Dust Up in the Art World – Canadian Trademark Registrations for PAINTERS 11 and PAINTERS ELEVEN
According to a Globe & Mail story, art dealer Lynda Shearer obtained registration for the trademarks PAINTERS ELEVEN and PAINTERS 11 in 2008. The registrations each claim use of the marks in association with the wares “paintings, sculpture and drawings” and the services “purchase, appraisal, research, consultation, auction, consignment of paintings, sculpture and drawings“.
The term Painters Eleven was used by a group of Canadian artists who organized themselves as a collective to exhibit abstract art. This group was formed in 1953 and disbanded in 1960.
Apparently, many in the Canadian art world are surprised and upset that Lynda Shearer obtained registrations for these marks, as the terms are viewed as descriptive, likened to terms such as the Impressionists and the Automatistes in describing a particular school or art movement.
The news story reports that Canadian Art Group – a partnership made up of Lynda Shearer and her husband John – sent letters to two individuals alleging the infringement of the above trademarks. One individual who received a letter is a writer of a book about the Painters 11 group; the other is a private dealer who has bought and sold works of the Painters 11 group.
As regular readers of the Canadian Trademark Blog will know, infringement claims like these must be assessed in terms of the type of use of the marks by the alleged infringer. “Use” in the trademark sense has a special meaning, as set out in the Trade-marks Act. If third parties are using the marks in the trademark sense in association with wares and services that are the same or similar as those claimed in the registrations, this may constitute infringement.
In the case of the author of a book about the Painters 11 Group, the sale of such a book would not constitute trademark use of the marks in association with the wares and services claimed in the registration: books are not covered in the registrations. On the other hand, art sales are covered – so an art dealer that uses the marks in association with buying or selling art such as paintings, drawings or sculpture may be viewed as using the marks in association with the same wares or services, if they are used as an indicator of source. This should not preclude any third party from buying or selling works and describing them as being prepared by an artist who was a part of the Painters 11 movement.
The story reports that one of the executors of the estate of one of the Painters Eleven group has written a letter to the Canadian Intellectual Property Office requesting that it “rescind” the registrations. As the applications for these two trademarks have already issued to registration, they cannot be “rescinded”.
However, one method of recourse is for someone to initiate a Federal Court action to have the registrations expunged. Whether the registrations would survive such a challenge would hinge on the issue of distinctiveness. Under Canadian trademark law, “distinctive” in relation to a trademark means a trademark that actually distinguishes the wares or services in association with which it is used by its owner from the wares or services of others, or is adapted so as to distinguish them. If the marks have in fact been in use in the art world for decades, the Shearers may not be able to prove that the marks are distinctive of the wares and services with which they are using the marks from those of others.
This entry was posted by Karen Monteith on Wednesday, March 18th, 2009 at 1:32 pm and is filed under Protection & Enforcement. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.
3 Responses to “Dust Up in the Art World – Canadian Trademark Registrations for PAINTERS 11 and PAINTERS ELEVEN”
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I would think that the marks PAINTERS ELEVEN and PAINTERS 11 would be vulnerable to cancellation on the basis that they were either clearly descriptive at the date of registration, or that the marks are not distinctive of the registrant. This makes it a risk proposition indeed for Ms. Shearer, the registrant, to sue for infringement – a counterclaim alleging invalidity is a real possibility.
Frankly, I am surprised the marks were registered in the first place; the Examiner must not be an art fan.
Meg, thanks for your comment. Agreed that descriptiveness would also be an issue. As well, yes, if Ms. Shearer attempts to sue for infringement she runs the risk of a counterclaim. This may well be illustrative of the adage “be careful what you wish for”.
Thanks for reading.
Thank you for confirming my sense that the Shearers have no basis to interfere with the publications of books about, or mentioning, Painters Eleven. The Shearers appear to have been misinformed that such activity is prohibited under trademark law. If I wish, I could write about the Beatles, Coca-Cola, or any number of subjects whose names are registered trademarks. This apparent attempt at “trademark chill” is misguided on multiple levels. One would think that the publication of such a book, authorized or not, would only enhance the value of the trademarks.
In the Globe article, the Shearers seem to undermine their own position. John Shearer says, “If you were to go out on the sidewalk … and stop 100 people and ask who the Painters Eleven are, I don’t think you’ll get one person that will tell you.”
This strikes me as disingenuous. If his contention is true, there would be no value in the trademarks! Indeed, the very next paragraph seems to contradict the statement. Reporter James Adams writes, “the value of works by artists associated with Painters Eleven has grown in recent years.”
I was struck by another point raised by Mr. Adams. “Shearer wouldn’t say if Canadian Art Group planned to enforce [the] trademark by requiring, say, auction houses to include the TM symbol in their catalogues or to have magazines, newspapers, books and other media include trademark information.”
First of all, the appropriate symbol would be the circled R, indicative of a registered trademark. Second, I know of no legal requirement under which third parties are required to use such marks. Ironically, on their own website, the Shearers are inconsistent in their use of the circled-R symbol. It would seem to me that defence of their trademark would begin at home!
If Mr. Silcox’s reaction, as an executor of the Town estate, is typical of that of his colleagues who represent the other ten estates, it seems to me the Shearers have further undermined the value of the trademark. They seem to have alienated these stakeholders, whose co-operation will only benefit their own efforts to exploit the works of the Painters Eleven.
It is worthy of note that Mrs. Shearer began the registration process in November 2006, not more than a few months after the death of Tom Hodgson, the last surviving member of the group. As the Trade-marks Act prohibits marks “that may falsely suggest a connection with any living individual,” I cannot help but be struck by the timing of her application.
The move strikes me as opportunistic and ghoulish.
John Shearer is quoted as saying, “[W]e’ve spent a lot of money developing websites and marketing their work.” I have visited the website Painters-Eleven.com, and am underwhelmed. A single page devoted to each artist, featuring a brief and poorly written biographical sketch of each artist, followed by a canned solicitation to buy or sell the artists’ works through Canadian Art Group.
These latter are not germane to the legal aspects of the trademarking of Painters Eleven, but speaks to the credibility of the registrants and makes me shake my head in wonder that the mark was able to be registered.