Is That Fair (Use)? Third Party Trademarks in Film, Print, Video Games and other Media

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This article was written by Dallas-area trademark lawyer Tamera H. Bennett with great assistance from Video Game Lawyer Zack Strebeck.

Introduction

Brands are everywhere. According to the U.S. Patent and Trademark Office, 193,121 trademark registrations were issued in 2013 alone.  With brands pervading our daily lives, we’re accustomed to seeing those brands show up in alternate realities such as film, TV, comparative advertising and even video game worlds.

Is a “brand” any different than a trademark? Not really.  Brand is the pop culture term for a trademark.  A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.  A service mark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product.  Throughout this article, the terms “trademark” and “mark” refer to both trademarks and service marks.

Trademarks enable the public to recognize goods or services as originating from a particular source. A trademark owner can stop others from using its trademark in order to prevent the public from being confused about the source of the goods or services. Use of another’s trademark may be permissible as “fair use” if the use does not infringe the trademark. We are going to take a look at how a third party may successfully and sometimes unsuccessfully use a trademark they don’t own in a media context.

I.          Fair Use and Trademarks

A.        Descriptive Fair Use

What do we do when a trademark also describes a person, a place or an attribute of a product?  A trademark owner can’t have exclusive rights in such use as too many terms would be taken out of the language for commonevery day usage. Trademark law recognizes a defense where the mark is used only "to describe the goods or services of [a] party, or their geographic origin." 15 U.S.C. § 1115(b)(4). "The [descriptive] `fair-use' defense, in essence, forbids a trademark registrant to appropriate a descriptive term for his exclusive use and so prevent others from accurately describing a characteristic of their goods.” New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 306 (9th Cir. 1992).

When the allegedly infringing term is ‘used fairly and in good faith only to describe to users the goods or services of [a] party, or their geographic origin,’ Lanham Act § 33(b)(4), 15 U.S.C. § 1115(b)(4) (1976), a defendant in a trademark infringement action may assert the "fair use" defense. The defense is available only in actions involving descriptive terms and only when the term is used in its descriptive sense rather than its trademark sense.

Zatarain's, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 791 (5th Cir.1983) quoting Soweco, Inc. v. Shell Oil Co., 617 F.2d 1178, 1183 (5th Cir.1980). The court held in Zatarain’s that “Fish-Fri” is a descriptive term for coating for fish.  The term “Fish Fry” may be used by a competitor in its ordinary, descriptive sense.

B.        Nominative Fair Use

Sometimes there is only one way to convey a message.  And, when that situation arises, use of a third-party trademark will be considered fair use. In addition to a statutory descriptive fair use, we now have a judicial carve-out for nominative fair use.

With many well-known trademarks, such as Jell-O, Scotch tape and Kleenex, there are equally informative non-trademark words describing the products (gelatin, cellophane tape and facial tissue). But sometimes there is no descriptive substitute . . . when many goods and services are effectively identifiable only by their trademarks. For example, one might refer to "the two-time world champions" or "the professional basketball team from Chicago," but it's far simpler (and more likely to be understood) to refer to the Chicago Bulls. In such cases, use of the trademark does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source.

The concept of nominative fair use is what allows us in the U.S. to have comparative advertising, parody and noncommercial use of trademarks.

New Kids at 306. To prove nominative fair use, a defendant must satisfy three requirements: (1) the plaintiff's product or service in question must be one not readily identifiable without use of the trademark; (2) only so much of the mark or marks may be used as is reasonably necessary to identify the plaintiff's product or service; and (3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.  E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., 444 F.Supp.2d 1012, 1029 (C.D.Cal.2006).

The concept of nominative fair use is what allows us in the U.S. to have comparative advertising, parody and noncommercial use of trademarks.  A woman who was a Playboy Playmate should be allowed to describe herself in the capacity without infringing the trademarks.  Playboy Enters., Inc. v. Welles, 279 F.3d 796, 801 (9th Cir. 2002). The court agrees saying the use of the Playboy trademarks is nominative.

While comparative advertising must be truthful and comply with all Federal Trade Commission requirements, it’s okay for a Coca Cola® advertisement to use a Pepsi® product in a comparative advertisement.  The nominative fair use defense is, clearly applied when the defendant uses the plaintiff’s mark to refer to the plaintiff’s product, even though the defendant's ultimate goal is to describe his own product.  E.S.S. Entm't 2000 at 1029.

C.    First Amendment vs Trademark

The legal standards for determining trademark fair use may shift when we move from a descriptive or commercial use into a creative use.  In the United States, creative works are protected as free speech by the First Amendment.  Because of that protection for the whole work, even the title of the work, a balancing act must occur between the rights of the trademark owner and the First Amendment rights that arise in the creative work.  Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).  If the court determines there is a likelihood of consumer confusion, it will then balance the trademark rights against the freedom of expression rights.

The Rogers test arises from a question of whether or not a title to a film infringes upon the trademark and personality rights of a famous person while balancing First Amendment rights.

