[NEohioPAL] Trademarks Appearing in Your Film -How to Use Marks Owned by Others - Installment #1

[Mary Ellen Tomazic]

Trademarks Appearing In Your Film – How to Use Marks Owned by Others –
Installment #1

By Mary Ellen Tomazic



I. Concerns and questions from filmmakers



        A common ongoing concern of filmmakers is whether and to what extent
a trademarked image may be included in a film. Questions abound in the film
community about whether someone’s logo can be used in the film, what if any
is the difference, if any,  if it is filmed from a public place, and what
about famous public buildings? Filmmaking message boards often include
robust discussions about the concept of product placement and its role in
independent films. In these technologically advanced days, the question of
whether YouTube may be used to advertise or update progress of a film, and
whether trademarks can be included in trailers uploaded to that site. Just
as you cannot take anything you want off the internet, owners of trademarks
and other intellectual property will be watching to make sure their
materials are not uploaded to the internet without their permission. The
items on the internet may be there with permission, though you will not be
able to tell that from viewing the photograph or clip. It also may have been
taken and uploaded without permission, and the uploader may have already
gotten a threatening letter from a lawyer representing the material’s
copyright holder. It is a rare case that programs or clips on the internet
are in the public domain, and the risk of not being able to obtain insurance
or distribution for your film is not worth taking the material. In addition,
YouTube now has an automatic video monitoring service called “Claim Your
Content” which will automatically identify copyrighted material and remove
it from its site.[1]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftn1>You
may check back to see the clip you took from YouTube and find that it
has been removed, which is a pretty good indication it was uploaded without
permission. Trademark holders are especially diligent in ferreting out uses
of their mark in an unfair way to bolster marketing of a film or other
product, associating unrelated products with their goodwill and benefiting
from their works without paying for them.

        A filmmaker must be aware of the laws regarding the unauthorized use
of famous trademarks in films, as well as case examples of what can happen
if it is done.



II. Federal and State Trademark and Unfair Competition laws



        Protection of trademarks and service marks is governed by the
federal Lanham Act, which is part of Title 15 of the United States Code,
passed in 1946 during the presidency of Harry Truman. It prohibits
activities such as false advertising and trademark infringement and prevents
use of a mark that would create consumer confusion about the origin,
sponsorship, or approval of their goods by another
person,[2]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftn2>or
that misrepresents the source of the trademarked product or service in
commercial advertising.[3]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftn3>The
mark owner is not required to share its widespread reputation and
goodwill with the infringers using a similar mark.

        Unlike the subjects of copyright or patents, trademarks are intended
to be used in commerce to identify goods.  As long as they are used on the
product, protection of the mark, either a trademark for goods or a service
mark for services, protection of them does not have a time limit. They do
have a requirement of continuous use, and can be deemed abandoned by lack of
use. Depending on the class of goods, the use of a trademark or service mark
can be worldwide or in a certain geographical area. With the global economy
and worldwide sites such as YouTube and Facebook, the geographical area of
use of a mark has been expanded. Filmmakers are no longer insulated from
infringement suits by their geographical distribution limitations, since
their film is likely to be viewed by people in the areas where the trademark
is used.

        There are two causes of action for owners of trademarks against
infringers of their mark. The first is deception, or misleading use of a
mark, or even outright counterfeiting of the mark, causing the possibility
of consumer confusion, which is the main harm envisioned by the Congress
when the trademark laws were enacted. Some states, including Ohio, have
criminal statutes prohibiting counterfeiting of
trademarks.[4]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftn4>The
civil trademark laws were designed to protect the makers of products
using a famous mark from others “passing off” their goods as those of the
trademark owner, especially when they consisted of inferior goods. The
Act  prohibits
any person from using on or in connection with any goods in commerce
any “ … word,
term, name, symbol, or device, or any combination thereof, or any false
designation of origin, false or misleading description of fact, or false or
misleading representation of fact” to mislead or deceive people about the
affiliation, association or connection with a person or product, “ … or as
to the origin, sponsorship or approval of his or her goods, services or
commercial activities by another person, or in commercial advertising or
promotion misrepresents the nature, characteristics, qualities, or
geographic origin of his or her or another person’s goods, services, or
commercial activities”[5]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftn5>
 The Lanham Act defines `”famous mark” as “…widely recognized by the general
consuming public of the United States as a designation of source of the
goods or services of the mark’s
owner.”[6]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftn6>
This
false association not only hurts the market for the trademark owner’s goods,
but had the potential to harm the reputation of the trademark owner and his
goods. The second cause of action that trademark owners use against
infringers is the concept of dilution, which has two different ways a mark
owner can be harmed. The first is by using the mark on different goods from
different sources so that the strength of the mark is diminished by overuse
and its distinctiveness is eroded, called
`blurring’[7]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftn7>.
The other type of dilution is by tarnishment of the mark, using it in
inferior or in an unwholesome or degrading context that harms the reputation
of the famous mark.[8]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftn8>Under
the Act, neither type of dilution requires actual or likely confusion,
competition, or actual economic
injury.[9]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftn9>


