A Survey of the Case Law on Copyrights and Trademarks in Film and Television: Part II, Contributed by Anthony V. Lupo and Anthony D. Peluso, Arent Fox LLP

Introduction

This Article is the second of a two-part series examining the state of the case law regarding copyright and trademark protection in the film and television context. Part I considered recent rulings that address various aspects of copyright law, including the “substantial similarity” element of a prima facie claim of copyright infringement, the affirmative defense of “fair use,” the preemption of state law claims under the federal Copyright Act, and the nature of copyright protection for fictional characters that are portrayed in film or other audiovisual works. Part II discusses the unlicensed use of another’s trademark in film, specifically with respect to the passive appearance of unaltered marks, the use of real marks to represent unrelated fictional products, and the application of various affirmative defenses to trademark infringement claims. This Article concludes by addressing the risks involved in the related practice of using another’s trademark in connection with a film’s merchandising.

Trademark Law

As Part I demonstrated, copyright issues frequently arise in films and television. Many similar issues arise under trademark law as well. This Part addresses: (a) the use of another’s trademark in film, with a specific focus on the passive appearance of unaltered marks, the use of real marks to represent unrelated fictional products, and the application of various affirmative defenses to trademark infringement claims; and (b) the use of another’s trademark in connection with a film’s merchandising.

— The Unlicensed Use of Another’s Trademark in Film

When filmmakers have been haled into court over the unlicensed use of registered trademarks, they have typically faced federal claims of trademark infringement and trademark dilution pursuant to § 43 of the Lanham Act.1 Trademark dilution claims ordinarily include allegations of blurring and tarnishment.2 Whether a defendant filmmaker can successfully defend itself depends on a fact-intensive inquiry of several factors. This Section discusses several common scenarios under which courts have considered filmmakers’ liability for trademark infringement or dilution claims.

Unaltered Marks

Where filmmakers display unaltered trademarks in their films, recent case law suggests that they have the strongest likelihood of success against potential trademark infringement claims where (1) the mark is in the background of a scene; (2) the mark is only marginally present in the film; and (3) the defendant lacks the intent to free ride on the mark.3 Likewise, filmmakers are most likely to succeed against trademark tarnishment claims where their films fall within the “children’s film” genre and they provide no indication that the mark’s products are of poor quality.4

For example, in 2003, Gottlieb Development LLC brought suit against Paramount Pictures Corp., raising claims of trademark and copyright infringement in response to the filmmaker’s use of the plaintiff’s “Silver Slugger” brand pinball machine in its movie, What Woman Want.5 At issue was the appearance of the Silver Slugger in the background of a single scene in which actor Mel Gibson spoke to his employees, with the plaintiff’s marked product displayed for a total of three-and-a-half minutes.6 The SDNY granted the defendant’s motion to dismiss on both claims largely because its use was de minimis, concluding that the average consumer would not likely confuse the plaintiff’s affiliation with the movie because the Silver Slugger mark “occupies only a minute fraction of the frame for three segments lasting approximately three seconds each . . . [and because] the pinball machine is merely part of the background.”7 The court analogized this to a scenario in which a branded vehicle appears in a generic film chase scene, noting that such a “‘mere appearance’ . . . would not, by itself, support a trademark infringement claim.”8 As such, the court concluded that the facts provided “no indication that Paramount deliberately placed the Silver Slugger into the scene to capitalize on the good will associated with Gottlieb’s mark.”9

