[NEohioPAL] Trademarks Appearing In Your Film – How to Use Marks Owned by Others – Installment #3

[Mary Ellen Tomazic]

Trademarks Appearing In Your Film – How to Use Marks Owned by Others –
Installment #3
By Mary Ellen Tomazic

IV. Famous Buildings and Facades



        The appearance of famous or landmark buildings and facades in a
filmmaker’s shot has caused much consternation and discussion, not to
mention the creation of myths in the filmmaking community. As with the use
of copyrighted music, there is no amount of time associated with an
automatic finding of fair use of the famous building or trademarked product
in another creative project. It comes down to the same type of guidelines in
copyright law, as set out in the previous installment in the *New
Kids*case. The use cannot be overly highlighted so as to suggest
association or
sponsorship of the work by the trademark holder, should be only enough to
identify the authentic product, or in the case of a building, the location;
and it should be in a situation where there is no other way to refer to the
building or landmark other than by its proper name. The appearance of a
famous building in a larger work such as a film, as opposed to a poster
created that used the trademarked façade to sell posters of that building as
such, should be deemed nominative and not an infringement of the mark. The
most well-known example of this difference is in the case of *Rock and Roll
Hall of Fame and Museum, Inc. v. Gentile
Products[1]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn1>
*, in which an injunction was issued against a photographer who was selling
posters bearing a photograph had taken of the Rock and Roll Hall of Fame and
Museum building. The district court found that due to the “extensive
advertising and promotional activities of the Museum and building design
trademarks, the public had come to recognize these trademarks as being
connected with or sold by the Museum, its official licensees and/or official
sponsors.”[2]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn2>The
Rock ‘N Roll Hall of Fame case did involve the sale of a poster of the
building alone, in the exact positioning of the logo used by the museum,
from the front of the building. It was seen as cutting into and harming the
market for similar posters of the museum, in the same position, sold by the
museum. The building was used to sell a picture of the actual museum, not as
just a part of the Cleveland skyline, as in a movie. However, the Sixth
Circuit Court of Appeals did not see it the way the museum did. The court
remarked that the building, though distinctive, was not used as a trademark
at that time by the museum, and its existence as a public landmark further
undermined its `fancifulness’ as a
trademark.[3]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn3>The
court did not see the design of the building as an indicator of source
or sponsorship, but rather the defendant took a photograph of an accessible,
well-known public
landmark.[4]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn4>It
then held the museum failed to project a consistent image of itself to
the public, further undermining the premise that the museum used the
building as a trademark, and remanded the case back to the district court,
where the injunction was
dissolved.[5]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn5>


        A different twist on the use of famous buildings and facades came in
the case of *Sherwood 48 Associates v. Sony Corporation of
America*,[6]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn6>which
was filed by the owners of Times Square buildings and the lessee of
advertising space on those billboards in 2002 against Sony. The defendants,
makers of the first Spider Man movie, digitally altered the images of the
buildings and billboards to take out their advertisements and replace them
with others for which the moviemakers solicited and received payment. The
plaintiffs claimed that Sony had violated their trademark and trade dress
rights, and that they had been harmed by the loss of advertising revenues.
The suit said that advertisers contract for advertising space at Two Times
Square not only as a result of the prestige ad favorable connotations
associated with the building, but because the images of the building and
their sign will be seen by billions of television viewers, internet users,
movie goers, magazine and book readers, and others during the course of
their contract with
Sherwood.[7]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn7>Sherwood’s
complaints included state law claims for trademark infringement
as well as federal counts for trademark infringement and trespass, and
alleged trademark rights in the image of the building, citing its “unique
configuration and ornamentation of Two Times Square and (its) advertising
and signage display”.[8]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn8>They
claimed that the superimposition of the new advertisements over the
contracted signs is likely to cause confusion, deception, and mistake as to
the origin or source of the altered building and/or the advertising and
signage display. The plaintiffs also raised a claim for trademark dilution
under the New York anti-dilution
statute.[9]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn9>The
District Judge dismissed both federal and state claims, and Times
Square’s owners appealed; the federal appeals court affirmed the dismissal
of the federal trademark claims, but said they could file their trespass
claims in state court since it was an “unsettled question of state law”. The
case was dismissed before Sony could show that its digital alterations had
“artistic relevance” to the movie and were therefore protected under the
First Amendment.[10]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn10>I
have doubts that this defense would have worked for Sony, since they
used
the altered signage in a very commercial way, the same way the plaintiffs
who sold advertising space used their famous building. The use by the
moviemaker was not a nominative one, since they sold their own ads to be
seen by millions watching the movie, and took away the exposure of the
existing ads that had already been paid for to be seen on that building. If
Sony was allowed to continue replacing paid ads, the plaintiff owners were
likely to lose revenue since major corporations would not want to contract
with Two Times Square if their ads were not going to get the amount of
exposure that they had contracted for. The claimed “artistic relevance” to
the movie was diminished by the fact that these ads were NOT actually part
of the famous building and could not be seen there from a public access
point, as is the case with nominative uses of famous building and facades
used as trademarks. The case shows the possible harm to mark holders in a
kind of backwards way, since the moviemakers were taking out the marks and
replacing them with their own paid advertisements. It also teaches that
filmmakers will not help themselves to avoid trademark violations by
digitally replacing famous marks on a building, due to the commercial
purpose of trademarks of identifying the source of goods.

