Category: Trademarks

A Brand Divided: Trademark and the Legacy of Frida Kahlo

frida kahlo

In 2018, when Mattel introduced the Frida Kahlo doll as part of its “Inspiring Women” collection in the Barbie portfolio, some consumers saw a strong feminist statement, but many observers familiar with Kahlo’s life and work saw a commercial exploitation the artist would have hated. Indeed, Kahlo was a sharp critic of American capitalism and the kind of bourgeois sensibility that would presume to commoditize a plastic gloss on her complicated and painful story—let alone a false rendering of her likeness and traditional Tehuana dress.

In rejecting the label “surrealist,” Kahlo said that her famously tortured self-portraits (e.g., The Broken Column) were not expressions of haunting dreams but depictions of her reality—a reality largely defined by a shattered body. Kahlo was born with polio and then, at the age of eighteen, was impaled by an iron handrail when a trolley crashed into the bus she was riding in Mexico City. The near-fatal accident foreclosed her intended career as a physician, and Kahlo spent months of cast-entombed recovery painting in bed by means of an easel her mother rigged to allow her to work in a supine position. With the aid of a mirror also suspended nearby, her own face became her most consistent model.[1]

Although Kahlo said that she frequently painted herself because she was so often alone, it is paradoxically this abundance of self-portraiture that makes her, perhaps, the most widely recognized visual artist in the world. Relatively obscure between her death in 1954 and the 1983 biography by Hayden Herrera, Frida Kahlo’s story and artworks now comprise, for better or worse, a brand—and one that her family is trying to regain control of to prevent inappropriate applications like Kahlo Barbie.

Whether Frida Kahlo herself would have scorned the notion of becoming a brand, it is the inevitably careless uses of a famous artist’s name and likeness that emphasize both the value of protecting intellectual property and of having that IP managed by thoughtful stewards. Most often, this means family heirs, and in the eyes of Kahlo’s grandniece Mara Pinedo, the Frida Barbie was among the more offensive breaches of an already souring arrangement between Familia Kahlo, a Mexican entity, and Frida Kahlo Corporation (FKC), a Panamanian entity. [2]

The roughly thirty years between Frida Kahlo’s death and the explosion of interest in her story and work—the term Fridamania applies—emphasizes the role of trademark as a means for family heirs to control the artist’s legacy. In Kahlo’s case, the copyrights on the paintings have either expired or are controlled by other parties, and the right of publicity under Mexican law expired in 2004. But because trademarks are indefinitely renewable, these become the IP crown jewels that need to be enforced and protected.

In 1954, all rights descended under Mexican law to Kahlo’s niece, Isolda Pindeo Kahlo and subsequently to her daughter Mara Pinedo, presently owner and officer of Familia Kahlo. Under the terms of a 2005 agreement, Familia Kahlo transferred trademarks to FKC but states in court briefs that they conditioned FKC’s authority to make licensing agreements upon obtaining permission from the family for every deal. Oscar Gomez, attorney for the family tells me via email:

Over time, FKC repeatedly engaged in the commercial use of Frida Kahlo’s name, image and likeness without consulting the family or obtaining the approvals required under the 2005 agreement. Products and partnerships were launched — including consumer goods the family and general public found culturally insensitive or inappropriate — without the family’s knowledge or involvement. These actions were in clear disregard for the approval process intended to protect Frida Kahlo’s legacy.

Based on the alleged breaches of the 2005 agreement, Familia Kahlo seeks to revert all trademarks back to its exclusive control, and this matter is presently being litigated in Spain and Panama. “In Spain, the court is focusing its review on whether certain European trademarks were wrongfully revoked and otherwise who holds rightful ownership. In Panama, there is a separate legal action to resolve the corporate control of the FKC entity,” says Gomez.

Litigation in Florida Federal Court

Meanwhile, in 2022, FKC filed a lawsuit in a Florida district court alleging that Pinedo and Familia Kahlo were liable for tortious interference by attempting to prevent what FKC argues are its legal rights to exploit the marks it claims to own. The litigation was triggered by cease-and-desist notices sent by Familia Kahlo advising four FKC licensees of the ongoing litigations abroad and notifying these parties that they could be held liable for trademark infringement. Only two of the four letters were directed at U.S. entities operating in Florida, and all four were written and sent by Familia Kahlo general manager Alfonso Durán.

