Shepard Fairey’s company, Obey Giant Art, has sent a cease and desist letter to Pittsburgh graphic designer Larkin Werner asserting that the use of OBEY in connection with Werner’s Steeler Baby and Steeler Baby Kewpie Doll merchandise is trademark infringement. Fairey has received criticism for this, mostly accusations of hypocrisy because he had to stop using “Andre the Giant Has a Posse” after getting legal threats from the wrestling association that owned the rights to that name, not to mention his Obama poster dispute with the Associated Press. Fairey has also been attacked for his liberal use of artwork and graphic design without attribution. However, what interests me is the assertion by Fairey’s business partner that all they’re trying to do is protect their trademark. And someone else in Fairey’s company claims that “[a]nything with ‘Obey’ on it they can’t have.” So, is this true? Is Fairey obligated to go after all uses of the word “Obey” in connection with merchandise?
The short answer is “no.” Shepard Fairey has a federally registered trademark for the word word OBEY in connection with stickers, poster, handbags, wallets and clothing. This federally registered trademark gives Obey Giant Art the ability to go after infringers of its mark nationally. And a tenet of trademark law is that the trademark owner has to take reasonable steps to police its mark. If the use of the mark by others spreads, then the function of the trademark, which is to indicate the source of the product, diminishes. However, owning a trademark that includes a particular word does not confer an exclusive right to that word for all commercial uses.
Ruth Madoff, the wife of Bernie Madoff, has received some attention for a cookbook she co-authored in 1996, The Great Chefs of America Cook Kosher. The NY Times