[NEohioPAL] Trademarks Appearing In Your Film – How to Use Marks Owned by Others – Installment #4 By Mary Ellen Tomazic

[Mary Ellen Tomazic]

V. Set Dressing and Product Placement



        Filmmakers have not only the macro-considerations of famous
buildings and facades in their movies, but also the micro-considerations of
copyrighted or trademarked items or images in their shots. Each frame must
be scrutinized to make sure all clearances are completed for parts of the
set dressing that may be the subject of a copyright or trademark. Even
scenes or items visible on a television in a room are possible infringements
if the rights holder sees or is made aware of the appearance in a film of
his or her intellectual property. Although the quality of the shot makes a
difference, whether the item is out of full focus in the background or is
shown for a very limited time, there is still the chance of liability for
the filmmaker. Several infringement cases have been decided against the
filmmakers in instances of set dressing, some filed only because the rights
holder was not consulted nor given credit in the movie for the creations
used. In *Ringgold v. Black Entertainment Television, Inc., Home Box Office,
Inc.[1]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn1>
*, an artist created a work of art entitled “Church Picnic Story Quilt”
which depicted aspects of the Africa-American experience in the 1900s. Ms.
Ringgold had sold the original quilt to a church in Georgia, but retained
the copyright to the work. The church put it on display and created posters
of the quilt which were sold in its gift shop for $20.00 each under a
non-exclusive license; thousands of copies of the poster have been sold
since 1988. The artist was watching the ROC television show on the BET
network and saw a poster of her creation in the background of a church. The
show was originally aired on a broadcast television network in 1992, and in
October 1994 BET aired the show for the first time on cable television. Ms.
Ringgold happened to watch a repeat showing of the episode and at that time
became aware of the defendants’ use of the poster as part of the set
decoration.[2]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn2>Ms.
Ringgold sued the defendants for the unauthorized use of the poster as
part of the set decoration for the episode of “ROC” under federal copyright
law[3]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn3>,
and also alleged common law unfair competition and a violation of New York’s
statute protecting artistic authorship
rights.[4]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn4>
The
lower court in the Southern District of New York found for the producers of
the show, saying that the use was “incidental and reasonable” and fell
within fair use. The plaintiff’s claims for unfair competition were
dismissed as being preempted by the Copyright Act, and declined to exercise
jurisdiction over her state law claims. On appeal, the Second Circuit
reversed the lower court, holding that the producer’s use of the poster did
not fall within the fair use standard under federal copyright laws. Although
the poster is never referred to by the actors and is in the background of
the main action, and is only shown for a total of twenty-seven seconds in
nine shots, the use was not “de minimis” or insignificant. The poster was
not in perfect focus, but is plainly observable by the audience. The Second
Circuit court refers to a regulation issued by the Librarian of Congress
providing for royalties to be paid by public broadcasting entities for the
use of published pictorial and visual
works.[5]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn5>The
Librarian distinguishes between a “featured” and a “background”
display,
setting a higher royalty rate for the
former.[6]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn6>The
court then remarks:



“… the Librarian has defined a "featured" display as "a full-screen or
substantially full screen display for more than three seconds," id. §
253.8(b)(2), and a "background" display as "[a]ny display less than
full-screen or substantially full-screen, or full-screen for three seconds
or less," id. If defendants' program were to be shown on public television,
plaintiff would appear to be entitled to a "background" license fee for a
"less than full-screen"
display.”[7]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn7>



        The poster was visible several times for four to five seconds, both
in focus and out of focus, and the court held that such repetitive effect of
the multiple views of the image reinforces the visibly significant aspect of
decoration that the poster contributed to the set. The de minimis threshold
for actionable copying had been crossed, and the Court remanded the case to
the District Court for assessment by the fact finder of the four fair use
factors in section 107 of the federal Copyright
Act.[8]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn8>The
court also said that the lower court should give consideration to the
plaintiff’s claim under the New York Artists’ Authorship Rights
Act[9]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn9>,
which stated that the defendants violated her statutory rights because they
did not credit her as the creator of the story quilt.

        In light of Ms. Ringgold’s state claim, one has to wonder whether
she would have sued at all if she had been given proper credit by the
producers of the television show. The case is very instructive for
filmmakers because it sets out the boundaries of non-actionable use of a
copyrighted item in set decoration, and also provides a strong incentive to
ask permission of a rights holder and give credit for the use of his or her
creation in a film.