        State anti-dilution statutes were the main source of protection for
owners of trademarks, until Congress in 1996 amended the Lanham Act to adopt
the Federal Trademark Anti-Dilution Act. The state laws were considered too
varied and difficult to enforce uniformly against infringers who had goods
in commerce across the country. The state anti-dilution laws formerly had a
different standard of proof for dilution, requiring only the “likelihood of
dilution” rather than “actual
dilution”.[10]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftn10>State
statutes also do not contain an exemption for noncommercial use.
[11]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftn11>When
the Federal Trademark Anti-Dilution Act (FTDA) was adopted, it defined
dilution as “the lessening of the capacity of a famous mark to identify and
distinguish goods.”[12]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftn12>Another
amendment in 2006 lessened the burden of proof for the mark holder
to require only the *likelihood* of dilution, rather than *actual* dilution.
[13]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftn13>Previously,
state anti-dilution statutes provided the only avenue for
protection of trademarks from similar or the same marks by non-competitors,
but Congress determined that the many different state laws were inadequate
to protect trademarks in the global marketplace. The new federal
anti-dilution statutes provide for injunctive relief, damages and possibly
destruction of the infringing goods under the new
amendments.[14]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftn14>

       How do these federal and state laws affect the filmmaker; will he or
she be violating the law by any appearance of a famous mark in his or her
film? Fortunately, the trademark statute itself, in section 1125, “False
designations of origin, false descriptions, and dilution forbidden” provides
that noncommercial use of a mark, in the sense that the use is not
attempting to identify the source of goods, but is used in a nominative
sense, is considered fair use and not infringement:



             ***

             *3)* *Exclusions*

The following shall not be actionable as dilution by blurring or dilution by
tarnishment under this subsection:

*(A)* Any fair use, including a nominative or descriptive fair use, or
facilitation of such fair use, of a famous mark by another person other than
as a designation of source for the person’s own goods or services, including
use in connection with—

*(i)* advertising or promotion that permits consumers to compare goods or
services; or

*(ii)* identifying and parodying, criticizing, or commenting upon the famous
mark owner or the goods or services of the famous mark owner.

*(B)* All forms of news reporting and news commentary.

*(C)* Any noncommercial use of a
mark.[15]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftn15>



           ***

        That is not to say that any *commercial *use of a trademark will
trigger a lawsuit; even if a trademark is used in connection with a
commercial, i.e. for-profit unrelated product, it is not to be confused with
“commercial use” under the Lanham Act. Collateral use of a trademark, uses
as it was intended by a secondary user as part of a larger work such as a
film has been allowed so long as the public would not be deceived or led to
believe that the senior user of the mark was somehow the sponsor of the
secondary user’s
item.[16]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftn16>Collateral
use has come to mean the association of the mark with the
authentic product, and only dilution can be used to attack an otherwise fair
use, as when the mark is not used so as to confuse a consumer, but in a way
that the mark owner does not like. Fair use is a concept used in copyright
law, but has been analogized in cases and finally codified in the federal
trademark act, by excluding “nominative” or “descriptive” uses, and the
defense is stronger with uses of the mark other than with the same goods,
which do not serve as an identifier of the goods, as is usually the case
with movies. The mere appearance of a famous mark in a film, not intended to
associate the film with the famous mark’s goods or reputation, but used in
its intended manner in identifying the product itself appearing in the film,
is considered nominative or descriptive, and not a violation of the Act.





Mary Ellen Tomazic is an attorney in Cleveland specializing in entertainment
issue such as copyright, trademarks, contracts and licenses for musical
groups and filmmakers.


------------------------------

[1]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftnref1>
Michael
C. Donaldson, Copyright & Clearance, 3d Edition 427 (Silman-James Press
2008).

[2]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftnref2>
See
15 U.S.C. §1125 (a)(1)(A) (providing a cause of action for a confusion
claim).

[3]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftnref3>See
15 U.S.C. §1125 (a)(1)(b) (providing a cause of action for a
misrepresentation claim).



[4]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftnref4>
O.R.C.
2913.34(F)(1)(a)(ii), which provides for criminal penalties for trademark
counterfeiting.

[5]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftnref5>15
U.S.C. § 1125(a).

[6]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftnref6>15
U.S.C. § 1125(c)(2).



[7]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftnref7>J.
Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 2:39
(4thed. 1999).

[8]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftnref8>
See,
e.g., *Dallas Cowboys Cheerleaders v. Pussycat Cinema, Ltd.*, 604 F.2d 200
(2d Cir. 1979).

[9]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftnref9>15
U.S.C. § 1125(c)(2)(c).

[10]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftnref10>
See,
e.g. Pillsbury Co. v. Milky Way Prods., Inc., 215 U.S.P.Q. (BNA) 124 (N.D.
Ga. 1981) (noting that Georgia’s anti-dilution statute requires only a
likelihood of dilution). Ohio does not have an anti-dilution statute; O.R.C.
2913.34(F)(1)(a)(ii), the criminal Trademark Counterfeiting law requires a
likelihood of “confusion or mistake or to deceive other persons”.

[11]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftnref11>See,
e.g., Cal. Bus & Prof. Code § 14320(a) (West 2005).

[12]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftnref12>15
U.S.C. §1127; 15 U.S.C. §1125(c) added by Pub. L. No. 104-98, §
3(a)(1996).

[13]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftnref13>
Trademark
Dilution Revision Act, Pub.L. No. 109-312 § 2(1).

[14]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftnref14>
15
U.S.C. § 1117(a), §1118.

[15]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftnref15>
15
U.S.C. § 1125 (c)(3).

[16]<file:///C:/Users/Maryellen/Documents/Trademarks%20in%20Films%20-%20Installment%20%231.docx#_ftnref16>
McCarthy,
supra note 6, at § 11:47.
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