Without addressing the merits of FKC’s claim, the district court held in 2023 that it lacked personal jurisdiction over defendants Pinedo and Familia Kahlo—Pinedo is a Mexican citizen with no ties to the State of Florida—under both corporate shield doctrine and comportment with due process under the 14th Amendment. On that basis, the district court dismissed FKC’s claims, and in May 2024, the plaintiff filed an appeal to the 11th Circuit. In response, the family’s brief states, “Plaintiffs are attempting to bypass the laws of Mexico and the legal disputes ongoing in Panama and Spain by filing this action in Florida to try to gain some form of authentication for their false claims to the intellectual property rights of the Frida Kahlo mark.”

It would be a major project (and one well outside my wheelhouse) to attempt to unpack the contractual details applicable to trademark ownership in several jurisdictions. But Gomez states that “[The Spanish and Panamanian] proceedings could resolve key questions of ownership and standing before the U.S. case ever reaches the merits.” Consequently, he theorizes that FKC may be forum shopping, hoping that a U.S. court might be a more favorable venue to find that it rightfully controls the Kahlo brand. But unless the 11th circuit reverses, finding that the lower court erred in its holding on personal jurisdiction, the core matter of ownership will presumably be resolved outside the U.S.

Both Licensing and Enforcement at Stake

In addition to licensing uses of the Kahlo brand that both the family and the public find inappropriate, FKC also engages in legal enforcement actions against parties who may not be making inappropriate uses. For instance, in a long post about these ongoing disputes, Laurel Wickersham Salisbury for Center for Art Law, describes FKC’s action against folk artist Nina Shope. “Shope handmakes a variety of embroideries and dolls, many of which represent Frida Kahlo and are sold [on Etsy] using her name,” Salisbury writes.

Shope’s derivative works based on Kahlo’s paintings are legal if the paintings have fallen into the public domain, but whether a court would find that her use of Kahlo’s name, an unavoidable description, constitutes trademark infringement is a separate question. From a cursory review, I am not certain Shope’s use constitutes infringement under U.S. law, but more important for the moment is whether FKC or Familia Kahlo has the right to make that determination and pursue (or not) legal remedy.[3]

Two Different Futures

A recurring theme in Kahlo’s self-portraiture includes several depictions of herself as divided, as two Fridas simultaneously occupying two realities laden with symbols of her fraught and chronically painful life. In that light, it is notable that today the Frida Kahlo brand is divided between an entity that appears willing to capitalize on any use without regard to appropriateness and a family seeking to keep “Fridamania” within the bounds of respect for who Frida was rather than commoditizing any Frida people wish to see.

Although the U.S. case is currently procedural and one that may never affect ultimate control of the Kahlo brand, it raises important considerations for well-known artists and families contemplating management of a potential legacy. “We see it happening more frequently now that artists are seeking to reclaim the rights to their works and their brands from the parties who they hoped could help them grow,” says Gomez. Although Frida Kahlo’s biography is unusual, her posthumous fame, more than a half century since her passing, reveals the need for balancing legacy management between exploitation and reverence.

[1] Frida – documentary by Carla Gutierrez

[2] As a result of litigation in Mexico, the court there enjoined sale of the doll pending further proceedings.

[3] Notably, trademark, unlike copyright, is a use-it-or-lose it IP right. Failure to enforce can be a basis for loss of the mark.

Guarantee of Confusion: When AI Scrapes the News

news

That title riffs on the term of art in trademark law known as “likelihood of confusion.” It refers to a foundational test, which asks whether the average consumer will confuse a particular mark (words, design, or both) with a product or service that is not produced or distributed by the company associated with a known mark. Thus, beware the Rollex, Tilynol, or even the KleanEx. But when a real trademark is used to promote a defective product, confusion is certain—especially when the brand is a news producer.

In a lawsuit filed today by several major news publishers against an AI developer (Advance Local Media et al. v. Cohere Inc.), we see a good example of copyright and trademark combining to serve the public interest in contrast to the extensive harm that can be done by technology developers running roughshod over IP rights. Copyright incentivizes the investment in professional journalism needed to report reliable news, and trademark identifies the source of the news we choose to trust. I know readers will be inclined these days to criticize one news organization or another, but hold that thought.

The complaint filed in the District Court for the Southern District of New York names as plaintiffs several well-known news publishers (e.g., Condé Nast, Los Angeles Times, The Guardian) who allege that AI developer Cohere is liable for both copyright and trademark infringement. Valued at $5.5 billion, “Cohere’s primary product is its suite of LLMs referred to as the Command Family of models…these LLMs are trained on vast amounts of text and as a result can generate text-based, natural language responses to user queries,” the complaint states.

