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TRADEMARKS IN FILM, TELEVISION,
WEBCASTS, VIDEO GAMES AND SONGS
(JANUARY 3, 2014)
Mark V.B. Partridge
Daniel L. Rogna
Partridge IP Law
If you find this article helpful, you can learn more about the subject by going
to www.pli.edu to view the on demand program or segment for which it
was written.
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INTRODUCTION1
A.
The use of trademarks in entertainment reveals a tension between the
desire to prevent consumer confusion and protect goodwill on one hand
and the desire to give great latitude to artistic expression and noncommercial speech. Brand owners may desire a monopoly but that is not
what the law allows. Not all uses of another’s trademark infringe. The
tension between trademark protection and free speech is sometimes
resolved using a traditional infringement analysis: in context if there is
no likelihood of confusion there is no infringement. In other cases, the
courts give added weight to the free speech interest. At the extreme,
some courts have found infringement claims to be barred by the free
speech interest. Recent developments in the fields of film, television,
video games and songs are discussed below.
B.
FILM
Use of trademarks in film is largely protected by the First Amendment.
Despite recent trends surrounding product placement, discussed further
below, “[t]he fact that [companies] can pay for control doesn’t mean they
have the right to control,” the use of their marks in film. Priska Neel, Is
That A Budweiser In Your Hand?: Product Placement, Booze, And Denzel
Washington, NPR: Monkey See (Nov. 27, 2012), http://www.npr.org/blogs/
monkeysee/2012/11/27/165989232/is-that-a-budweiser-in-your-handproduct-placement-booze-and-denzel-washington (quoting Daniel Nazer).
Take, for example, the “George of the Jungle 2” case. Caterpillar v.
Walt Disney Studios, 287 F. Supp. 2d 913 (2003). There, Caterpillar sued
Disney for unauthorized use of genuine Caterpillar bulldozers bearing
trademarks on them with no apparent alterations. Caterpillar’s concern
was not just that the marks were used without authorization in the film,
but that those bulldozers were used to tear down the rainforest and were
visible for eight of the film’s eighty-seven minute run time. The court
found for defendant Disney, stating that the appearance of well known
trademarks in cinema and television is a common phenomenon. Id.
at 919. The court first found that there was no trademark infringement
because Disney did not intend “to free ride on the fame of Caterpillar’s
trademarks to spur the sales and awareness” of its movie, and “it appears
unlikely . . . that any consumer would be more likely to buy or watch
‘George 2’ because of any mistaken belief that Caterpillar sponsored this
1.
Mark V.B. Partridge is the Managing Partner of Partridge IP Law. Daniel L.
Rogna is an associate with the firm.
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movie.” Id. at 920. Second, the court concluded that no trademark
dilution was likely because “nothing in [the film] even remotely suggest
that Caterpillar products are shoddy or of low quality,” noting that
Disney did not anthropomorphize the machines but rather made them the
“inanimate implements” of the villain’s schemes. Id. at 923.
This ruling is typical of cases involving trademark infringement in
film. For example, the misuse of a Slip-n-Slide toy in the movie Dickie
Roberts: Former Child Star led to a suit against the film’s producers,
claiming unauthorized use and blurring. Wham-O, Inc. v. Paramount
Pictures Corp., 286 F. Supp. 2d 1254 (N.D. Cal. 2003). The Wham-O
court denied the request for a temporary restraining order, finding that it
was obvious that the Slip-n-Slide was being misused.
Similarly, Hormel, the producer of Spam, sued Jim Henson
Productions over the creation of a puppet named Spa’am. Hormel Foods
Corp. v. Jim Henson Prods., 73 F.3d 497 (2d Cir. 1996). There, the court
concluded that, “[t]here is very little likelihood that Henson’s parody will
weaken the association between the mark SPAM and Hormel’s luncheon
meat. Instead, like other spoofs, Henson’s parody will tend to increase
public identification of Hormel’s mark with Hormel.” Id. at 506.
“In Hormel, Wham-O, and Caterpillar the courts expressly noted that
moviegoers-even children-would understand that the marks were being
depicted to achieve a humorous effect, and since they realize the
fantastical nature of the genre, they would not be deceived into believing
the plaintiffs endorsed the movies in which their marks appeared.”