In a similar case in Illinois, another federal district court denied Caterpillar Inc.’s motion for a temporary restraining order in its trademark infringement and dilution suit against Walt Disney Co., finding that the plaintiff possessed only a “slightly more than negligible likelihood of success” on the infringement claim.10 Caterpillar’s suit was based on Disney’s portrayal of its marks in the film George of the Jungle 2, wherein Caterpillar’s marks were readily apparent in four separate scenes including a ten-minute battle in which the narrator refers to Caterpillar’s bulldozers as “deleterious dozers” and “maniacal machines.”11 After applying the Polaroid Corp. likelihood of confusion factors,12 the U.S. District Court for the Central District of Illinois concluded that “[i]t does not appear to the Court that an intent to free ride on the fame of [the plaintiff’s] trademark … is present here.”13 The plaintiff’s claim was equally weakened by “the fact that the appearance of products bearing well known trademarks in cinema and television is a common phenomenon.”14 The court similarly found a low likelihood of success for the plaintiff’s tarnishment claim due to the movie’s context—that is, the court explained that “George 2 is a children’s comedy that is really a live action cartoon. It borrows many motifs from its animated forbearers … that clearly establish the fantastic nature of the movie.”15 With this in mind, it would be clear “to even the most credulous viewer or child that the bulldozers in the movie are operated by humans and are inanimate implements of [the villain’s] environmentally unfriendly schemes.”16 The court further noted that “[t]here is nothing in George 2 to even remotely suggest that Caterpillar products are shoddy or of low quality.”17

Marks Used to Represent a Different Product

When using a registered trademark to represent another product (e.g., “Domino’s Cell Phones” as opposed to “Domino’s Pizza”), filmmakers are likely to avoid liability where (1) there is no competitive proximity with respect to the parties’ goods; (2) consumer confusion is reduced by adding words to the mark when it is used in the film; and (3) the defendant can demonstrate outward manifestations of good faith.18

In Davis v. Walt Disney Co,19 the plaintiff brought a trademark infringement claim against the defendant for its use of the plaintiff’s registered trademark EARTH PROTECTOR in the children’s film Up, Up, and Away.20 While the plaintiff used EARTH PROTECTOR in connection with its environmental advocacy program, the film version involved a villainous corporation that sought to control children’s minds.21 In affirming the lower court’s ruling against the plaintiff, the Eighth Circuit found that there existed no likelihood of confusion between the plaintiff’s goods and the defendant’s film, pointing to the lack of competitive proximity between the parties’ products.22 The court explained that “a movie designed for children’s entertainment that airs on national children’s network is not so similar to an infrequently broadcast cable-access environmental advocacy television program that consumers are likely to believe the two products came from the same source,” and that “[b]ecause the movie’s depiction of the company using the mark is so resoundingly negative, it is unlikely that viewers will assume that the real Earth protector, Inc. was a sponsor of the movie.”23

A similar scenario arose in Ocean Bio-Chem, Inc. v. Turner Network Television, Inc.,24 where the plaintiff brought a federal trademark infringement claim against the filmmaker defendant for its use of the plaintiff’s mark STAR BRITE in the film Incident at Dark River.25 The defendant’s film portrayed a father’s anguish over the death of his young daughter, which was caused by the pollution of fictional company called “Starbrite Batteries.”26 The plaintiff, meanwhile, never produced batteries, but claimed that the movie’s use of its mark created a likelihood of confusion with its wholly owned subsidiary’s products.27 After applying the Polaroid Corp. likelihood-of-confusion factors, the court found no likelihood of confusion between plaintiff’s mark and defendant’s use in the film.28 Most significant to its finding were “the addition of the word ‘Batteries’ when coining the fictional company,” which “helps prevent confusion with [the plaintiff’s] mark,” and the defendant’s good faith efforts.29 These efforts were evidenced by the defendant’s actions in “conduct[ing] a prepublication review of ‘Incident at Dark River’ by which they determined that Starbrite was not used for batteries,” “broadcast[ing] three specific disclaimers during the movie, which stated it did not portray one particular company,” and “offer[ing] to dispel any possible confusion resulting from their movie by helping write letters to [the plaintiff’s] distributors.”30

