[NEohioPAL] Trademarks in Films - Installment #2

[Mary Ellen Tomazic]

Trademarks Appearing In Your Film – How to Use Marks Owned by Others –
Installment #2

By Mary Ellen Tomazic

 III. Recent Judicial Tolerance

         In the past courts have taken a hard line stance in favor of
the mark owners in finding infringement when a trademark is used
without authorization as part of a film, reasoning that the use may
lead the viewer to think there is some connection between the product
and the film. In recent years however, many courts have shifted more
in favor the defendant filmmakers in ruling that if the mark is not
unreasonably displayed or highlighted, and is used incidentally in the
film, there is no infringement. Barring unusual circumstances, such as
unnecessary or abusive use of the mark, the appearance or mention of
well known trademarks or products bearing them in expressive works
does not give rise to a valid cause of action for infringement.[1]

        Since the purpose of trademarks and service marks is to
identify goods, there has been an ongoing debate whether the
appearance of trademarks in a film constitutes infringement of the
mark, since that type of use is not identifying any product. The
Lanham Act[2] protects trademark owners from consumer confusion over
the source of products or services. A test for application of the
Lanham Act has been developed in the courts, balancing the public
interest in avoiding consumer confusion against the public interest in
free expression. More concerning to filmmakers is the second cause of
action for trademark infringement, which involves anti-dilution
statutes, protecting trademarks from tarnishment, using the mark in a
negative light or on inferior or unwholesome products.

        Courts have accepted the defense of `nominative use’, based on
the recognition that it is virtually impossible to refer to certain
entities without using their trademark names, as when referring to the
Chicago Bulls or Volkswagens. Also, trademarks sometimes enter the
language as descriptive words, where something is referred to as the
`Rolls Royce of its class’ or a `Band Aid quick fix’. These situations
clearly do not cause consumer confusion about the source of goods
under the Lanham Act. When a mark is not used in a trademark sense to
identify goods, courts are reluctant to find infringement. So for
filmmakers, some collateral use of trademarked products merely to
identify the original product associated with the mark as part of an
expressive work will be seen as fair use. However, such a nominative
use becomes more problematic when used to “piggyback” onto the mark
holder’s goodwill and reputation by highlighting the famous mark in
advertising or trailers. In those cases the mark holder may sue to
stop the perceived association or sponsorship of the film with the
mark, and prevent the free ride by the unauthorized user. The
filmmaker must keep the appearance of the mark in his or her film
short and just enough to name the product as such, and avoid any
disparagement of the product or mark. Also remember that the state and
federal anti-dilution statutes apply to any use, even on unrelated
goods. Filmmakers should remember the three requirements for
nominative use as wet out in the New Kids on the Block case: 1) the
product is not readily identifiable without the use of the trademarked
name; 2) only so much of the trademark is used as is reasonably
necessary to identify the product; and 3) the user must do nothing
that would, in conjunction with the mark, suggest sponsorship by the
trademark holder.[3] An example of a use of a trademark in a film that
was deemed too prominent was the Slip ‘N Slide toy used in the film
“Dickie Roberts: Former Child Star”.[4] Although the scene in which
Dickie Roberts and his siblings play on the famous slide, without
water, lasts roughly 70 seconds, it played a prominent role in the
film’s advertising and promotion al campaign, appearing in the film’s
publicly released trailers and television ads. The Wham-O company
asked Paramount to insert a disclaimer regarding the slide’s trademark
and proper use, and Paramount refused, prompting Wham-O’s lawsuit. The
plaintiff claimed Paramount’s misuse of the slide in the film
tarnished Wham-O’s trademarks, but the court disagreed, holding that
the depiction of the slide in the film did not “inspire a degree of
probably loss of the capability of the mark to serve as a distinctive
identifier.” The absurd depiction of the trademarked slide did not
“present a danger that consumers will form unfavorably associations
with the mark.”[5] The court deemed Paramount’s use of the slide a
nominative use, as there was no other way for the movie company to
identify the toy in question, and there was no need for Paramount to
“use absurd turns of phrase” simply to avoid using the name Slip ‘N
Slide. It was sensible and necessary to refer to the slide by its
popular name.[6]

        There are many case examples where courts found that the
unauthorized use of a mark in different contexts and on different
goods caused or could cause tarnishment of the mark and its owner’s
reputation. An example of a famous mark being used in a film and
causing tarnishment is the case of Dallas Cowboys Cheerleaders v.
Pussycat Cinema, Ltd.,[7] where similar uniforms to the Dallas Cowboy
Cheerleaders and the phrase “Dallas Cheerleaders” were used in a
pornographic film, “Debby Does Dallas”, The court found that the
cheerleaders had established a trademark in their uniform style, as
well as a reputation for family entertainment, and that the reputation
of the cheerleading squad were tarnished by the perceived association
with the “depraved” film, and ordered that the film be enjoined. The
film was put forth as a parody, the First Amendment defense failed
probably because of the ”unwholesomeness” sexual nature of the film,
even though the defendant claimed it was a commentary on “sexuality in
athletics”. The court said that there were alternate avenues for such
a comment so that the film was not protected under free speech.[8]
Filmmakers should not assume that labeling the unauthorized use of a
trademarked product in his or her film a “parody” will inoculate it
from infringement; In the landmark 2 Live Crew Case,[9] The Supreme
Court set out requirements for a parody under copyright law. The Court
said that in cases of parody there should be a case-by-case analysis,
but using the copyrighted work, the second work must comment upon or
criticize the original work, and should use only so much as is
necessary to “conjure up” the original to make its point. The
commercial nature of the second work was not dispositive of the
issue.[10]   Other cases of association of a famous mark with
“unwholesome” products include Coca Cola v. Gemini Rising, Inc.[11],
in which a poster company’s use of the familiar and trademarked
Coca-Cola bottle outline with the words “Enjoy Cocaine” written in
Coca-Cola’s distinctive script.[12] The court enjoined the company
from manufacturing the posters, saying the defendants associated as
“noxious substance” with the plaintiff’s “wholesome beverage” and
caused actual confusion in the marketplace.[13] The defendant’s First
Amendment defense was not accepted by the court, saying that the
damage to the mark and to the mark owner’s goodwill and business
reputation was a special circumstance in which the court may enjoin or
restrain expressive material.[14]