Robert C. Welsh and Pratheepan Gulasekaram, Protecting Products that
Go Hollywood, Daily Journal MCLE, http://www.dailyjournal.com/
cle.cfm?show=CLEDisplayArticle&qVersionID=133&eid=589011&
evid=1.
In November 2012, Anheuser-Busch asked Paramount Picture Corp.
to obscure or remove all Budweiser logos from the Denzel Washington
film Flight. See Budweiser Seeks Removal of its Logo from ‘Flight’,
Entertainment Weekly (Nov. 6, 2012), http://insidemovies.ew.com/
2012/11/06/flight-budweiser-denzel-washington/. Anheuser-Busch did
not grant permission for the use of Budweiser products in the film and
was concerned with the negative implications of Budweiser in the film.
In contrast, Heineken signed a $45 million partnership to have its
beer featured in the most recent James Bond movie, Skyfall. Neel, Is That
Budweiser, NPR. Flight depicts beer in a negative light, and Skyfall
depicts it positively. From the trademark owner’s perspective, it is
understandable why in one case you would want to get your mark in to a
movie, and in the other you would want to get it out. How the product is
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portrayed makes a huge difference for trademark owners, but it does not
require film makers to seek consent for every use of a mark in a film, as
discussed above.
However, the fact that any company would be willing to pay such a
substantial sum as Heineken raises the possibility that consumers may
not be able to tell the difference. As Mark Partridge suggested, “with the
explosion of product placement in recent years, a company might try to
make an argument that by the brand appearing in a film, the audience
assumed it had granted permission.” Budweiser Seeks Removal,
Entertainment Weekly.
However, there is an inconsistency inherent in a plaintiff alleging
both confusion and tarnishment claims. If a trademark is placed in a
negative context through a defendant’s depiction, the reasonable
consumer is correspondingly less likely to be fooled into thinking that
any trademark owner would sponsor or endorse such a negative
portrayal. See Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir.
2002), cert. denied, 537 U.S. 1171 (2003).
Regardless of this conundrum, the continued use and enhanced
visibility of product placement in films raises the concern that consumers
will be confused by any use of a trademark in film, whether it is a
positive or negative depiction. So, although the law currently favors the
use of marks as artistic expression, there is potential for change.
Parody raises interesting issues, as discussed in Anthony V. Lupo
and Anthony D. Peluso, A Survey of the Case Law On Copyrights
snd Trademarks in Film snd Television: Part II, Bloomberg Law
(2012), http://about.bloomberglaw.com/uncategorized/copyrights-andtrademarks-in-film-part-ii/:
[I]n GTFM, LCC v. Universal Studios, Inc., the plaintiff brought trademark
infringement and dilution claims against the defendant for its parodic use of the
plaintiff’s registered mark FUBU (i.e., “For Us, By Us”) in its film How High.
Rather than displaying FUBU, the film’s protagonist wore a t-shirt with the
mark “BUFU,” which, according to the protagonist, stood for “By Us, F***
You.” In granting summary judgment in favor of the defendant, the SDNY
ruled that its use of the mark was intended to be a parody, “entitled to the full
protection under the First Amendment,” as indicated by the parody’s similarity
to the original mark and the film’s comedic context. The court further reasoned
that the defendant “was not acting as a competitor of plaintiff’s by attempting
to sell products or services under the name ‘BUFU,’” which was important
because “[i]n trademark infringement cases, parodies are protected where the
mark is being used to lampoon or comment upon the trademark owner or the
mark itself, in which expression, and not commercial exploitation of another’s
trademark, is the primary intent, and in which there is a need to evoke the
original work being parodied.” Finally, the court rejected the plaintiff’s dilution
argument because its “FUBU marks appear nowhere in the film, and thus,
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plaintiffs have no claim that FUBU was used in a manner injurious to the mark
and to its reputation and good will.”
C.
TELEVISION
1.