Marks Used as a Parody

The case law further shows that filmmakers are likely to avoid trademark infringement liability where (1) the intent of parody, not product competition, is readily apparent; (2) the strength of the plaintiff’s mark is strong; and (3) the film at issue is primarily marketed towards children and humorous in nature.31 Likewise, filmmakers are likely to avoid trademark dilution liability where there is no indication of product competition and the parody is made for the sake of parody.32

For instance, in GTFM, LCC v. Universal Studios, Inc.,33 the plaintiff brought trademark infringement and dilution claims against the defendant for its parodic use of the plaintiff’s registered mark FUBU (i.e., “For Us, By Us”) in its film How High.34 Rather than displaying FUBU, the film’s protagonist wore a t-shirt with the mark “BUFU,” which, according to the protagonist, stood for “By Us, F*** You.”35 In granting summary judgment in favor of the defendant, the SDNY ruled that its use of the mark was intended to be a parody, “entitled to the full protection under the First Amendment,” as indicated by the parody’s similarity to the original mark and the film’s comedic context.36 The court further reasoned that the defendant “was not acting as a competitor of plaintiff’s by attempting to sell products or services under the name ‘BUFU,’” which was important because “[i]n trademark infringement cases, parodies are protected where the mark is being used to lampoon or comment upon the trademark owner or the mark itself, in which expression, and not commercial exploitation of another’s trademark, is the primary intent, and in which there is a need to evoke the original work being parodied.”37 Finally, the court rejected the plaintiff’s dilution argument because its “FUBU marks appear nowhere in the film, and thus, plaintiffs have no claim that FUBU was used in a manner injurious to the mark and to its reputation and good will.”38

Likewise, in Hormel Foods Corp. v. Jim Henson Productions, Inc.,39 the Second Circuit ruled against the plaintiff, the owner of the SPAM trademark, in its trademark infringement and dilution suit against the maker of the film Muppet Treasure Island, which featured a character by the name of “Spa’am.”40 In rejecting the plaintiff’s infringement claim, the court found no likelihood of confusion between the marks at issue, reasoning that the defendant and plaintiff “occupy distinct merchandising markets” and that the defendant “intended no deceit,” and further supporting its conclusion by pointing to the “the clarity of [the defendant’s] parodic intent, the widespread familiarity with Henson’s Muppets parodies, and the strength of [the plaintiff’s] mark.”41 Likewise, the court found no dilution by blurring or tarnishment, reasoning that each party’s mark was particularly strong and that the appearance of the name “Spa’am” next to the words “Muppet Treasure Island” and the likeness of the character would “dissipate the fear that SPAM will no longer be considered a unique product identifier.”42 Further, the court reasoned that the favorable portrayal of the “Spa’am” character indicated that “Henson does not seek to ridicule SPAM in order to sell more of its competitive products.”43

The First Amendment Defense

Filmmakers have another avenue available for avoiding liability: raising the First Amendment as a complete defense to a Lanham Act claim. Under the Second Circuit’s Rogers v. Grimaldi44 test, a filmmaker must demonstrate that its use of the plaintiff’s trademark (1) is “relevant to the underlying work” and (2) does not “explicitly mislead[] consumers about the source or content of the work.”45 In applying this test, a court must balance the “public interest in avoiding consumer confusion [against] the public interest in free expression,” and if it finds that the defendant has made a satisfactory showing, the Lanham Act claim is precluded.46

This defense was successfully raised in the 2009 case of Roxbury Entertainment v. Penthouse Media Group, Inc,47 where a federal district court in California found that the First Amendment provided Penthouse Media Group with a complete defense against Roxbury Entertainment, which had sued the adult film producer for trademark infringement related to the title of one of its films.48 Roxbury owned the trademark rights to the 1960s-era television show Route 66, and it claimed that Penthouse’s use of its ROUTE 66 trademark created a likelihood of confusion among consumers, who might believe that the pornographic film was somehow associated with the decidedly non-pornographic television show.49 In applying the Grimaldi test, the court held that Penthouse had not infringed Roxbury’s mark because Penthouse’s use of the ROUTE 66 mark was relevant to its pornographic road-trip film and did not explicitly mislead consumers about the source or content of the work.50 Thus, because consumers would not be misled into thinking that the adult film was made by the same people who produced the Route 66 television show, Penthouse’s use of the ROUTE 66 mark was non-infringing.51