What is that standard when we are talking about expressive works? The test used by multiple circuits (originally in the 2nd Circuit, but later adopted by courts in the 7th, 9th and 11th Circuits) is the two-prong Rogers test:  1) whether the use of the third-party trademark has artistic relevance; and 2) if so, is it deliberately misleading as to the source or content of the work.  Rogers and the cases adopting its holding have consistently framed the applicable standard in terms of confusion as to the defendant's artistic work as a whole and not solely the alleged use of the defendant’s trademark.  Louis Vuitton Mallatier v. Warner Bros., 868 F. Supp. 2d 172, 179 (S.D.N.Y. 2012).  Expressive works include art work, motion pictures, songs and books. 

D.        Titles: 

The Rogers test arises from a question of whether or not a title to a film infringes upon the trademark and personality rights of a famous person while balancing First Amendment rights. In general, courts do not want to reach a Constitutional analysis if a decision can be reached by application of other laws.  That’s what happened in Eastland Music v. Lionsgate Entertainment, 707 F.3d 869 (7th Cir. 2013), when the court held there was no trademark infringement of rap artist’s PHIFTY 50 name by the film titled 50/50.  The district court dismissed the complaint under Fed.R.Civ.P. 12(b)(6), ruling the movie's title descriptive because the film concerns a 50 percent chance of the main character surviving cancer and the Court of Appeals affirmed. Eastland Music at 870.  “It is unnecessary to consider possible constitutional defenses to trademark enforcement . . . because this complaint fails at the threshold: it does not allege that the use of "50/50" as a title has caused any confusion about the film's source.” Id. at 871.

E.        Film:

Dark Night Rises

In the film “The Dark Knight Rises,” Catwoman sought to erase her criminal record from every computer database around the world.  To do it she had to get her paws on the fictional CLEAN SLATE software developed by the fictional company "Rykin Data Corporation."   Fortres Grand Corp., a very non-fictional company has a software product called the “Clean Slate” and a registered trademark for "[c]omputer software used to protect public access computers by scouring the computer drive back to its original configuration upon reboot."  Fortres Grand Corp. v. Warner Bros. Entertainment, Inc., No. 13-2337 (7th Cir. Aug. 14, 2014).

Fortres Grand noticed product sales were declining after the 2012 movie release and brought suit against Warner Bros. for trademark infringement. The District Court held for Warner Bros., finding there could not possibly be confusion as to the source of origin of the two products since Warner Bros. is in the business of making movies and Fortres Grand makes software.  The Seventh Circuit affirmed.

In this case, even though we are talking about an expressive and very creative work in the nature of the film, the Court of Appeals never mentions the Rogers test and makes its decision based on the traditional trademark infringement standard of likelihood of consumer confusion. We have to look at the District Court opinion to review the analysis under Rogers and the decision reached after reviewing the Rogers test. “In this case, there can be little doubt that Warner Bros, has satisfied both prongs of the Rogers test. The first prong — artistic relevance — establishes a purposely low threshold which is satisfied unless the use ‘has no artistic relevance to the underlying work whatsoever.’” Fortres Grand Corp. v. Warner Bros. Entertainment, 947 F. Supp. 2d 922, 932 (N.D. Ind. 2013).  Additionally, Warner Bros. clearly satisfied the second prong of the Rogers test — the film's use of "clean slate" is not "explicitly mislead[ing] as to the source or the content of the work." Id.

The District Court found there was no plausible claim for consumer confusion and Warner Bros.’ use of “Clean Slate” is protected by the First Amendment. The Court of Appeals affirmed without ever reaching the First Amendment question. Fortres Grand, No. 13-2337 (7th Cir. Aug. 14, 2014).

Hangover II

Another fun case involves the Louis Vuitton design trademarks and the movie HANGOVER II. Louis Vuitton Mallatier v. Warner Bros., 868 F. Supp. 2d 172, 179 (S.D.N.Y. 2012). One of the lead characters in the film travels with an ensemble of "fake" Louis Vuitton bags. To add insult to injury, the character even mispronounces the name of the brand in the film. Louis Vuitton sued. Interestingly enough, Louis Vuitton did not file suit claiming consumer confusion because Vuitton did not authorise the use fo the bags in the film. Rather, Louis Vuitton claims that Warner Bros. used a third-party's bag that allegedly infringes on the Louis Vuitton marks. Remember - it was a "fake" bag.

The District Court applied the Rogers Test finding 1) sufficient artistic relevance in using the Louis Vuitton mark in the film, and 2) using the "fake" bag was not intentionally misleading. The trademarks were not used in a way to "induce members of the public to believe [the film] was prepared or otherwise authorized" by Louis Vuitton.

Louis Vuitton was hung up on arguing that using the "fake" bag somehow created liability because consumers would believe the "fake" was the real thing. The court would not extend the law to include liability for using a "fake" trademark in the film.