Product Placement
“Consumers who watch television sitcoms and see product
placements through covert marketing have better memories of the
products and better attitudes toward the brands, according to three
joint studies led by the University of Colorado Boulder.” Covert product
placements in TV shows increase consumers’ memories and brand
attitudes, says CU-Boulder study, University of Colorado Boulder
(Sept. 23, 2013), http://www.colorado.edu/news/releases/2013/09/23/
covert-product-placements-tv-shows-increase-consumers%E2%80%
99-memories-and-brand. However, disclosure of paid product placements “decreased the influential effects, especially when the disclosure occurred after the consumer was exposed to the marketing.” Id.
This study comes only a few months after the General Accountability Office “urged the Federal Communications Commission to
revise standards for disclosing TV product sponsorships . . . for product placement,” noting that “FCC guidance for the sponsorship identification requirements has not been updated in nearly 50 years” and
that the FCC’s 1992 revisions provided “little useful information.”
FCC Urged to Revise Standards for TV Product Disclosure, The
Wrap (Feb. 28, 2013), http://www.thewrap.com/tv/article/fcc-urgedrevise-standards-tv-product-disclosure-79751. This report was requested
in January 2013 by House Democratic Leader Nancy Pelosi and Rep.
Henry Waxman, who “questioned whether DVR and commercialskipping were prompting sponsors to switch to alternative forms of
advertising that wasn’t always being fully disclosed.” Id.
A major concern is the extent to which consumers are unaware of
“embedded advertising.” Currently, “[f]or commercial content, such
as advertisements, embedded advertisements, and video news
releases, the [disclosure of content aired in exchange for money,
services, or other inducement] must be aired when the content is
broadcast and can be either a visual or an audible announcement.”
Gov’t Accountability Office 13-237, Broadcast and Cable Television,
at 6-7 (January 2013).
Ultimately, the GAO recommended an update of the law to
reflect current technologies. Id. at 31. The GAO Report explores
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what kind of embedded advertisements may or may not require
sponsorship disclosure:
a sponsorship announcement is not required every time a product appears
in a program. For example, FCC’s guidance describes scenarios in which a
manufacturer provides a car to a television show for a detective to chase
and capture the villain, and states that the use of the car alone would not
require a sponsorship announcement. In this scenario the use of the car
could be considered “reasonably related” to its use in the show. However,
in the same scenario, if a character also made a promotional statement
about the specific brand—such as its being fast—FCC requires a written
or verbal sponsorship announcement sometime during the program.
According to FCC’s guidance, in this second scenario, the specific
mention of the brand may go beyond what would be “reasonably related”
to its use in the show.
Id. at 10-11. These examples reveal subjective line between what
does and does not require disclosure.
I would argue that today’s producers and companies would prefer
the “reasonably related” option as a vehicle to advertise products. For
example, compare recent episodes of FOX’s sitcom “New Girl,” both
using Ford SUV’s. First, in the October 23, 2012 episode “Models,”
main character Jess must fill in for her friend Cece, a model, who is
unable to do her job of modeling with a new Ford SUV. Not only
does Jess appear on a rotating stage with the Ford, a Ford executive
discusses talking points about the new car throughout that minute of
the show. “The dialogue on the show during that scene was literally
written by the Ford Motor Co.” Ford product placement runs over
episode of Fox’s ‘New Girl’, The L.A. Times (Oct. 29, 2012),
http://articles.latimes.com/2012/oct/29/entertainment/la-et-ct-fordnew-girl-promo-20121029. Arguably, this goes beyond what is
“reasonably related” to use in the show, despite the Ford being
specifically worked in to the plot of the episode. So, it would require
a sponsorship announcement.
In contrast, a Ford appears in both the April 4, 2013 “First Date”
and November 12, 2013 “Menus” episodes. In both episodes, the
characters utilize the Ford’s “hands-free liftgate” technology, in
which an individual can tap the underside of the car’s rear fender to
automatically open the trunk. In both episodes, the characters have
objects in their hands and “need” to utilize the technology to open the
trunk without their hands. See Product Placement: The TV Ads Consumers Can’t Skip Or Hop, Marketing Land (May 28, 2013), http://
marketingland.com/product-placement-tv-ads-45729. These episodes
almost perfectly recreate the Ford commercials themselves. See, e.g.,
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Ford Escape Hands-Free Liftgate Commercial, YouTube (Aug. 29,
2012), http://www.youtube.com/watch?v=I1V_rm645S0.
