Trademark Law For Films

Trademark law protects against the unauthorized use of a trademark in a manner that causes a reasonable consumer to believe that the trademark owner either was the source of the goods or endorsed or sponsored such goods. In general, the title of a single film cannot be protected by trademark, since the title is understood to refer to the single film as opposed to taking on a “secondary meaning” that refers to the source of the film. However, if ancillary products are marketed under the same name, or a series of films is produced under the same name (e.g., Star Wars), then the title can be protected by trademark to avoid consumer confusion as to the source of the goods or the film. Because trademark generally does not apply to the title of a single film, the studios have a system of registration of film titles to avoid stepping on each other’s toes, with arbitration of competing claims.

If an audience watches an actor drink Perrier in a film, hopefully no one in the audience will think Perrier made, sponsored, or endorsed the film. If Perrier were to sue the producer for trademark infringement, Perrier would lose. For example, the cases have permitted films to include clear references and shots of Slip ’N Slide (being misused with oil), Caterpillar tractors (tearing down a jungle), and a particular garbage disposal (chewing up someone’s arm), all without permission. Thus, film companies are generally free to use third-party trademarks in their films, such as on billboards in a city scene or on stores or products that appear in the film, if it does not appear that the owner of the trademark sponsored or endorsed the film and the film does not imply false, nasty things about the trademarked product being used normally (in which case the producers may be sued for trade libel). The flip side of the coin is that if the product is being shown in a good light, why not charge the trademark owner for the publicity; thus the booming business of product placements.

The Federal Trademark Anti-Dilution Act bars the “use in commerce” of a “famous trademark” in a manner that is likely to cause “blurring” or “tarnishment,” regardless of whether the use of a trademark confuses consumers. Each of these terms is discussed below.

The term “use in commerce” is limited to advertising or the name of product or service. It does not apply to a reference to a trademark in a film. A “famous trademark” is a trademark that is widely known, as opposed to a trademark known only within a limited geographic area. A trademark is subject to “blurring” if the use of a trademark likely impairs the famous trademark’s distinctiveness by weakening the ability of the famous trademark to clearly identify and distinguish its source. A trademark is subject to “tarnishment” if the use of a trademark brings to mind the famous trademark and harms its reputation, such as through negative or unsavory associations. Thus, a porn shop cannot be called “Victor’s Little Secret” because it tarnishes the famous trademark “Victoria’s Secret.”

Almost any unauthorized non-tarnishing use of a trademark arguably blurs the trademark, so this provision might stop any commercial use of a famous trademark. However, the courts have held that a parody does not cause blurring. For example, the state of Utah was permitted to use the phrase “The Greatest Snow on Earth” in advertising for Utah’s skiing notwithstanding the objection of Barnum & Bailey Circus to the alleged dilution of their trademark, “The Greatest Show on Earth.” Similarly, another court held that a parody of Barney, the Dinosaur, in a public skit was not actionable under this section, because the public was no less likely to love Barney. Thus, the “dilution” cause of action has been de-fanged, at least for parodies, if they are not sexual parodies (as with Victor’s Little Secret), as that would cause tarnishment.

Unfortunately, in the mind of many film companies trademarks are analogized to copyrights and rights of publicity, so the general refrain of “when in doubt, leave it out” applies in full force. Film companies are just too gun shy of litigation, and there are legions of people who do nothing but scan scripts and film sets for potential problems (copyright, right of publicity, and trademarks), and all identified items must be deleted or waivers must be obtained from the owners.