          A filmmaker may want to do a parody involving a famous building to
avoid infringement claims, but courts have weighed in on that defense as
well. In the case of *New York Stock Exchange v. New York, New York Hotel,
LLC,[11]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn11>
* the Stock Exchange sued the hotel and casino for trademark infringement
and trademark dilution when the casino used a replica façade of the New York
Stock Exchange’s building with its actual logo, but changed the wording in
the logo to “New York $lot Exchange” and “NY$E” for signs on its frequent
gambler’s club. The “parody” logo was also used on t-shirts and caps and
other souvenirs given out by the club. The court found the actual registered
logo of the New York Stock Exchange and its “NYSE” abbreviation to be
distinctive and eligible for the Lanham Act’s anti-dilution protection. The
District Court did not find the building itself, a historical landmark, to
be inherently distinctive, but the Circuit Court of Appeals disagreed,
finding that the building that housed the stock exchange, which consists of
“a triangular pediment, displaying eleven bas-relief figures, that is
supported by six Corinthian columns and topped by an attic, (and) also
contains the words "New York Stock Exchange" on the
frieze,[12]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn12>
was
neither generic nor descriptive of a stock market. The court’s discussion
described the layout of the New York, New York Hotel and casino in Las
Vegas, and how it used other famous New York images were used in a playful
way to set the stage for its New York theme. The court said that it was
obvious that the casino was engaged in a parody or humorous play on words
that consumers would not mistake the modified marks for the real
thing.[13]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn13>The
casino actually modified some of the original NYSE marks it has used
after this case was filed to “New York $lot Exchange” and “NY$E” instead of
the actual marks. The Exchange’s New York state claims for dilution and
tarnishment of their trademark, even with the defendant’s argument that
casinos are actually listed on the stock exchange, were sent back to
district court for further proceedings, since the Exchange wanted to
preserve a reputation for integrity and transparency in the trading
conducted on its
floor.[14]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn14>The
court’s reasoning points out to filmmakers that tarnishment need not
be
a seamy or unwholesome use of the mark, and arguments can be made by the
mark owners for the reasons they do not wish to be associated with a
particular use of their mark, ands why such uses may hurt their reputation.

      Some moviemakers have successfully used the defense of fair use of
copyrighted or trademarked images, as in the case that came out of the movie
“Batman Forever”, in which copyrighted sculptures on a building were part of
the backdrop for the film. Warner Brothers had obtained permission from the
owners of the building before including it in their film, but the sculptor,
Andrew Leicester, who had designed four sculpted towers on the building,
sued the producers of “Batman Forever” claiming copyright infringement.
Since the sculpture became a part of the building itself, the photographing
of the building did not constitute infringement. The section in the federal
copyright law, “Scope of exclusive rights in architectural works” provides
that the copyright in an architectural work that has been constructed does
not include the right to prevent the making, distributing, or public display
of the pictures, paintings, photographs or other pictorial representations
of the work, if the building in which the work is embodied is located in or
ordinarily visible from a public
place.[15]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn15>