In the second set of episodes, the use of the Ford is arguably
“reasonably related” to the plot of the episodes and arguably would
not require disclosure by FOX of the paid endorsement. The point is
not to call out FOX or “New Girl” for use of embedded advertisements, but rather to show how arbitrary the current guidelines
regarding such advertisements can be.
In a time when commercials are being skipped with greater frequency, producers will look to integrated advertisement as a method
to maintain revenue streams from big budget advertisers.
Even if producers and networks do disclose these advertisement,
how much use is it to the consumer if the disclosure comes in rapidly
scrolling credits at the end of a TV show? Eric Goldman, Think You
Want To Be Told About Product Placements In Movies? Think Again,
Forbes (July 9, 2013), http://www.forbes.com/sites/ericgoldman/
2013/07/09/think-you-want-to-be-told-about-product-placements-inmovies-think-again-2/.
This developing area is of great importance to trademark law in
entertainment because product placement is significantly more commercial than the artistic, protected speech that trademarks are
otherwise used for in various media.
2.
Reality Television
Reality TV adds a wrinkle to this situation. In 2011, retailer
Abercrombie & Fitch offered “Jersey Shore” cast member Mike “The
Situation” Sorrentino cash to stop wearing its clothing and introduced
its own line of clothing – “Fitchuation” – seemingly as a way to
mock him. In response, Sorrentino filed a $4 million lawsuit alleging
trademark violations, deceptive advertising and misappropriation of
his publicity rights. A Florida court eventually found for Abercrombie
and Fitch. Eriq Gardner, ‘Jersery Shore’ Star Loses ‘Fitchuation’
Lawsuit to Abercrombie & Fitch (July 3, 2013), http://www.
hollywoodreporter.com/thr-esq/jersey-shore-abercrombie-fitch-situationlawsuit-273667, and http://www.hollywoodreporter.com/thr-esq/jerseyshore-star-loses-fitchuation-579759.
For some trademark owners, the concern may that that the public
will falsely believe that a reality “star” is endorsed by the company to
wear or use a certain product. As in the Abercrombie & Fitch situation, the company will be concerned with a sullied public impression
of its mark and goods because of unwanted use in a reality show.
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D.
VIDEO GAMES
The seminal case for trademark use in video games is the Grand Theft
Auto case. E.S.S. Entertainment 20002, Inc. v. Rockstar Videos, Inc., (9th
Cir. 2008). In that case, the court found that Rockstar’s use in its vide
game of the virtual strip club the “Pig Pen” did not infringe E.S.S.’s
trademarks for its flesh and blood strip club the “Play Pen.” Because
Rockstar’s use was artistically relevant to creating a look and feel of East
Los Angeles and there was no likelihood of confusion, the court found
that Rockstar’s use was acceptable under the Rogers test.
More recently, game producer Zynga has filed suit against another
app maker for use of “With Friends.” Shawn Knight, Zynga Files Suit
Against Bang With Friends over Trademark Infringement, TechSpot
(July 31, 2013), http://www.techspot.com/news/53452-zynga-files-suitagainst-bang-with-friends-over-trademark-infringement.html. Zynga, the
maker of the widely popular “Words with Friends” game, took umbrage
when a new app called “Bang With Friends” was introduced. Billed as a
service that allows users to anonymously hook up with their Facebook
friends, “Bang With Friends” upset Zynga not because of the racy
content, but because of the exploitation of its trademark. The case
eventually settled, and Bang With Friends stated that “[a]lthough he
terms of the settlement are confidential, Bang With Friends Inc. acknowledges the trademark rights that Zynga has in its with friends marks and
will be changing its corporate name and rebranding its services in the
near future.” Karen Gullo, Zynga Settles Trademark Suit Against ‘Bang
With Friends’, Bloomberg Technology (Sept. 30, 2013), http://www.
bloomberg.com/news/2013-09-30/zynga-settles-trademark-suit-againstbang-with-friends-.html.
In contrast to E.S.S., “Bang with Friends” seemed to clearly free ride
on the goodwill of Zynga’s “With Friends” mark. Consumer confusion
was likely and certainly could have led to tarnishment of Zynga’s
reputation for family-friendly games.
