BY: ROSANGELY FRICK

Intrigued by all the recent, high publicity movie trademark infringement cases, I decided to do some research.[1. Eriq Gardner, Hollywood’s IP Wars: Inside the Fight Over Trademarks, the Hollywood Reporter, (Nov. 21, 2012) http://www.hollywoodreporter.com/thr-esq/denzel-washingtons-flight-parenthood-inside-393168.]  I came across a blog that explained that the movie industry hires lawyers whose sole “job is watching movies to make sure nothing gets on the screen that doesn’t have permission.”[2. See Mike Masnick, What a Job: Making Sure No Brands Appear in a Movie, Techdirt, (Aug. 9, 2009), http://www.techdirt.com/articles/20090731/0319025726.shtml.]  Apparently, the job entails watching movies and checking signs, posters and logos that will appear in a movie to ascertain that these do not have trademark restrictions.[3. Id.]  But there are some salient inaccuracies to that blog.  The blog goes as far as blaming IP law for movies not being free to show a McDonald’s in the background of a scene.[4. Id.]  In truth, as highlighted by the results of what The Hollywood Reporter has coined a “trademarklawpocalyse,” trademark laws are fairly permissive towards the movie industry, generally allowing ample leeway for mark displays as long as the use of the mark is artistically relevant to the work and is not explicitly misleading about the mark’s source.[5. Lanham Act, § 43(a)(1)(A), 15 U.S.C.A. § 1125(a)(1)(A).]

The “trademarklawpocalypse” refers to the various trademark lawsuits launched against the movie industry in the last few years.[6. Gardner, Supra, Note 1.]  Most recently, Anheuser-Busch asked Paramount Pictures Corp. to obscure the Budweiser beers that appear in the movie Flight.[7. McCartney, Anthony, APNewsbreak: Budweiser Seeks Removal from “Flight”, AP The Big Story,   (Nov. 5, 2012), http://bigstory.ap.org/article/apnewsbreak-budweiser-seeks-removal-flight.]  In the movie, the main character is shot drinking Budweiser while driving.[8. Id.]  The president of Budweiser made a statement explaining that Paramount did not seek permission to feature their brand and that Budweiser has “a long history of promoting responsible drinking and preventing drunk driving.”[9. Id.]  But Budweiser was not the only brand that was shown in a movie whose plot is precisely about a person struggling with substance abuse; Stoli, Absolut and Smirnoff vodkas were also featured in the film.[10. Id.]  The alcohol industry is subject to stringent standards in the marketing and advertising of their products, and as such, it is natural for mark owners to quickly distance themselves from any negative portrayal of their trademarks.[11. See The Discus Code of Responsible Practices for Beverage Alcohol Advertising and Marketing, (2011), http://www.discus.org/assets/1/7/May_26_2011_DISCUS_Code_Word_Version1.pdf.]

From an IP standpoint, however, the Lanham Act and the doctrine of Fair Use set up loose restrictions on the usage of marks in the arts.  Specifically, as long as the use of the mark is (1) artistically relevant to work and (2) not misleading about the source of the work, a movie’s portrayal of the trademark will be in the clear under to the Lanham Act.[12. Lanham Act, Supra, Note 5.]  Analogously, Fair Use in copyright allows for copyrighted material to be used in works, as long as the work, in this case, the film, uses the copyrighted material for criticism or comment.[13. Douglas Doneson, Supplanted, Transformed or SCREWED, Pace I.P., Sports & Entertainment Law Forum (Mar. 04, 2012), http://pipself.blogs.law.pace.edu/category/copyright/fair-use/.] Both standards would most likely permit the use of the alcohol products in this case, as the products are not only relevant, but one could argue, necessary for the plot of the movie.  Moreover, recent court decisions favor Paramount’s position on the matter.[14. See Louis Vuittton Mallatier v. Warner Brothers Entertainment Inc., 868 F.Supp 2d 172 (S.D.N.Y., 2012).]

In 2003, Paramount won a trademark infringement lawsuit brought by Wham-O, the producer of “Slip N’ Slide” for the use of one of its marks in the movie Dickie Roberts: Former Child Star.[15. Wham-O, Inc., v, Paramount Pictures Corp., 286 F.Supp.2d 1254 (N.D. Cal. 2003).]  In that case, paramount displays an inflatable slide (“slide”) for 70 seconds without obtaining Wham-O’s permission.[16. Id.] The movie shows Dickie Roberts (“Dickie”), the main character, misusing the slide several times.[17. Id.] The misuse of the slide is pivotal to the idea of Dickie’s separation from a normal childhood, which is the central theme of the movie.[18. Id.]  Wham-O asked for an injunction under the Lanham Act, citing unfair competition and dilution of its registered mark.[19. Id.] The Court rejected Wham’O’s claims, asserting on the one hand, that dilution in trademark involves the tarnishing of the brand and in this case, the misuse of the mark was “apparent…obvious and unmistakeable…even to the youngest film viewer”.[20. Id. at 1262.]  As such, the misuse created no confusion, a necessary element to establish the competition claim.[21. Id.]

Just, last year, Louis Vuitton unsuccessfully sued Warner Brothers for its use of a third party’s knockoff bag in the movie “The Hangover Part II.”[22. Louis Vuitton v. Warner Brothers, Supra, Note 14.]  In the movie, a knockoff Louis Vuitton appears in two different scenes and is referenced by one of the main characters who exclaims: “Careful, that is a Lewis Vuitton!”  The Southern District Court not only dismissed the complaint but also made Louis Vuitton pay all costs of the litigation.[23. Id.]  The Court reasoned that displaying the brand, albeit a knock-off, was relevant to the remark made by the character, who mispronounces the French name.[24. Id.]  The Court went on to quote Rogers v. Grimaldi explaining that “where First Amendment values are concerned, courts should balance the public interest in freedom of expression against the public interest in avoiding customer confusion”.[25. Louis Vuittton Mallatier v. Warner Brothers Entertainment Inc., 868 F.Supp 2d 172 (S.D.N.Y., 2012), quoting Rogers v. Grimaldi, 875 F.2d at 999 (2d cir. 1989).]

Despite consistent unfavorable outcomes for brand owners, which favor the movie industry, trademark suits continue to flood the courts.  Most recently, in August, a German brand owner filed against Buena Vista Home Entertainment for its use of a suitcase that was suspiciously similar to the German brand’s product,[26. See Eriq Gardner, Marvel Sued by Luggage Company Over ‘Avengers’ box Set Packaging, The Hollywood Reporter, (Aug. 8, 2012), http://www.hollywoodreporter.com/thr-esq/marvel-sued-by-luggage-company-358175.] then late last year, the Faulkner Estate filed suit against Sony over the use of one of Faulkner’s lines in the movie Midnight in Paris.[27. Tim Kenneally, Midnight in Paris Lawsuit: William Faulkner Rights Holder Sues SONY Over Book Reference, Yahoo! TV, (Oct. 26, 2012), http://tv.yahoo.com/news/midnight-paris-lawsuit-william-faulkner-rights-holder-sues-231032878.html.]  Perhaps brand owners’ persistence will influence the court to see the Lanham Act in a new light, but currently, the trend against infringement is clear.