         Sometimes a filmmaker’s use buildings with sculptures for
backgrounds is not favored by the courts, as in the case of the bas-relief
sculpture by Frederick E. Hart that adorns the National Cathedral in
Washington D.C. The use by Warner Brothers of a sculpture that substantially
resembled Mr. Hart’s in the movie “The Devil’s Advocate” was seen as
infringement. The movie showed the similar sculpture for twenty minutes of
the feature length film, and this substantial amount of time combined with a
part in the film in which the sculpture seem to move erotically swayed the
court toward a finding of infringement. The case settled out of court and
Warner Brothers was able to distribute the film in the home video market.
[16]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn16>Some
states have Artist’s Moral Rights laws, which protect the artist from
altered reproductions of their work which may negatively affect the
reputation of the artist. This is the European tradition and has now been
incorporated into United States law under the Visual Artists Rights Act of
1990[17]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn17>and
various state moral rights statutes. The laws of this country stop
short
of the European versions and only protect the artist’s original works,
except in New York, under the New York Authorship Rights Act, which purports
to include a prohibition against altering, mutilating, defacing or modifying
a work of art or reproduction of
thereof.[18]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftn18>However,
this law may not be as useful in films, since the copyrighted work
being used as a backdrop is not directly being “displayed, published, or
reproduced as being the work of the artist.” These cases illustrate the
delicate balance between filmmakers and other artists in the use of their
work. The same guidelines for use should be kept in mind when using
buildings, whether they include sculptures or not, as a background for your
film, as with other trademarks. The type of use, whether it is disparaging
or negative; the substantiality of the use, including the amount of time the
image is shown; and whether the use is highlighted as in advertisements or
trailers, which may lead to a presumed association or sponsorship of the
film with the famous trademarked building, makes a difference in whether the
use is seen as expressive and nominative, and thus being seen as
non-infringing by the mark holder.



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%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref1>934
F.Supp. 868 (N.D. Ohio 1996).

[2]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref2>
Rock
and Roll Hall of Fame and Museum, Inc. v. Gentile Prods., 134 F.3d 749, 754
(6th Circuit 1998).

[3]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref3>Id.
The case was heard in 1996, which was only a year after the building
was
finished, so it did not have much time to serve as trademark.

[4]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref4>Id.

[5]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref5>Id
at
756. On remand the district court found that the museum had not used an
image of the museum as a trademark, and granted defendant’s motion for
summary judgment. 71 F.Supp.2d 755 (N.D. Oh. 1999).

[6]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref6>
76
Fed. Appx. 389, 2003 U.S.App. LEXIS 20106 (2d Cir. 2003).

[7]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref7>
Complaint,
Sherwood 48 Associates v. Sony Corporation of America, 02 CV 2746 (April 9,
2002), ¶ 23.

[8]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref8>Id.
¶
50.

 [9]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref9>Id.
¶
74-77; NY General Business Law §360-1.

[10]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref10>Sherwood
48 Associates v. Sony Corp., 76
Fed. Appx. 389, 2003 U.S.App. LEXIS 20106 (2d Cir. 2003).

[11]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref11>
69
F.Supp.2d 479, 494 (S.D.N.Y.1999); affirmed and reversed in part, 293 F.3d
550 (2d Cir. 2002).

[12]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref12>
293
F.3d 550 (2d Cir. 2002).

[13]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref13>Id.

[14]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref14>Id.

[15]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref15>
17
U.S.C. § 120 (2010).

[16]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref16>
Larry
Witham, Sculptor Backed on `Advocate’ Lawsuit, WASHINGTON TIMES, Feb. 11,
1998, at A8; see also John T. Aquino, IP Issues Concerning Art and the
Movies, 6 NO. 1 INTELL. PROP. STRATEGIST 1 (1999).

[17]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref17>
17
U.S.C. § 106A.

[18]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%233.docx#_ftnref18>
N.Y.
Art. & Cult. Aff. Law § 14.03 (1), (2).
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