UnIntellectual Property (UnIP): Artwork of Marlin Not a Trademark or Service Mark

This lawsuit, which involves numerous intellectual property causes of action, is based upon Plaintiff’s, an artist, assertion that his painting of a wahoo fish, taken from the Blue Water Blitz painting, was used by Defendant without his authorization in promotional items (menus and t-shirts) at Defendant’s poolside bar and grill at the Palace Casino in Biloxi, Mississippi.  Defendant had purchased one of Plaintiff’s paintings in the past.  The United States District Court for the Southern District of Mississippi granted the Defendant partial summary judgment as it relates to Plaintiff’s Lanham Act Claims.

In doing so, the Court held that Plaintiff had failed to identify a protectable trademark or service mark.  The Court characterized Plaintiff’s position as being that “he, or his artwork, has achieved a level of recognition such that the wahoo extracted from Blue Water Blitz, when seen alone without his signature or name, is so distinctive and widely recognized as his artwork that consumers would likely mistakenly believe that he endorsed Defendants’ establishments.”  However, there was no evidence that consumers would associated Plaintiff with the wahoo in and of itself.  Without having established a protectable trademark, let alone a likelihood of consumer confusion or false endorsement, Plaintiff’s Lanham Act claim failed.
The painting is far sexier than the decision, however, it does highlight the fact that a protectable trademark is required under the Lanham Act’s various causes of action.  Keep in mind this was only partial summary judgment, which means this fish may not be dead in the water!
Wilson v. New Palace Casino, L.L.C., 2013 WL 870350 (S.D. Miss. Mar. 7, 2013).


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