The Copyright Allegations

On copyright infringement, the publishers intend to show that Cohere violates their exclusive rights both when it inputs protected works to train the Command products and when it outputs verbatim or substantially similar works that are reproduced, distributed, and displayed to paying customers. The two counts of alleged trademark infringement stem from use of the publishers’ registered names in conjunction with erroneous material that may be “hallucinated” by the LLM. Clearly, anyone can recognize why this would be harmful to the reputation of the named source and broadly harmful to consumers who already struggle to validate information in this miasma we call the internet.

Notably, the Publishers stress the fact that Cohere markets itself on the reliability and timeliness of the information Command provides—benefits that would be essential for its many commercial customers, but which the company allegedly chose to accomplish through unlicensed use of the works produced by news organizations. “Cohere relies heavily on trusted journalism sources to shore up the authority of its responses. As Cohere’s CEO Aidan Gomez explained in a letter to employees and shareholders, Cohere believes that a ‘key differentiator’ for its models is the ability to receive ‘verifiable answers,” the complaint states.

Further, to support the veracity of query results, Cohere relies on “retrieval augmented generation” (RAG), which an NVIDIA blog post describes thus: “Like a good judge, large language models (LLMs) can respond to a wide variety of human queries. But to deliver authoritative answers — grounded in specific court proceedings or similar ones — the model needs to be provided that information.” This case law analogy is ironic in context because even at this very early stage, the copyright case law strongly suggests to this observer that Cohere should not have chosen the unlicensed path to build its products.

For example, a description from the complaint reminds me that the news summary product TV Eyes was held to be infringing on less compelling evidence than the following:  “The user can expand [the] Under the Hood [tool] to view the exact underlying documents on which Cohere relied to generate the response. Cohere refers to these sources as ‘snippets,’ but to be clear—these ‘snippets’ are generally the full text of every source on which the output was based.”

In fact, the allegations in this complaint imply so much familiar ground that it is hard to imagine how Cohere will raise a persuasive defense. For instance, just this week, I summarized the Delaware District Court finding that comparatively limited copying of Westlaw’s headnotes for an AI search product was considered a market substitute for the protected works. What Cohere is allegedly doing with news articles is similar in purpose but entails far more extensive, unlicensed use of substantially more protected expression than in Thomson Reuters v. Ross.

The Trademark Allegations

With the RAG tool switched on, Command will apparently provide reliable news by copying, distributing, and displaying unlicensed copies of Publishers’ works. But with RAG switched off, its LLM might hallucinate and then attribute the resulting misinformation to one of the named plaintiffs. For instance, the complaint cites a Cohere “article” that confuses the 2023 massacre at the Nova Music Festival with a 2020 shooting in Nova Scotia; reports that a man murdered at the latter “returns to the scene” of the former; and then attributes this whole mess to The Guardian.

The Publishers allege that Cohere violates two counts of the Lanham Act—trademark infringement and false designation of origin—both of which seem highly plausible based on the facts presented. We shall see whether Cohere can present compelling facts to rebut the allegations, but otherwise, as to the questions of law in this case, I predict this one easily goes to the plaintiffs.

As mentioned above, I know some readers may scoff at the premise that quality journalism is consistently the hallmark of well-established news publishers today. And to be sure, one must occasionally check the math in various articles and editorials. But I maintain that Big Tech, through its predatory model of monetizing everything it does not create—plus our willingness to believe utter nonsense online—exerts a pressure on professional journalism that borders on an existential threat. Left unchecked, the AI shenanigans like those described in this lawsuit do more than violate IP law; they undermine the efforts of any reporter who is still trying to present reality.

Photo by AndreyPopov

Likelihood of Delusion:  Ghost Guns and IP in a World Gone Mad

“Defcad stands against artificial scarcity, intellectual property, copyright, patentable objects, and regulation in all its forms.” – Cody Wilson, Promo Video, 2013 –

In 2012, when this blog was new, I wrote a short piece about Cody Wilson’s vision to combine Second Amendment maximalism with tech-utopianism to ensure that every citizen has even easier access to firearms than we do now. DIY gun production using 3D maker technology was more than a hobby to Wilson, it was a movement he called Defense Distributed. “How do governments behave, if they must one day operate on the assumption that any and every citizen has near instant access to a firearm through the Internet?” he asked.