       The amount and substantiality of use of copyrighted photographs as a
set decoration figured in a different result in the case of *Sandoval v. New
Line Cinema Corp.[10]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn10>
* New Line Cinema used reproductions of ten copyrighted but never published
photographs taken by Jorge Antonio Sandoval in background shots for the film
“Seven”. The photographs only appeared in the film for short lengths of time
ranging from one to six seconds per shot, in a scene that lasted only one
and a half minutes and was an hour and sixteen minutes into the film that
was 123 minutes in total
length.[11]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn11>The
photographs were often obstructed from view by the actors and props in
the scene.

The lower court dismissed Sandoval’s copyright infringement action and
relied heavily on the analysis employed in the *Ringgold v. Black
Entertainment Television,
Inc.[12]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn12>
*, examining the four factors used in determining fair use: 10 the purpose
and character of the use; 2) the nature of the copyrighted work; 3) the
amount and substantiality of the portion used; and 4) the effect upon the
potential market for the copyrighted
photographs.[13]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn13>The
District Court decided to dismiss the case without first deciding
whether the use was “de minimis”, but the Circuit Court held that the use of
the photographs in the movie was de minimis as a matter of law and affirmed
the lower court’s judgment. Unlike in *Ringgold*, the court found that the
copying of the photographs “fell below the quantitative threshold of
substantial similarity”, because the photos were not “clearly visible” as
the artwork was in *Ringgold*. The reproductions of Mr. Sandoval’s
photographs as used in the movie were not displayed with sufficient detail
for the average lay observer to identify even the subject matter of the
photographs, much less the style used in creating
them.[14]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn14>Although
the plaintiff Sandoval claimed that the defendant film company
violated his right to publicly display his photographs under the Copyright
Act, but the lower court said that the photographs could not constitute a
“public display” because they are not recognizable to the
public.[15]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn15>Under
the requirements of the fourth factor in determining fair use, the
court stated that “ …the value of and market potential for his work is in no
way usurped, since the public is not even aware after viewing *Seven* that
they have had a glimpse of Sandoval’s
work.”[16]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn16>As
the use was deemed de minimis, no action for copyright infringement
can
be brought, and the issue of fair use was not necessary to determine. The *
Sandoval* case was described as the first to establish the de minimis
doctrine as a full defense to the unauthorized use of graphic works in
motion pictures and
television.[17]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn17>In
an earlier case in which a movie company used a copyrighted artwork
fashioned into a mobile for a baby’s crib in a film, the District Court in
New York found that the limited view given in the movie to the mobile did
not constitute a “copy” for purposes of a copyright infringement
action.[18]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn18>

        Although these three cases involved using copyrighted artworks to
dress a movie set, filmmakers would do well to examine their facts in
deciding on props to be used in their own movies. It is not unheard of in
the annals of filmmaking to see a prop or part of a set being elevated to a
symbol for the movie itself. This could elevate the prop into trademark
status, as merchandising of objects from the film ensues. If the prop turns
into a trademark identifying the film itself, a Lanham
Act[19]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn19>suit
could be brought by the creator of the prop if it is a copyrighted
work
such as a sculpture or photograph. Remember, the Lanham Act is intended to
prevent consumer confusion as to the source of goods, and the artist could
be using or intending to use the artwork as a trademark for his or her
goods. Lanham Act also governs unfair competition and trademark dilution or
tarnishment[20]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn20>,
and a prop used in a film in a certain way could leave the filmmaker open to
a lawsuit.[21]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn21>Copyright
and trademark rights are often overlapping and often both causes
of action, in addition to doctrines of privacy and publicity and state laws
protecting artist’s rights, should be considered in the context of clearing
rights for items used in your film.

