The Battle for Frida: Art, Activism, and Assets Clash in Trademark Case

Dana Justus, counsel in Sterne Kessler’s Trademark & Brand Protection Practice, spoke to World IP Review on a recent U.S. appeals court decision in a trademark dispute over commercial use of Frida Kahlo’s name and likeness.

Justus explained that there is a risk that trademark claims can become a “back door route” to controlling how a historical figure’s identity is used commercially. She explained that this approach can achieve, in theory, “the same result as a right of publicity claim while avoiding the limits imposed by that body of law such as, in many states, its expiration at death.”

She added that the overlap poses questions about personality-driven brands and how long their commercial value can be exclusively controlled. “When federal trademark rights and state publicity rights are both asserted over a historical figure’s identity, courts must be mindful that the trademark claims are not just trying to skirt the limits imposed by publicity law.”

“The right of publicity has built-in boundaries (such as, in many states, expiration at death) that reflect a deliberate policy choice about how long a person’s identity can be commercially controlled.” She continued, “If a trademark claim is more of an attempt to enforce publicity rights past their expiration, the threshold question should be whether there is a legitimate likelihood of confusion.”

“Multi-jurisdictional IP disputes do not insulate U.S. trademark claims,” Justus adds, “In the Kahlo decision, the Eleventh Circuit rejected the defendants’ arguments that the Florida lawsuit was unlawful due to the parallel pending litigations in Spain and Panama, emphasizing that foreign lawsuits cannot adjudicate US trademark rights.”

“This is a succinct reminder to companies involved in international IP disputes that foreign proceedings cannot moot or preempt U.S. claims.”