Brazilian pop artist Romero Britto is suing Apple, Inc, and two artists, known as “Craig & Karl,” over artwork Apple used in its “Start Something New” campaign. Britto, whose work is characterized by his use of bright colors, fanciful patterns, and happy subject matter, has often been criticized for his overly commercial approach to art, but everyone agrees that he has achieved incredible success in building a brand that is known around the world. In his 8000 sq. ft. studio on Miami Beach and his 30,000 sq. ft. studio in Miami’s Wynwood Art District, Britto has a team of artists realizing his designs. Britto has created thousands of works with dozens of merchandise licensees worldwide on items as diverse as clothing, fashion accessories, luggage, small appliances, and tableware with major companies including The Walt Disney Company, FIFA, and Coca-Cola.
In Apple’s new campaign, Britto sees a blatant rip-off of his signature style. He wants Apple to remove the Craig & Karl images from their campaign which he claims dilutes his brand, as well as receipt of the profits generated from the work, which Britto believes are rightfully his. For those that know Britto’s work, it’s not hard to see why he would be upset. On its face, the case seems easy. Apple used a work in the Britto’s style, without permission. Unfortunately for Britto, style is not copyrightable subject matter, so he has to prove that the Craig & Karl’s artwork was specifically derived from one of Britto’s work, which could be difficult. To hedge his bet, Britto is also trying a different tactic; claiming that his artistic style is so unique and distinctive that it should be protected.
Why is Britto’s Copyright Claim So Difficult?
Britto has the exclusive right over his work and as the copyright holder, can keep anyone from copying, distributing, displaying to the public, or make derivatives of his work. However, the work in the Apple ad may be in the style of Britto, but whether it is derived from a particular Britto work is another story. A “derivative work” is one based upon one or more preexisting works but must be different enough from the original to be regarded as a “new work” or must contain a substantial amount of new material. Look at the works below.
While Craig & Karl’s work uses and eye as a central focus, it isn’t the same eye. As well, certain other elements might be considered similar, but is the entire Craig & Karl work substantially similar to a Britto work? Courts define substantial similarity as “where an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.”
That definition may be vague, suggesting a hard to quantify value somewhere between no similarity and being identical. So for Britto’s legal team, the threshold question is would the jury believe that an ordinary observer would find the work substantially similar to one or more specific Britto’s works would they think it was merely in the Britto style? Based on the images in the complaint, and the fact that there is no Britto image shown in the complaint being compared to the one used by Apple, relying on copyright infringement as the primary cause of action would be a risky tactic. So Britto needed to come up with another approach.
The Trade Dress Tactic
Trade dress is similar to a trademark except trademark is a set of words or a logo, while trade dress is a commercial impression of a design on the market. Trade dress is defined as the total image or overall design or appearance of a product or its packaging, which may include features such as size, shape, color, color combinations, texture and graphics; all considered together as a whole, not separately. But in order to convince the court that this description rises to the level that should receive trade dress protection, Britto must first overcome two hurdles; a) establish that his work is distinctive, and b) that consumers are likely to confuse the work shown in the Apple ad campaign with his work. (Trade dress must also be non-functional but that is obvious in this case)
Distinctiveness can either be inherent or acquired over time (also know as a secondary meaning). For marks that are inherently distinctive, the visual appearance signifies the source of the product to consumers. Distinctiveness through secondary meaning means that although a trade dress is not distinctive on its face, the use of the trade dress has created an association between that design and its source in the mind of the consumer.
It’s unlikely that Britto can make a claim that any of his works inherently signify they are Britto’s but rather a distinction that developed over time through successful marketing and promotion, much like packaging for a Reese’s Peanut Butter Cup or a Heinz 57’ Ketchup bottle. Yet, like those examples, most trade dress don’t vary much throughout the product line. There is only one Heinz 57’ glass bottle, while Britto’s designs are extremely varied, albeit in a similar style. However, there are trade dress examples based on an overall style. Apple has trade dress protection for the design of its retail stores. As explained by Ars Technica, “Apple’s stores are meticulously designed down to the last detail, including special architectural glass panels (patent pending), floating glass staircases (patented), stainless steel exteriors, and even the lightly colored birch tables on which the arrays of demo iPads and MacBook Pros sit, waiting to be poked and prodded by customers.” Each store looks similar but are not the same; i.e. not every store has a staircase or metal panels outside.
Another example includes a restaurant’s decor described as having a festive eating atmosphere, with the exterior of the building having a vivid color scheme using top border paint and neon stripes, bright awnings and umbrellas; and the interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. Additional examples include the overall look of a greeting card line, the design and format of magazine covers, the shape and a combination of physical features on a briefcase, and the layout of point of sale displays.
Given these examples, Britto may be able to argue that his work is similar to the Apple Store in that those stores have unique design elements but layout and features do vary from store to store. However, the Apple Store design is used only for store designs whereas Britto’s work can be used on anything, from tractors to clothing. If the court was to agree with Britto’s position, then he would not only be able to keep Apple from using Craig & Karl’s work in the Apple ads, but also keep others from using similar work on a wide ranging number of items. The court may be hesitant to allow such expansive protection.
Likelihood of Confusion
Britto must also show that the image in Apple’s ad campaign, (as well as many other Craig & Karl works) are similar enough to create a likelihood of confusion as to source, association, endorsement, or sponsorship. Analyzing likelihood of confusion requires review of a number of factors such as the actual similarity between the items, the price of each, whether the defendant deliberately copied the work and (6) whether there is evidence of actual confusion. No one factor determines the outcome but some hold more weight than others.
For example, evidence of confusion clearly supports the claim, but it has to be more than a mere possibility, there must be actual confusion. So Britto made a point of highlighting evidence of actual confusion in his complaint claiming that he was:
“inundated with reports of the Start Something New campaign and the Infringing Apple Image. These reports ranged from, for example, incorrect congratulations on Mr. Britto’s new deal with Apple, to consternation from business partners in potentially collaborative or competing product categories, to inquiries from collectors wanting to know if the image they saw in the Apple store or on the Apple website was by Romero Britto.”
Despite Britto’s notoriety, trade dress protection for his artistic style is going to be an uphill battle, especially given that Apple has such power and legal muscle. Apple will certainly fight this because the cost of recalling and removing all the promotional material containing the Craig & Karl work would be extremely costly, so at the very least, Apple will find ways of drawing out the case until after the campaign ends. Ultimately though, the question of whether Britto’s work rises to the level of trade dress protection probably won’t be decided by the outcome of this case as it will likely settle. If Britto really wants trade dress protection, he will have to submit an application and take his chances with the examiner’s at the Trademark Office.
Do you think Britto has a case? Let us know what you think in the comment section below.