became wildly successful, would there be anything to stop me from using the Mona Lisa image for my company as well and diverting people to my business based upon the image…since image is part of public domain?
Another thing to be aware of is the copyright of the picture of the Mona Lisa. Unless that picture of the painting is also in the public realm, the holder of the copyright - the photographer, whoever commissioned the photographer, or the publisher of the photograph - has the right to decide who may use it and under what circumstances.
You can’t just scan a copy of the Mona Lisa from an art history textbook or a postcard from the Louvre. You’d either have to make arrangements with the photograph’s copyright holder, or you’d need to go to the Louvre and get a picture of it yourself.
You’d really be better off by starting with the image and then making enough changes to it (through the incorporation of other elements like company name, giving her a mustache, or altering it to look like a Warhol silkscreen) that it becomes your own work.
Copyright and trademark law operate separately. Just because something is allowed by copyright law doesn’t mean you get a free pass to violate trademark law.
So regardless of whether your use of an image is allowed by copyright law, that use might be blocked if it violates trademark law, if that use is a use in commerce as a source identifier that creates a likelihood of confusion with someone else’s trademark.
No there isn’t. A photographer holds rights in the photograph he or she made. You can make your own photograph if you don’t want to get permission.
Somebody should have explained this concept to Richard Prince.
Yes, someone is trying very hard to do that. We have yet to see whether the message will get through.
Too late, someone has already done that: http://monalisasov.com/
There are hundreds of guest houses in Nepal called Mona Lisa, not sure why it is so popular but there seems to be one in every town.
It’s not “too late.” The question is whether the OP’s use creates a likelihood of confusion with these other uses.