LEGALLY SPEAKING, IT DEPENDS: Trade Dress

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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The headline of this column may have some thinking Paris runways and dour faced, statuesque models traipsing in haute couture. Alas, trade dress isn't quite as alluring, but, can be nearly as fascinating a study. Surprisingly enough the subject interjects itself quite often in moviemaking and understanding what it is and how it can impact your film in significant ways might allow you to save enough money to take a trip to France and see the other kinds of dress in person.

You are likely familiar with trade and service marks, which are identifiers attached or associated with goods or services that the public directly thinks of as coming from the producer of those goods (e.g. the Nike “swoosh” is on shoes made by Nike.) Logos, slogans, identifying artwork or unique wordings are often used for these purposes. Because they can be uniquely and very accurately depicted, the legal system in each country provides a regulated way to register these marks for easy lookup and association. Technically speaking, a trade mark can still be a protected identifier even if it isn't registered with the government. (In the U.S. this is called a common law trade mark secured by use in the marketplace recognized by state and federal courts when in dispute.) The overall general concept is to try to keep the consumer from being confused as to who made stuff when buying things.

Similarly trade dress is a legal protection for the consumer to not get confused in the marketplace as to who's stuff they're looking at. But unlike the marks, trade dress is much more amorphous and harder to pin down specifically. There's a look to them, and you know it when you see it (or should) but there's a lot of room for wiggle.

Maybe an example is needed here. Let's take one directly out of the movies.

A funny and on point example comes from the 1988 film Coming to America (a legally interesting movie for a lot of reasons.) In this riches to rags story a minor plot point involves the father of the female lead owning a restaurant called “McDowell's.” Walking into this restaurant a customer could easily mistake it as a “McDonald's” of that era. The owner goes to great lengths to point out the very subtle differences: instead of the Golden Arches his store has the “Golden Arcs,” the Big Mac isn't on the menu, the “Big Mic” is. The color schemes, architectural treatments and layout as well as the uniform designs are extremely similar to the ones used by a legitimate McDonald's franchise. In fact the plot of the movie plays into the father's paranoia of being investigated and sued by McDonald's for how close his restaurant is to theirs.

But if the movie McDonald's wanted to pursue legal recourse, what theoretical legal claims could they have? McDowell clearly strove to avoid directly infringing any of McDonald's actual trademarks. Just the fact that it's a competing burger joint with similar offerings isn't enough. The legal area where McD's strongest arguments lay is that general concept underlying all of these types of protection, that of consumer confusion.

If a competitor sets out willingly and knowingly to blur the distinctions between their fare and the expectations of goods from another vendor the consumer might end up not getting what they thought they were buying. Because the legitimate vendor spends time and effort to maintain a quality level and customer experience to keep them satisfied and coming back, the original vendor is given a legal recourse through various laws to prevent other vendors from fooling the customer into getting ripped off with something other than what they intended to buy.

The strongest protector in these types of laws is trade mark and it's cousin service mark. But these are not easy for a company to secure. The restrictions as to what can serve as a mark and what categories it can cover leave a lot of areas of commerce not easily attainable for that type of protection. A unique logo or slogan can be a trade mark but it is a very rare event for something like a chosen color to rise to the level of such protection. Coca-Cola has been able to establish a rare color trademark on the particular color “red” they use in their marketing and bottling. And once established they must maintain and continue to use the mark or risk losing its protection. You won't be seeing a different color Coke bottle anytime soon.

And when it comes to things like company uniforms or building designs, trade or service marks just won't cover much of what a business would consider it's proprietary, protectable expression.

When you walk into a chain store there's a certain familiarity to your surroundings. Even if you don't see the company logos you have a sense of where you are just from the décor and trappings. That's trade dress. The chosen color schemes, the store layout, the uniforms and even the pat phrases the employees are required to say to you when you get their attention are all conditions created to give a uniform experience to each customer, something they'll remember and feel consistent with when dealing within that companies stores. It's a familiarity of “branding” in a general sense that separates one company from another in the customer's mind. And that separation is key.

Mostly, the more specific or complex and different a company's dress is from other companies the more protectable it is. How recognizable must it be to afford protection? I offer the tongue in cheek test of imagining you're on a drunken binge with your group of friends and pass out for an hour or so. They drag you along with them to their next destination where you abruptly, groggily wake up. If you can immediately recognize that you are inside of a Taco Bell it is because the trade dress is sufficient to give you that impression. Which is a good thing because you'll know immediately where the bathroom is located without taking the time you don't have to ask.

When a competitor infringes on a well established trade dress the originator can sue to make the competitor take all the like materials down and stop pretending to be what it's not. Even though the legal course isn't an easy one to establish, it can still be extended beyond competitors if the results would lead to a sense of false endorsement (say, a sports bar uses similar local sports team uniforms for its wait staff and décor colors without asking permission) or potential disparagement (say, a strip club dresses its staff in skimpy t-shirt and shorts outfits that recall the look of the Hooters chain of restaurants' servers.) It is possible for the original companies to pursue and win such cases, but, it certainly is not a given and wouldn't be an easy case to prove in court (read: expensive.)

Why is this important knowledge for writers and filmmakers? Because not knowing could get you into trouble even if you're actively trying to avoid it. Consider a script that has pivotal scenes taking place in a fast food establishment. The writer envisions and writes in the script:

Leaving aside the questionable dramatic impact of that scene, a conscientious art director may and a clearances lawyer definitely will question just how integral to the film is shooting up an actual Taco Bell? In attempts to avoid lawsuits the location set dresser will likely not use any identifiable Taco Bell logos or signage. But the director may want to make sure that the audience is clear that the scene takes place in a taco place and so, in an effort to appease everyone the choices made may make the place “look” just like a Taco Bell that everyone in the audience would be familiar with as the bullets fly.

Would Taco Bell have grounds to sue for the impugning image of their restaurant being the scene of a mass shooting (even if only tacos were harmed in the making of this film?) If the set dressing looked very much like one of their actual establishments they just might. And they'd have the added legal evidence of the intent of the filmmakers by just reading the use of their company name in the actual script. If they get too recognizable to what was envisioned, filmmakers attempting to avoid direct trademark infringement could lead directly to trade dress infringement. It's all a matter of intent and potential consumer confusion.

Of course, you see food establishments in movies all the time. How do they get away with it? Some trade dress could be considered the equivalent of fair use. Police cars often come in black and white. So even though the city of Los Angeles has a trade mark on the city seal on the side of their cars which can't be used without permission and payment, a movie car that doesn't use their exact seal could still look like a city vehicle, since black and whites are usually, ah, black and white. The design of “black and whites” is a pretty standard look, not particular to the LA only cop cars.

Its a similar concept to scenes-a-faire where there are only a limited number of ways of expressing an idea so no one can prevent someone else from using the same way to show it. It's when the generic gets more and more specific that you start to step towards the lines that you have to be careful not to cross.

Often these writing issues come up when scripting out of convenience. If your script can be set anywhere then make the descriptions as generic as possible. If there is a dramatic reason it needs to be a place with a recognizable look, then prepare the legal team to go out and get permissions. Or recognize the risks involved and prepare for a possible legal battle. Knowing what you may be up against will at least prepare you for getting your film just how you like it. As always, it depends.

And now, I don't know about you, but, all this talk about McDonald's, Coca-Cola and Taco Bell somehow made me hungry. I wonder if McDowell's is open. I could go for a Big Mic.

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