Now that we must once again “pay the price of freedom” with the blood of slaughtered children, among the 240 mass shootings this year, I looked up Defense Distributed for the first time since that original post to find it fronted by a sleek portfolio of websites. Customers can download CAD designs for guns, purchase starter kits and materials, and even buy a $500 milling machine called the Ghost Gunner. Or visitors can “Join the Fight,” meaning …

LEGIO is Defense Distributed’s technical and legal support fraternity. Legionnaires do more than ‘protect’ the Second Amendment. They fund its direct, material expansion.

Even if the Second Amendment expressed a generalized and unrestricted “right to bear arms,” which it does not, that stated agenda reeks of a familiar hypocrisy which daydreams of anarchy while thriving in the very system it wants to undermine. The answer to Wilson’s dumb question about the “behavior of governments” is that if elected officials ultimately come to fear violence instead of votes, the American Republic will collapse, and his “Legionnaires” can look forward to playing Mad Max for a few weeks before they starve to death.

In a video interview with Reason, Wilson describes himself as post-political, referring to institutions like the American presidency as mere pageantry without any connection to “what is really going on.” Whatever he imagines that might be, Wilson is blissfully unaware of any cognitive dissonance when he characterizes our political and legal system a sham despite his alleged fealty to the Constitution. Even more absurd is that the amendment he proposes to “expand” has only attained its present status by means of brute and undemocratic political force rather than an honest reading of the text or its legislative history.

Talismanic Guns and Trademark Infringement

The prevailing misread of 2A, along with the marketing messages of gun manufacturers and the NRA, has etched the idea in many American minds that personal firearm ownership is either literally or symbolically the safeguard of liberty itself. Consequently, it is no surprise that the unlicensed, untraceable ghost gun is seen as an even stronger talisman of “freedom.” Presumably, it is this psychology that inspired Wilson’s design repository division, Defcad, Inc., to appropriate trademarks owned by the gun control advocacy organization Everytown For Gun Safety, whose logo looks like this:

Everytown for Gun Safety

The complaint filed by Everytown accuses Defcad and several anonymous individuals of trademark infringement, citing evidence of unlicensed uses of both character and design marks on various guns and in marketing materials. Clearly meant as a “fuck you” to gun control advocates, Defcad willfully incorporated Everytown’s protected marks in several CAD designs it supplies to customers,[1] and it named selected items in its product line after Everytown’s protected phrases like MOMS DEMAND ACTION FOR GUN SENSE IN AMERICA …

And, of course, some of Defcad’s customers who made these guns taunted Everytown with photos of their wares on social media, achieving the perfect intersection of asshole and technology, proving once again that tech-utopianism is fundamentally sociopathic.I am not especially well versed in trademark law but assume that appropriating a mark to use in the very trade the mark was created to oppose, and sowing confusion in the process, presents a strong claim of infringement. There is no question that Defcad appropriated these marks with the intent to criticize and mock Everytown, which is itself protected speech and seemingly the only plausible defense in this case. But several facts here should militate against finding non-infringement on the basis that Defcad’s uses of the marks are exclusively parodic, satirical, or critical.

Although this suit is at trial in the Second Circuit, the Fourth Circuit offers insight in the case Louis Vuiton Malletier v. Haute Diggity Dog, holding that the latter’s “Chewey Vuiton” dog toys lampooning LV handbags etc. were non-infringing parodies. First, in considering what it calls the PETA test (from PETA v. Doughney), the court states, “A parody must convey two simultaneous — and contradictory — messages: that it is the original, but also that it is not the original and is instead a parody…This second message must not only differentiate the alleged parody from the original but must also communicate some articulable element of satire, ridicule, joking, or amusement,” the opinion states, quoting PETA.

Next, the court applies the three Pizzeria Uno factors (Pizzeria Uno v. Temple), which weighs the likelihood of confusion by 1) considering the market awareness of the mark used; 2) similarity of the allegedly infringing mark(s) to the original(s); and 3) similarity of the products at issue. “It is a matter of common sense that the strength of a famous mark allows consumers immediately to perceive the target of the parody, while simultaneously allowing them to recognize the changes to the mark that make the parody funny or biting,” the opinion states. (Emphasis added.)

The considerations under both tests should disfavor Defcad. Everytown’s marks are not so widely known and recognizable as a major consumer brand; Defcad made no alterations to Everytown’s protected marks; and although there is obvious contradiction between the two missions (rather than products) in this instance, confusion exists because Everytown’s marks could plausibly be used without irony on a firearm.

