LEGALLY SPEAKING, IT DEPENDS: Trademarks in Film

Christopher Schiller is a NY transactional entertainment attorney who counts many independent filmmakers and writers among his diverse client base. Follow Chris on Twitter @chrisschiller.

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So, now that we've laid a rudimentary groundwork for understanding trademarks with this last column, Legally Speaking, It Depends: Trademarks Defined, everything should be easy-peasy from here, right? I think you know the answer to that (hint: it's in the column series title.) Understanding what trademarks are and how they are used by their owners is key knowledge, but, you have to be careful when writing scripts or making films to make sure they don't pop out of the woodwork where you didn't intend to find them. But once you get a sense of where and when to look out for them you can even start to plan to use them to your own (or better, a mutual) advantage.

To make sure you haven't run afoul of trademarks on a film it is always a good idea to have someone whose job it is to check to make sure that every potential issue is known and dealt with properly. That could be done by the clearances department when vetting the script to be ready for shooting as well as the art department and continuity people during production, checking labels and obvious trademarks. That's not always as clear cut as it might seem. For example, many people think that if you turn a bottle's label away from the camera you've prevented infringement. Sometimes that might be sufficient, but, if that bottle happens to be a classic Coca-Cola glass one, no such luck. They trademarked the distinctive shape of that glass figure as a recognizable link back to their product. So even if you can't read “Coke” you could still be stepping over the line.

This doesn't mean that you have to wipe your set clean of all labels and identifying paraphernalia. You don't have to shoot on a set reminiscent of the scene from Eternal Sunshine of the Spotless Mind where as the mind is wiping memories away all the labels of the foodstuffs on the shelves gernerify and go blank as the main characters run through a grocery store.

Knowing which trademarks are in play will set you up for the conversations with trademark owners that might be necessary or at least tip you off to those potential legal hiccups that might be down the road. With modern technology it is possible to remove some trademark infringements from already shot material, but better to know going in than facing a significant cost prohibition just before you've reached the finish line. Planning and foreknowledge is key to avoiding these pitfalls. Of course careful prudence and questioning everything doesn't hurt. Still, there could be problems staring you in the face that wouldn't even have occurred to you as potential problems.

Trademark protections aren't limited to the commonly thought of items. And the size and ubiquity of a thing doesn't rule it out from trademark protection. For example, what's the best imagery for showing that a story is set in Hollywood? If you answer the Hollywood sign you'd not only be right but also in for a discussion about trademark usage, since, you guessed it, it's a registered trademark. Every film, TV show, publicity shoot or commercial venture is supposed to license the use of the sign if it lingers before the cameras even for a brief glimpse. A writer that casually establishes location with a description, “Our heroes roar down the road with the Hollywood sign in their rear-view mirror,” has just added to the licensing cost of the eventual production.

And that's not the only landmark location that needs to be licensed if seen in a movie. Even though it's appeared as a jungle gym for King Kong in all it's versions and a popular meeting place from An Affair to Remember to Sleepless in Seattle the Empire State Building is a trademarked icon that needs to be licensed to be seen on screens. Many iconic buildings and structures are trademark protected precisely because they're iconic. The powers that be behind them wish to protect the images being conveyed of them in the works they're represented in.

You have to work out the details with each of these structural protectorates in particular. And sometimes those details can be quite complex. Thinking of shooting around the Eiffel Tower? Depending on whether it is a day shoot or night exterior will completely change the conversation you're going to have. (It's image is claimed to be in the public domain by day and protected at night!) If you are writing a script that revolves around an iconic or even just a familiar locale, a little due diligence might help avoid or at least prepare you for a legal conversation and cost analysis, so choose wisely at a stage when changes can be accommodated easily.