The Fair Use Defense

The First Amendment plays a role in another affirmative defense available to filmmakers facing claims of trademark infringement: the “fair use” defense. One can successfully raise this defense by proving three elements: (1) descriptiveness (i.e., whether the term “denote[s] a characteristic or quality of an article or service”52); (2) fairness (i.e., whether the defendant’s use of the mark “is the most precise way to describe [the defendant’s] product”53); and (3) good faith (i.e., whether the defendant’s use of the mark in the title of its film “conveys no information about the origin of the film”54).

A federal district court in Texas granted summary judgment in 2009 in favor of First Look Studios, Inc. in its defense against federal and state claims of trademark infringement and dilution related to its film Finding Rin Tin Tin: The Adventure Continues.55 Daphne Hereford, owner of the rights to the trademark RIN TIN TIN, claimed that the unauthorized use of her mark in the defendant’s film would cause consumer confusion regarding the sponsorship of the movie.56 The court, however, explained that it did not need to consider likelihood of confusion because the defendant was able to prove that its use of the mark was a fair use protected by the First Amendment.57 Indeed, it ruled that the studio had established all necessary elements of the fair use defense: (1) the film used the RIN TIN TIN mark descriptively to indicate the film’s subject matter or content; (2) the RIN TIN TIN mark was used fairly, in a non-trademark manner, because it did not indicate the film’s source; and (3) the film studio demonstrated good faith in its use of the mark because its DVD packaging clearly identified the defendant as the film’s producer.58

Risqué Themes and the Absence of Parody

As the preceding subsections demonstrate, much of the recent case law reveals a pattern of filmmakers avoiding liability for various uses of others’ registered trademarks. Filmmakers, however, are not invulnerable to liability for trademark infringement or dilution claims. For instance, where the intent of parody is absent and the registered trademark used in the film is connected to a substantially risqué theme such as pornography or satanic images, filmmaker defendants may be found liable.59

An example of this dynamic can be seen in Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd.60 There, the operator of the Dallas Cowboys Cheerleaders brought a trademark infringement and dilution suit against the defendant for making, producing, and distributing a pornographic film which depicted a female actress in a cheerleader’s costume that closely resembled that of the Dallas Cowboys Cheerleaders while engaged in explicit sexual acts.61 The court ultimately concluded that trademark infringement and dilution were both “clearly present.”62 The defendant attempted to argue that the film was protected by the First Amendment as a parody, but the court rejected this argument, finding that “the defendant . . . and the others responsible for this film have deliberately attempted to cash in on the Dallas Cheerleaders’ popularity and attracting power.”63 Moreover, because of the “widespread confusion in the public mind as to the association of [the] plaintiff and its cheerleaders with pornographic films,” the court found that “[t]he harm to plaintiff’s reputation and standing is obvious.”64

In another case that was settled before going to trial, sculptor Frederick Hart and the Washington National Cathedral brought suit in the Eastern District of Virginia against Warner Brothers for trademark infringement and dilution in connection with the defendant’s film, The Devil’s Advocate.65 In the film, a sculpture created by Frederick Hart appears in the office of the devil—disguised as a law firm partner—several times throughout the movie.66 At the end of the film, “the sculpture comes to life and the multitude of men and women [depicted] writhe erotically.”67 Hart and the National Cathedral denounced the film and claimed that the “confusion between the work and the sculpture . . . damaged both of their reputations.”68 The presiding judge threatened to prohibit the film’s video distribution before a formal trial could be held, at which point the parties reached a settlement requiring the defendants to provide a small notice on the DVD packaging disclaiming any relationship between the film and the plaintiffs.69 The defendants also agreed to edit twenty minutes of the film that contained images of the sculpture in order to eliminate any perceived confusion.70 One such edit involved altering the climax scene in which the sculpture at issue is depicted as coming to life.71