        Some writers are of the opinion that the opinion strikes the
wrong balance between public and private interests[15], and artists
and other creators of expressive works should be able to include
trademarks and trademarked products as part of their works, especially
where the line between commercial and non-commercial speech has been
blurred.[16] This issue may not be finally resolved by the courts for
all situations, so filmmakers should approach the use of trademarks in
filmmaking with caution. As shown in the Dallas Cheerleaders and
Coca-Cola cases, trademark owners are still acutely concerned with the
use of their marks in “unwholesome” ways, and still aggressively
police their marks when they are used in such a manner. George Lucas
is a filmmaker who regularly sues for unauthorized uses of his
trademarks from his films. There have been a number of cases in which
he sued for unauthorized use of trademarks from his “Star Wars” movie.
In Lucasfilms Ltd. v. High Frontier[17], the term “Star Wars” was used
by a think tank to describe the Reagan administration’s Strategic
Defense Initiative idea to shoot down missiles with space-based
lasers. Critics, newspapers and the public began referring to the
initiative a “Star Wars”. The court ruled that the trademark was not
infringed, since it was not used on a product or service, but was used
descriptively.[18] In another Lucas lawsuit however, Lucasfilm, Ltd.
v. Media Mkt. Group, Ltd.,[19] George Lucas objected to an animated,
X-rated film called “Star Ballz”. The movie, though crude and shoddily
made, used elements from the original “Star Wars” movie and
“’parodied” them.  Lucas objected not only to the “unwholesome” use of
his trademarked characters and “light saber”, but argued that since it
was animated and other children’s cartoon characters were also used,
that it may be marketed to children. (In fact the trailer for the film
was G-rated.)  The court sided with the filmmaker and against Lucas,
saying that reasonable consumers would not be confused about the
source of the X-rated film, and that “Star Wars” and “Star Ballz”
would not be sold in the same outlets so the market for “Star Wars”
would not be harmed.[20]

         Sometimes merely the title of a film is claimed to have
infringed on a famous mark, causing confusion as to the origin or the
film. Such was the case in Rogers v. Grimaldi, MGM/UA,[21] a movie
title case in which Ginger Rogers sued the filmmaker of “Ginger and
Fred” for the use of her name. The court held that she could not sue
for infringement because the title of the film was not likely to
confuse consumers that Ginger Rogers was involved in or sponsored the
production in any way.[22] The film was about two dancers who imitated
Ginger Rogers and Fred Astaire, and the court felt that the title had
artistic significance to the film. However, the court also cautioned
that had the subject matter of the film not been relevant to the
title, Ms. Rogers might have been successful in her infringement
claim.[23] The filmmaker used the recognizable name of a famous dancer
to evoke the subject matter of dancing in a nominative way, evoking
the idea of the famous dance scenes of Ginger Rogers and Fred Astaire
to put forth their artistic vision of the film. The use of the name
was reverential, not disparaging, which may have swayed the court in
its decision.


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] Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).

[2] 15 U.S.C. § 1051 et seq.

[3] New Kids on the Block v. News Am. Pub. Inc., 971 F.2d 302 at 308
(9th Cir. 1992).

[4] Wham-O v. Paramount Pictures Corp., 286 F.Supp.2d 1254 (N.D. Cal. 2003).

[5] Id.

[6] James G. Sammataro, Esq., The Increasing Judicial Tolerance
Towards the Unauthorized Display of Trademarks in Motion Pictures, 4
Andrews Intellectual Property Litigation Reporter 13 (June 7, 2005).

[7] 604 F.2d 200 (2d Cir. 1979).

[8] Id. (citing Lloyd Corp. v. Tanner, 407 U.S. 551, 567 (1972)).

[9] Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).

[10] Id.

[11] 346 F. Supp. 1183 (E.D.N.Y. 1972).

[12] Id. at 1186.

[13] Id. at 1188-89 & n. 5 (noting that customers had actually written
to Coca-Cola demanding an explanation why the soft-drink company was
promoting illegal drug use).

[14] See Id. at 1192-93.

[15] Policing the Border Between Trademarks and Free Speech:
Protecting Unauthorized Trademark Use In Expressive Works, Pratheepan
Gulaskaram, 80 Wash. L. Rev. 887, 900 (November 2005).

[16] Id. at 887.

[17] 622 F.Supp. 931 (D.D.C. 1985).

[18] Id.

[19] 182 F. Supp. 2d 897, 901 (N.D. Cal. 2002).

[20] Id.

[21] 875 F.2d 994 (2d. Cir. 1989).

[22] Id. at 1001.

[23] Id.