So let's say you've identified all the trademark issues you are going to encounter on set and are all set to shoot. Do you need to get permissions from everyone? The lawyer in me wants to say “Yes!” but the practicalist in me realizes the prudent answer is, “It depends.” There are lots of instances where trademarks should be usable without anyone raising a fuss. The key issue for trademark use is just that, the use. If you are using a product the way it is intended to be used and there isn't any implication being impugned to the product in that use, you should be fine. I say should, because the tenet still holds, “Anyone can sue you for anything.”

Take one of my favorite example cases Caterpillar Inc., v. Walt Disney Co. (287 F.Supp.2d 913, 68 U.S.P.Q.2d 1461 (C.D. Ill. 2003)) or as I like to refer to it as the George of the Jungle 2 case since it involves the straight-to-video sequel to the movie based on the silliest of TV shows. At one point in the plot of the film, the villain is set to destroy the forest with a line of bulldozers until George stops them in an explosive comic fashion. A humorous bit of fluff that no one could really take umbrage to, right? Unless you happen to be the manufacturer of said bulldozers.

Caterpillar, Inc. sued for the use of their equipment as the chosen (without authorization) instruments of evil. They plied many legal theories with regard to their trademark rights. They claimed infringement - unathorized use or misuse of their trademark, tarnishment – the denigrating of the product marked by their trademark within the marketplace lowering its established reputation, and dilution – the confusion between their trademarked goods and others in the mind of the consumer. The key issue in all of these claims, and all of trademark's protections really, comes down to use. How was the product used in the film?

The judged found that the bulldozers were used as you would expect bulldozers to be used, that is, to move earth and knock down things. The fact that the filmmakers showed the well-marked devices doing the job they were intended did nothing to affect the reputation of the devices regardless of who was supposedly operating them. And since the only bulldozers used in the film were Caterpillar ones there was little basis for the audience to get confused by another bulldozer makers vehicles. And how many audience members would really form an opinion about Caterpillar's products based on a silly movie anyway? The reputation of the filmmakers may have been affected by the film, but Caterpillar, not so much.

One defense that might serve a filmmaker in these circumstances might be an appeal to the U.S. Constitution's First Amendment protections for freedom of artistic expression. When creating a work of art there is supposed to be a less strict standard applied before considering an infringement of another's rights since freedom of expression is a fundamental right. But things are seldom as clear cut as they could be. Not all speech is equally protected. Commercial speech is much more restricted in our legal system because it is intent on swaying and influencing commerce and directly affecting the consumer. That's why advertising is much more strictly controlled than other forms of speech.

A movie can in some senses be considered for its artistic expression. But can't it also be considered a very commercial form of expression given the size and influence the industry has on our economy? These issues were considered in the case of Rogers v. Grimaldi about the film Ginger and Fred. Ginger Rogers (you know, the woman who did everything Fred Astaire did only backward and in high heels,) felt the naming of this dark film harmed the esteem of the Fred and Ginger reputation and so sued. The court struggled with the balance between a clearly commercial venture of making a marketable film against its artistic expression and merit. It finally decided a standard to judge by that took into account artistic relevance and whether the use of the trademark was explicitly misleading. It found in this case that the film was artistic enough to warrant First Amendment protections, but it leaves the door open that other films might not be. As always, it depends.

It's an interesting ironic observation that trademark owners have to adhere to the stricter standard for speech in the ads they use to help establish their use of trademarks, being commercial, whereas artistic expression can be more creatively fluid with associations and allusions. And you must keep in mind that the First Amendment is specific to the United States. There may be different or no similar protections available in other countries.

When you've got an artistic enough film then “use as directed” is a strong argument, but is it a bulletproof protection? What happens when the items being used have a social connotation that comes with them, like alcohol or cigarettes? Alcohol use is often part of a story about alcohol abuse or at least misuse. Is depicting a specific brand in a film with that storyline element something to worry about? Ask the producers of the Denzel Washington starrer Flight. The movie's main character has a problem with alcohol that is key to the story. But depicting some of the specific brands he was drinking didn't go down well with the brand holders Anheuser-Busch and the distributor of Stolichnaya vodka. In this instance, the most they could do was ask the studio to remove their logos from future distributions of the film and distance themselves from the film as much as possible. Mind you, the studios do not necessarily have to comply with these requests. Because of the artistic merit likely to be found in the film there is little legal recourse available for the trademark owner.