— Use of Another’s Trademark in Connection with a Film’s Merchandising

Filmmakers frequently attempt to capitalize on their films’ success by merchandising their films’ marketable characters in connection with various consumer goods such as toys or food products. However, even if a filmmaker avoids liability for trademark infringement and/or dilution claims pertaining to the use of another’s trademark in a film, as discussed above, he or she may nevertheless be found liable for infringement or dilution when using that mark in connection with the film’s merchandising.72

Such a scenario nearly unfolded in Hormel Foods Corp. v. Jim Henson Productions, where the plaintiff attempted to bring a dilution claim against a filmmaker for the merchandising of t-shirts that featured “Spa’am,” one of the film’s characters.73 The plaintiff claimed that these activities would result in the tarnishment of the SPAM trademark, as it “will no longer be considered a unique product identifier.”74 The court, however, ruled in favor of the defendant, reasoning that the defendant “is not using the name ‘Spa’am’ as a product brand name[, but rather as] a character in products branded with [the defendant’s] own trademark.”75 Importantly, the court observed that “the name ‘Spa’am’ will always appear next to the character likeness and the [name of the film,] ‘Muppet Treasure Island.’”76 It further supported its conclusion by noting that the plaintiff’s SPAM mark was relatively strong, which suggested there was “very little likelihood that [the defendant’s] parody will weaken the association between the mark SPAM and [the plaintiff’s] luncheon meat.”77

Another film merchandising case arose in 2008 in the context of a design patent infringement suit.78 Performance eyewear maker Oakley, Inc. brought claims of design patent infringement against movie studio Twentieth Century Fox Film Corp., comic book publisher Marvel Characters Inc., and United Kingdom publisher RDP Ltd., alleging that the defendants had sold unlicensed knock-offs of Oakley’s “Penny” brand sunglasses in a Fantastic 4: Rise of the Silver Surfer promotional gift set sold at Costco and other retail outlets.79 In what really amounted to a trade dress suit, Oakley focused on the defendants’ alleged copying of the design of Oakley’s U.S. Design patent that claimed the invention “eyeglass components,” which were embodied in the “Penny” brand sunglasses.80 One of the main characters in the Fantastic 4 film wore a pair of “Penny” brand sunglasses, though it is unclear whether they were genuine Oakley sunglasses or a copy.81 The disputed gift set apparently included two DVDs, a Fantastic 4 t-shirt, and a copy of the sunglasses featured in the movie.82 In its complaint, Oakley alleged that the defendants had notice of the eyewear maker’s proprietary rights, and that the design patent infringement was therefore willful.83 Nevertheless, despite an apparently strong case of infringement, Oakley ultimately filed a notice of voluntary dismissal, without prejudice, on June 26, 2008.84

Conclusion

Television and film are extremely successful components of the entertainment industry, both domestically and internationally. With such high stakes for creative works in this context, there exist inevitably high risks of incurring liability for the infringement of another’s intellectual property rights. Accordingly, the creators of works in television or film, as well as the holders of intellectual property rights that may be infringed by these works, must take appropriate precautions to avoid liability or effectively enforce these rights.

Anthony V. Lupo is a partner at Arent Fox LLP and a member of the firm’s executive committee, co-chairs the firm’s Entertainment/Intellectual Property Group, specializes in copyright, entertainment, trademark, and e-commerce law, and has significant experience in representing movie studios, computer companies, and television stations. Mr. Lupo can be reached at lupo.anthony@arentfox.com.

Anthony D. Peluso is an associate at Arent Fox LLP. Mr. Peluso can be reached at peluso.anthony@arentfox.com.