While researching this topic, I personally experienced the kind of confusion that trademark law is intended to alleviate in the market. Because I was previously unfamiliar with the Everytown organization but aware that many gun rights advocates also preach gun safety, it was not readily apparent that, for instance, this firearm had been sarcastically affixed with trademarks owned by a gun control organization. And, of course, American flag variations are not a clear indication of any party’s point of view.

All the winning parodies cited in LVM v. Haute Vuiton include significant alterations of the marks used, involve products unlikely to be confused with the ones being lampooned, and all generally express good-natured humor. While there is nothing good-natured about Defcad’s use of Everytown’s marks, more germane to the question presented is that there is no clear evidence of parody, or even commentary, that is immediately recognizable to the ordinary consumer who (like me) encounters this product without prior knowledge of the Everytown organization. The less well-known the trademark, the less likely an alleged infringer can claim to parody the mark.

Likewise, with protected phrases like “Moms Demand Action,” most of us are aware that there are moms who demand gun control and moms who demand more guns in every hand. Hence, the defendants are not clearly expressing a parody that is recognizable to a market outside a Venn diagram that encompasses substantial awareness of both Everytown and Defcad’s ghost guns. To a majority of observers, I suspect these appropriations create significant confusion, and a finding for Defcad would seem anathema to the purpose of trademark law.

EFF Defends Anonymity of the Doe Defendants

Whether Defcad’s individual customers (e.g., Yeezy in the tweet pictured above) should be named defendants in this suit is a fair question, but if DIY truly means joint manufacture of a product, does this not imply some shared liability with the commercial provider of the materials? (And with firearms, this raises a number of questions more complicated than trademark infringement.)

Because the individuals who posted mocking photos at Everytown on social media are anonymous, Everytown asked the court to order these parties unmasked during the discovery phase—a request apparently granted by the district court. On this matter alone, the Electronic Frontier Foundation filed a motion asking leave to file an amicus brief in response to “the district court’s failure to meaningfully analyze and consider the First Amendment rights of anonymous online speakers targeted by Plaintiff’s discovery order.”

Without overtly defending Defcad, or taking a position on Everytown’s underlying infringement claim, the EFF states that “the Doe defendants appear to be using the mark in question for expressive purposes.” The EFF asks the court to apply a “robust First Amendment” analysis prior to allowing the identification of the anonymous speakers, and it bolsters its argument with the underlying principle that trademarks may be used without license for criticism, parody, and other forms of protected speech.

While the EFF is correct in general, and should probably be allowed to file a brief, several factors in addition to those discussed above weigh against the speech concerns raised. First, removing the veil of anonymity does not necessarily chill the speech right of the individual, and such a claim appears weak in this instance. A court should consider how essential anonymity may be to expressing the speech at issue, and here, it is implausible to the point of absurdity to argue that anonymity is necessary to express scorn for gun control.

Second, recognizing the fact that sock puppets and bots are often used on social platforms to extend the reach of a particular message (something the EFF knows well), the plaintiff here has a right to know the identities of the individuals or entities allegedly infringing its trademarks. For all Everytown knows, these social accounts may be owned and controlled by Defcad itself. There is simply no reason to believe that behind every avatar is a unique, human citizen engaged in speech protected by the First Amendment.

Third, if Defcad’s defenses are likely to fail on the merits, this should weigh against the Doe defendants’ right to anonymity in a case where they have jointly manufactured and promoted products which are permanently engraved with Plaintiff’s marks. The Doe defendants’ right to criticize Everytown or gun control is without question, but they have limitless options for expressing that view without engaging in or facilitating trademark infringements that sow the kind of confusion discussed above.

Just as it was no surprise that crypto would be a currency of choice for criminal activity, the low-cost, untraceable ghost gun offers the criminal anonymity in his choice of weapons. In a statement issued by the White House, 20,000 suspected ghost guns were recovered in criminal investigations last year— “a ten-fold increase from 2016.” In response to both federal and state authorities promising to ban ghost guns, Wilson predicts that laws and regulations will be ineffectual against the disintermediated inevitability of open access to the materials and tools that he and his competitors provide.

It would be funny, if it were not tragic, to watch John Perry Barlow’s chickens come home to roost and to discover that they are all armed with deadly weapons. Is anyone truly surprised that Wilson’s dream of an unregulated militia is a logical consequence of opposition to “artificial scarcity, intellectual property, and all forms of regulation?” Strange that it started with music piracy and now it’s guns. Strange. But not at all unexpected.

[1] And based on the attitude expressed by DD, it seems likely that at least some of the designs are infringing copyrights.