E.
MUSIC
The “Barbie Girl” case is important not just for its application to entertainment law but for the protection of artistic free speech rights. Mattel,
Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), cert. denied,
537 U.S. 1171 (2003). Mattel’s claim was based on the blurring of its
mark from use by Aqua in its song “Barbie Girl,” which characterized
Barbie as a bimbo and sex object. Judge Kozinski determined that the
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song was protected as parody under the doctrine of nominative fair use
and the First Amendment. Essentially, it was not likely that consumers
would confuse the song with Mattel’s Barbie doll. Rather, the song made
a social comment about the Barbie doll as a figure, which was protected
as fair use.
F.
INTERMEDIARIES
Aside from the “safe harbor” of the First Amendment for creative
expression, courts have also recognized a safe harbor for intermediaries.
A leading example is Tiffany, Inc. v. eBay, Inc., 600 F.3d 93 (2d Cir.
2010), in which the jeweler brought suit against the online marketplace
for trademark infringement, trademark dilution and false advertising in
response to counterfeit products being sold through defendant’s website.
The Second Circuit held in part that eBay was not liable for contributory
trademark infringement because Tiffany failed to show that eBay had
more than a general knowledge that its services were used to sell
counterfeit goods. Id. at 107, citing Inwood Laboratories Inc. v. Ives
Laboratories, Inc., 456 U.S. 844 (1982). Further, eBay was not wilfully
blind to the infringing activity and took active steps to prevent the sale of
counterfeit products, including the removal of potentially counterfeit
listings. Tiffany, 600 F.3d at 110.
So, the courts have created a safe harbor for intermediaries from
trademark infringement claims that mirrors the safe harbor provision
from copyright infringement under the DMCA. See 17 U.S.C. § 512.
Trademark owners must police their own marks and when appropriate,
an intermediary must actively stop trademark infringement occurring on
its site.
This raises the question of what other laws may provide safe harbor
provisions for unfair competition and trademark infringement actions.
The Communications Decency Act (“CDA”), 47 U.S.C. § 230(c)(1),
provides that “No provider or user of an interactive computer service
shall be treated as the publisher or speaker of any information provided
by another information content provider.” This provision has been used
to protect intermediaries from defamation and criminal claims. See, e.g.,
Chi. Lawyers’ Comm. for Civ. Rights Under Law, Inc. v. Craigslist, Inc.,
519 F.3d 666 (7th Cir. 2008) (finding that Craigslist was protected by the
safe harbor of the CDA from postings that violated the Fair Housing Act
because Craigslist transmits, not publishes, third party content); Hollis v.
Cunnignham, Case No. 2007-cv-23112 (S.D. Fla. 2007) (website
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“www.dontdatehimgirl.com” applying CDA safe harbor as a defense to
defamatory content posted by users) .
However, it is questionable whether these CDA protections extend to
intellectual property infringement. See, e.g., Gucci Am., Inc. v. Hall &
Assocs., 135 F. Supp. 2d 409 (S.D.N.Y. 2001) (finding that no immunity
for contributory liability for trademark infringement exists under the
CDA).
G.
CONCLUSION
The analysis of current cases concerning the use of trademarks in
entertainment media involves consideration of several key principles.
First, trademarks are not a monopoly right or a right in gross. The law
does not permit the brand owner to control all use of its mark; only those
uses that are infringing. Second, if the defendant’s use of the mark is for
the purpose of selling a product or service, it is unlikely to receive any
heightened free speech protection and is likely to be subjected to a
traditional trademark likelihood of confusion analysis. Third, if the
defendant’s use of the mark is for the purpose of artistic expression, it is
likely to received added First Amendment protection and therefore less
likely to be considered an infringement. In some cases, the First
Amendment interest may be sufficient to bar relief. Finally, the evolving
nature of brand placement and sponsorship may in the future alter
consumer perceptions about the brand owner’s relationship to the
appearance of the mark in entertainment media. If the public comes to
believe that the appearance of a mark in entertainment media is indeed
controlled by the brand owner then the Courts may follow by more
readily finding a likelihood of confusion as a result. That potential is
suggested by the trends discussed above, but is not yet prevalent in the
issued decisions.
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NOTES
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