This is likely how many brand and trademark owners find themselves in films like Harley Davidson and the Marlboro Man. Clearly identifiable trademarks can be used in films but there is always the risk that a brand owner might take enough offense to try to protect their trademark, even if the legal outcome is unclear. It always depends on how far the filmmaker has gone and how protective the trademark owner might be.

How far can a filmmaker go? Probably the most audacious example of unauthorized trademark usage in a film has to be the short film Logorama that went on to win high accolades at Cannes and won the Academy Award. The French animated film by H5 used thousands of logos and trademarks of worldwide corporations in a fanciful depiction of an alternative world. And to say those marks weren't being used in the manner intended is putting it mildly. As a filmmaker, I applauded the film's daring, but as an attorney, I cringed thinking of the quagmire it opened up with the approach. So far, I still haven't heard of any lawsuits, though.

So when you're sitting down to write a script, should you worry about trademarks? It depends. Being armed with information about them allows you to decide for yourself. If a trademarked item is inherent to your story and you are using it in the way it is intended to be used you needn't shy away from putting it on the page. There will definitely be someone down the line that makes sure about the legal issues (hopefully sooner rather than too late later.) Remembering how artistic merit drives some of these legal decisions can bolster your confidence in using the marks in your work.

But it's not only how to avoid problems that should be considered where trademarks are concerned. There can be business advantages for the savvy writer or producer to take advantage of here. In olden days of the industry, someone thinking on their feet decided that placing a product on a set might have some intrinsic value to the product's manufacturer. They approached a likely prospect who could see the placement as a way of surreptitiously marketing their products in a good light without being heavy handed as blatant advertising often becomes. Hence product placement was born.

When done well, product placement is transparent to the audience. The character on the screen has to be eating somebody's brand of cereal, so, the fact that it happens to be that one shouldn't be surprising. Often, subtle product placement, where the item is just distinguishable in the background alone, is of value to the trademark holder. It associates the brand in a way that seems natural. Of course, going over the top can feel forced and the audiences is always more attuned to being manipulated than given credit for. And each of these arrangements needs to be contractually defined quite completely and precisely to avoid problems.

One drawback for the manufacturer whose product is being placed is that for the filmmaker, often one product is as good as another. That is how I hear that M&Ms lost out to Reese's Pieces in Spielberg's E.T. One company's decline might be a competitor's gain.

And just placing a product in the scene doesn't guarantee a permanent exposure for the life of the film. Some products aren't allowed to be advertised in certain media (e.g. cigarette ads have been banned from TV for decades) or by certain governments so a product shot that works on the silver screen would have to be edited out or otherwise handled if the country or medium demands it. A possibility that should be dealt with in the placement contracts. Modern digitization effects can completely replace many previously placed products if they are deemed offensive, illegal or a higher bid comes in.

A more integrated technique of tying the product to the production is sometimes sought as a replacement for product placement. And so we see product integration as a recent development to lace the product more firmly with the production. Product integration is where the references and uses of the product are woven into the script and staging of the production. By having the characters directly talk about the product in a way that hopefully smoothly integrates into the plot makes it much harder to replace the tie in at later stages. When done well, you shouldn't be able to tell whether it is a paid for placement or a creative choice. It isn't always done well. And it isn't always up to the writer whether to do it or not. Sometimes you have to write what the paycheck provider tells you to. The mark of a good writer is doing the necessities of the business of production without it seeming like you are.

Using trademarked goods by reference or as plot devices, can be problematic or advantageous. Regardless, it'll have to pass muster of the clearances department at the very least. How the marks are used must also be carefully considered. But if you know where the snags are you might be able to weave quite the story around them.

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