Burlington Northern and Santa Fe Railway: Don't Paint Our Trains

by Greg Beck

Jay Youngdahl's law firm represents injured railroad workers in claims against railroad companies, including Burlington Northern and Santa Fe Railway (BNSF), one of the biggest railroad networks in North America. Part of the firm’s website includes a gallery of images created by New Mexico artist Douglas Johnson.  Youngdahl commissioned the paintings from Johnson to show the challenges faced by railroad workers, a subject that he feels has historically been ignored in the art world.   

    BNSF, however, apparently did not appreciate one painting on the site that appears to include representations of BNSF trains.  Upon discovering the image, BNSF's attorney sent several cease-and-desist letter to Youngdahl, claiming that his use of the paintings infringes BNSF’s trademarks, “dilutes the distinctive quality of BNSF’s famous trade dress and famous marks,” and “tarnishes BNSF’s reputation by suggesting that all FELA [Federal Employer's Liability Act] claims are claims made against BNSF.”  BNSF’s position once again raises the question of how far companies can go to regulate consumers' use of their trademarks for the purpose of commentary and criticism. Here is one of the letters received by Youngdahl.

    It is difficult to understand what BNSF's complaint has to do with trademark law.  The limited purpose of trademarks is to “prevent[ ] others from duping consumers into buying a product they mistakenly believe is sponsored by the trademark owner.”  Mattel, Inc. v. Walking Mountain Prods., 353 F.3d 792, 806 (9th Cir. 2003) (quotation omitted).  To the extent BNSF’s trade dress and trademarks are represented in the paintings, they are used only to aid communication of the message of the art, not to indicate the source of any goods or services.  The trademark laws—both infringement and dilution—do “not entitle the owner to quash an unauthorized use of the mark by another who is communicating ideas or expressing points of view.”  L.L. Bean, Inc. v. Drake Publishers, Inc., 811 F.2d 26, 29 (1st Cir. 1987).

    As discussed in this post, trademark laws do not give companies free reign to prohibit others from using their names in artistic works.  Courts recognize that “it is often virtually impossible to refer to a particular product for purposes of comparison, criticism, point of reference, or any other such purpose without using the mark” and that "[m]uch useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademark.”  New Kids on the Block v. News Am. Publ’g Inc., 971 F.2d 302, 306-07 (9th Cir. 1992).

    In Walking Mountain Productions, for example, the defendant took photographs of Barbie dolls in various absurd and sexualized poses for the purpose of critiquing the objectification of women.  353 F.3d 792.  The court rejected Mattel’s claims of trademark infringement and dilution, holding that the art was protected First Amendment expression that outweighed Mattel’s interest in protecting its Barbie trademark.  Id.  Ultimately, Mattel was ordered to pay the artist $1.8 million in attorneys' fees.  Similarly, the court in ETW Corp. v. Jireh Publ’g, Inc., 332 F.3d 915 (6th Cir. 2003), held that an artist’s painting of Tiger Woods was protected by the First Amendment against Woods' interest in protecting the source-designation function of his image

    Because of the importance of artistic expression in our society, artistic works can be suppressed by trademark law only in rare cases “where the public interest in avoiding consumer confusion outweighs the public interest in free expression.”  Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989).  This balancing test can only be satisfied when the trademark used “has no artistic relevance to the underlying work whatsoever” or “explicitly misleads as to the source or the content of the work.”  Id. In this case, the trains depicted in the paintings are relevant to the subject of the underlying work—the struggles of railroad workers—and are in no way misleading. 

    Given that the painting at issue depicts striking railroad workers and that the website is largely devoted to claims by injured workers against railroad companies, viewers of the images could not reasonably believe that either the paintings or the website on which they are hosted were created or sponsored by BNSF.  As to BNSF's claim that the paintings are misleading because they “suggest[] that all FELA claims are claims made against BNSF,” this argument makes little sense given that a variety of trains from other companies are also represented in the gallery—including trains belonging to Union Pacific and Amtrak.  Even if only BNSF trains were shown, no reasonable viewer of these paintings would reach the conclusion that no other railroad companies had ever faced workers' injury claims.  Moreover, this type of alleged confusion does not involve “the source or the content of the work” that is the subject of trademark law.  Rogers, 875 F.2d at 999.  That railroad workers at BNSF have faced hardship may be a message that BNSF does not want communicated to the public, but it is not a message that BNSF has a right to control.

    It is not uncommon for companies to assert their trademark rights as a way to block negative commentary by consumers about their goods or services online.  The issue raises serious concerns for consumers that criticize companies for their labor or environmental practices.  Today, we sent a letter to BNSF's attorney, asking her to withdraw her demand that Youngdahl remove the artwork.  As always, I will update this blog as the situation develops.

Comments

[Stephen Buel]

Maybe Mr. Youngdahl office should have asked the artist to depict BNSF's trains in "various absurd and sexualized poses."