F.         Songs:

Barbie Girl

The Ninth Circuit held that the use of the trademark BARBIE was permitted in a song and its title which parodied and made fun of the vacuous, party-girl image that has evolved from the BARBIE doll. Applying the Rogers test the court found that the use of the mark in the song title had artistic relevance to the content of the song.  Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894 (9th Cir. 2002), cert. denied, 537 U.S. 1171, 123 S. Ct. 993, 154 L. Ed. 2d 912 (2003). And, for all you Texas music fans out there, the result should be the same for the song “Barbie Doll” by Jack Ingram.

G.        Visual Arts:

Paintings and works of art clearly fall under First Amendment protection.  In balancing the rights for free expression and artistic relevance against any possible misleading as to the source of a particular painting, the Eleventh Circuit held the First Amendment trumped trademark rights in original paintings of the University of Alabama football team.  University of Ala. Bd. of Trustees v. New Life Art, 683 F. 3d 1266 (11th Cir. 2012).

H.        Video Games:

As technology improves and video games become more realistic, the issue of third-party trademark use in the games industry is becoming increasingly relevant. Already, there have been a few important cases which bring the tests and case law from other media into video game industry trademark disputes.

The Supreme Court in Brown v. Entertainment Merchants Ass'n, 131 S.Ct. 2729 (2011), stated, “[l]ike the protected books, plays, and movies that preceded them, video games communicate ideas—and even social messages—through many familiar literary devices [such as characters, dialogue, plot and music] and through features distinctive to the medium [such as the player's interaction with the virtual world]. That suffices to confer First Amendment protection.”

Grand Theft Auto

In E.S.S. Entm’t 2000 v. Rock Star Videos, 547 F.3d 1095, 1097 (9th Cir. 2008), Rock Star created the video game Grand Theft Auto: San Andreas. In the game, which itself is set in a parody of the Los Angeles area, there is a strip club called the “Pig Pen Gentlemen’s Club” in an area that resembles East Los Angeles.  E.S.S. operates a real-world strip club called the “Play Pen.”  The styling of the building and logo is very similar for both, and the facts indicate that Rock Star’s artists traveled to the area and photographed locations for reference.

Grand Theft Auto Pay Pen Trademark fair use

The creation of the “Los Angeles” atmosphere in the Grand Theft Auto game met the Court’s “minimum threshold” standard for artistic relevance. The Court also found that a consumer would probably not believe that the owners of the Play Pen would have created this video game. Therefore, they found no misleading behavior on Rock Star’s part.

Dillinger

Dillinger, LLC v. v. Electronic Arts Inc., 795 F. Supp. 2d 829 (S.D. Ind. 2011), is a lawsuit brought by the heirs of famed criminal John Dillinger for infringement by Electronic Arts in their video games based on the “Godfather” movies. In the games, “Dillinger” is used to refer to the firearms (so-called Tommy guns) used by the player.

The Court found, in applying the Rogers test, there was artistic relevance in referring to the gun as a Dillinger, as that was the real person’s firearm of choice. No evidence was presented of any misleading actions on the part of Electronic Arts, either, so both prongs of the test were met and Electronic Arts was granted summary judgment.

Battlefield 3

Both statutory law and common law allow for fair use of trademarks in commercial works and expressive works.
— Tamera H. Bennett

In  Electronic Arts, Inc. v. Textron, Inc., No. C 12-0018 (N.D. Cal. July 25, 2012), Electronic Arts sought a declaratory judgment from the district court regarding their use of Textron’s protected trade dress in various military hardware. Electronic Arts argued that their video game, Battlefield 3, was an expressive work protected by the First Amendment. Given that, they were entitled to the same fair use protections entitled to other media forms.  Initially there was a license between Electronic Arts and Bell for use of the Bell helicopters in the video game. Electronic Arts announcedit would no longer pay the license fees and sought a declaratory judgment of non-infringement. Textron responded by filing various trademark infringement counterclaims.

The District Court, however, distinguished this case from the earlier E.S.S. case in the same circuit. Where the Pig Pen strip club was merely part of the background in the Grand Theft Auto game, the helicopters in Battlefield 3 were more prominent in both the game and its advertisements. In rejecting the motion to dismiss, the District Court held that it was plausible that a consumer could believe that Textron had supported the game or authorized the use of its marks. Even a disclaimer, the Court said, was not enough to overcome this possibility. The two companies later settled the dispute on confidential terms.

Conclusion:

Using a third-party trademark in your next film, TV show, song or video game my very well be permissible without securing permission. Both statutory law and common law allow for fair use of trademarks in commercial works and expressive works. Keep in mind, even in an expressive work, the courts will not always reach a First Amendment analysis if a decision can be reached under a traditional likelihood of consumer confusion analysis.

Links to cases cited in this article and other news reports of interest are located in a collection on Google Plus.

The article was originally published as part of the course materials for the TexasBarCLE Entertainment Law Institute 2014.