         Product placement is sometimes seen as a panacea for filmmakers, a
way to make extra money from their film or to raise funds for the
production. Conceivably you can charge a trademark holder for the privilege
of being selected for use in your film, but often the company holding the
rights to the product does not desire an association with a smaller film.
There have been films financed by a non-film company so that their products
are featured prominently. This has already happened – Adidas bankrolled a
movie entitled *Goal! The Dream Begins *which was about a Mexican-American
boy who follows his dream to play professional soccer in Europe. Of course,
all the products in the film were made by Adidas, and the real soccer teams
featured in the film were sponsored by Adidas in real
life.[22]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn22>The
movie did not do that well at the Box Office, but a large company like
Adidas probably used the film as a part of its advertising campaign, not
expecting to recoup the money spent. The goal of Adidas was not to advance
or support the creativity of the film, but just to sell its products.
Filmmakers and the creative people who work with them on a movie may not
want to turn their vision of a film into a mere commercial for a company who
is willing to fund it. The issue of artistic control of such a
commercialized movie may cause a filmmaker to think twice about giving up
its creative ideas in favor of showing the product paying for the film. With
a big budget movie, there are usually specific requirements for product
placement such as use of the product and screen time, which are negotiated
in advance. Ten seconds of screen time is a common minimum requirement, and
the value received by the filmmaker is directly related to the screen time.
Favorable lines from a lead actor are also valuable. A large studio will
probably have as staff person to help obtain product placements. There are
also companies who help independent filmmakers obtain product placement
deals. Good Unit Production Managers maintain a list of product placement
companies, such as International Promotions (www.productplacements.com) and
Hollywood Product Placement
(www.hollywoodproductplacement.com).[23]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftn23>However,
the owners of a famous mark or product probably would not be as
receptive to allowing its use in a small independent film, much less pay for
prominent placement. More likely a trademark holder would not want to share
its goodwill and reputation by allowing the indie film to “piggyback” onto
it with product placement, especially in the advertising or trailers for the
film. There has been special concern recently with the YouTube appearance of
trademarks; large media companies routinely demand the removal of clips from
shows, and there is double trouble if the material uploaded to YouTube
contains copyrights or trademarks that a holder may object to. For
independent films, product placement could take the form of the company
supplying food or drinks for the cast and crew, if the actors drink the
brand on screen, or the filming takes place in their establishment. Some
entrepreneurs may want to have their product featured in a film, no matter
how small the audience; a local filmmaker may want to help out a local
concern by featuring its product, which may be a good deal for all involved.
Realistic expectations and achievable goals are the best bet for an
independent filmmaker contemplating the use of product placement. Matching
the size and reach of your film to a similarly situated product will be the
key to a good relationship. Perhaps a fledgling firm just launching its
product would like to help out a smaller film that has a subject matter that
fits its target audience. In turn, a filmmaker may want to associate its
film with that target audience by featuring or placing the firm’s product or
service in its film. The larger film may not reach the target audience of a
product as well as a smaller film more focused on a certain niche audience.






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%234.docx#_ftnref1>
40
USPQ 2d 1299 (SDNY 1996)

[2]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref2>
*Ringgold v. Black Entertainment Television, Inc. Home Box Office, Inc*., 126
F.3d 70 (2d Cir. 1997).

[3]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref3>
17
U.S.C. § 106 (1994).

[4]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref4>N.Y.
Arts & Cult. Aff. Law § 14.03 (McKinney Supp. 1995).

[5]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref5>37
C.F.R. § 253.8 (1996) (implementing 17 U.S.C. 118(b)).

[6]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref6>Id.
§ 253.8(b)(1)(i)(A), (B).

[7]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref7>
126
F.3d 70 (2d Cir. 1997).

[8]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref8>
17
U.S.C. § 107.

[9]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref9>Id.
footnote 60.

[10]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref10>
973
F.Supp. 409 (S.D.N.Y. 1997); affirmed 147 F.3d 215 (2d Cir. 1998).

[11]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref11>Internet
Movie Database: <http:
imdb.com/Title?0114369>.

[12]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref12>Id.
fn. 58.

[13]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref13>
*Sandoval v. New Line Cinema Corp*., 973 F.Supp. 409, 412-414
(S.D.N.Y.1997).

[14]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref14>
*Sandoval. New Line Cinema Corp*., 147 F.3d 215 (2d Cir. 1998).**

[15]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref15>
973
F. Supp 409, 412 (S.D.N.Y 1997).

[16]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref16>Id.
at 414.

[17]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref17>
Website
of Pryor Cashman LLP, Attorneys at Law,
http://www.pryorcashman.com/f-39.html

[18]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref18>
*Amsinck v. Columbia Pictures Industry, Inc.*, 826 F. Supp. 1044 (S.D.N.Y.
1994).

[19]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref19>
15
U.S.C. § 1125.

[20]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref20>15
U.S.C. § 1114.

[21]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref21>
See,
e.g. *Wham-O v. Paramount Pictures Corp.,* 286 F.Supp.2d 1254 (N.D. Cal.
2003).

[22]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref22>
Michael C. Donaldson, Clearance and Copyright 265 (3d Edition, Silman-James
Press 2008).

[23]<file:///C:/Users/Maryellen/Documents/Trademarks%20%20In%20Films%20-%20Installment%20%234.docx#_ftnref23>Id.
at 266.
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