“I never paint dreams or nightmares. I paint my own reality.” The Legal Battle Around Frida Kahlo’s Name and Legacy

“I never paint dreams or nightmares. I paint my own reality.” The Legal Battle Around Frida Kahlo’s Name and Legacy

A long-raging legal battle over the rights to Frida Kahlo’s legacy and image was recently dismissed in the U.S. District Court for the Southern District of Florida, bringing the suit to a close.

Frida Kahlo is undoubtedly one of the most popular artists whose personal identity has become as instantly recognizable as her art.^[1] When she died intestate in 1954, her niece, Isolda Pinedo Kahlo (“Pinedo”), inherited Kahlo’s property rights in her capacity as the third “degree” in the collateral line of succession according to Mexican Industrial Property law.^[2] In 2003, Pinedo’s daughter, Mara Romeo Pinedo (“Mara”), was granted power of attorney over these rights, including the Kahlo’s rights to publicity.^[3] The right of publicity prevents the unauthorized commercial use of an individual’s name, likeness, or other recognizable aspects of one’s persona.^[4] When such right expired in 2004, businessman Carlos Dorado created the company Frida Kahlo Corporation (“FKC”), and began working with Pinedo and her daughter to promote and commercialize the “Frida Kahlo” brand.^[5]

While she was primarily known as painter Diego Rivera’s wife during her lifetime, Kahlo’s posthumous rise in popularity into an icon inspires artists, scholars and fashion designers to celebrate and commodify her distinctive appearance and wonderful artistic legacy.^[6] Her name and image have been widely licensed to appear on mass consumption products such as shoes, cosmetics, socks, and tequila, which stands in direct opposition to her life experience and artistic endeavors.^[7] In 1997, the French designer Jean-Paul Gauthier paid a tribute to Kahlo in designing nineteen dresses directly inspired by the artist’s style and indigenous Mexican traditions.^[8] In 2001, the U.S. Postal Service used her image on a 34-cent stamp in honor of her significant influence on American history, art, and culture.^[9] In 2002, Hayden Herrera’s 1983 biography of Kahlo was adapted into the Salma Hayek-starring film “Frida”, which further increased the “Fridamania” phenomenon.^[10]

Although Pinedo stayed shareholder of FKC, the parties’ relationship started to deteriorate in 2011, mainly due to the commercial strategy around the Kahlo brands.^[11] In 2018, Mattel, Inc. announced their Frida Kahlo doll on International Women’s Day and immediately caused international backlash.^[12] Indeed, the issues Pinedo raised over the Kahlo Barbie centered on Mattel’s erasure of Kahlo’s “race, disability, and androgynous features.”^[13] The controversy behind this case raises critical issues, including to what extent the use of a historical name or figure is subject to trademark infringement. Beyond the numerous litigations between FKC and Kahlo’s heirs over the years, it appears that the “parties are fighting for more than Kahlo’s trademarks and licensing rights, they are fighting for her legacy.”^[14]

The dispute reached its peak when a judge of the Superior Court of Justice of Mexico City granted a temporary injunction and ordered Mattel and FKC to stop using the “brand, image, and work of the illustrious painter Frida Kahlo” without permission Mara, the owner of the Kahlo’s publicity rights.^[15] In return, FKC filed a suit against Pinedo before the U.S. District Court for Southern Florida, claiming that Pinedo undermined the company and had illegally used their Kahlo trademark by setting up a competing website (www.fkhalo.com) that “expressly offers goods and services using the trademark Frida Kahlo, a trademark that is identical to Plaintiff’s FKC trademarks.”^[16] On September 10, 2021, Pinedo and her daughter were granted a motion to dismiss confirming that the case should not be fought in the U.S.^[17] In this case, the threshold issue was whether the Southern District Court of Florida had personal jurisdiction to hear the complaint or whether the forum-selection clause contained in the agreement controlled.^[18] After looking at the substantial connection between the facts alleged in the complaint and the state of Florida, the court ruled that “litigation in Florida would be burdensome for the Defendants—two individuals who both reside in Mexico City and have no connection to Florida.”^[19] Although FKC has an office in Florida, the court further considered that Florida’s interest in this dispute was minimal because although FKC has an office in Florida, it is insufficient to raise Florida’s interest “beyond a generalized interest in enforcing federal law.”^[20] The court then stated that “while the Plaintiffs have an interest in obtaining convenient and effective relief, ongoing litigation in Mexico and Panama—countries where the parties indisputably reside—may provide forums for such relief.”^[21]

Another case involving FKC was brought in June 2019 by the artist Nina Shope before the Colorado courts in response to FKC’s submission of an infringement notice to online arts and crafts retailers Esty, where Shope sold her creations. ^[22] In her complaint, the artist claimed that the use of the name “Frida Kahlo” in conjunction with the doll is not source-identifying considering that the name is used to identify a historical figure.^[23]

Therefore, the consumers would not assume that the dolls are associated with FKC.^[24] Importantly, Nina Shope also argued on the genericization of the name “Frida Kahlo” to request the cancellation of the trademarks owned by FKC.^[25] In reply, FKC filed a motion to dismiss for lack of personal jurisdiction and improper venue, and a motion to transfer the litigation before the U.S. District Court for the Southern District of Florida.^[26] The litigation was however similarly dismissed in the US based on lack of personal jurisdiction grounds.^[27].

Frida Kahlo is not an isolated case and other cultural icons like Pablo Picasso or Elvis Presley, whose artistic talent led to worldwide recognition, “have become a brand that can applied at will.”^[28] Therefore, the heirs of a cultural figures should be wary of these concerns before assigning or transferring their intellectual property rights to a third-party company, specifically those using it for commercial purposes outside of art. One may find yourself in a similar dispute this one that is settled for now. Heirs to cultural icon, especially those like Frida with  internationalRegardless, the question remains open on whether the creators and their heirs alone should have the rights to profit from the exploitation of these symbols, or whether those rights should be shared by the public whose patronage gives value to cultural icons.