Seattle Trademark Lawyer

Plaintiff Dereck Seltzer is an artist. In 2003, he created “Scream Icon,” a drawing of a screaming, contorted face. Since then, he moved on to other projects, but at times used his drawing to identify himself and his work’s presence by placing it on advertisements for his gallery appearances, and once licensed it for use in a music video.

Mr. Seltzer sued the rock band Green Day, which had used a modified version of the “Scream Icon” in a video it showed at concerts as a backdrop when it played the song, “East Jesus Nowhere.”

Mr. Seltzer mostly asserted copyright claims, but he also alleged that “Scream Icon” functioned as his trademark — the claim of interest here.

The Central District of California rejected his claim, and threw it out on summary judgment.

On Aug. 7, the Ninth Circuit affirmed, finding Mr. Seltzer had not used his work as a trademark, i.e., as a means to identify him as the source of artwork.

It’s a reminder that a cool logo or even a work of art can’t be protected as a trademark if it isn’t adequately used as a brand.

The Ninth Circuit found: “The district court concluded that Seltzer failed to present evidence showing that he used the image as a mark in the sale of goods or services—that is, that he failed to establish trademark rights at all. In order to acquire trademark rights, the mark must be used in the ‘ordinary course of trade’ on goods or containers, or, if the nature of the goods makes that impractical, on documents associated with the goods or their sale.

“Seltzer argues that Scream Icon’s placement on certain advertisements for his appearance at an art gallery show was sufficient to establish trademark rights. But Seltzer has not presented any evidence that the use of the mark was ‘sufficiently public to identify or distinguish the marked goods in an appropriate segment of the public mind.’ Seltzer has failed to explain how these advertisements were distributed, who might have seen them, when they were distributed, to what shows they were connected and what was sold at those shows, or any other facts which might be necessary to evaluate whether Scream Icon is deserving of trademark protection.

“Therefore the district court correctly granted summary judgment to Green Day on Seltzer’s Lanham Act claims.”