Unauthorized use of trademarks and copyrighted works in movie scenes

The blawgosphere has reacted with consternation to the news that Faulkner Literary Rights, LLC sued Sony Pictures Classics, Inc. on October 25, 2012, over the use of nine words from the book “Requiem for a Nun” and a one-word reference to William Faulkner in the Woody Allen film “Midnight in Paris” (2011). In the movie, the main character, played by Owen Wilson, says: “”The past is not dead” Actually, it’s not even past. You know who said that? Faulkner.” Faulkner Literary Rights, LLC, a company from Virginia, purportedly owns the copyright to the book, as well as all rights, title and interest in the name, image and likeness of the late writer. The company sued for copyright infringement, violation of the Lanham Act (trademark statute), and commercial appropriation of Faulkner’s name and works.

This post surveys characteristic cases in which plaintiffs claimed, often unsuccessfully, that film or television producers infringed upon their rights by using a trademark or a copyrighted work in a movie or television series. All the examples come from the United States, where the case law is especially rich and instructive. In the trademark cases, the brevity of time during which the trademark appears (without authorization) in a movie is a factor of major importancefor the determination of the legality, because it makes it unlikely that consumers would conclude that the trademark holder sponsored or was otherwise affiliated with the movie. In the copyright cases, brevity tends to result in the court’s conclusion that the use is too trivial to amount to an infringement, or, at least, that the unauthorized use of copyrighted work was fair use and thus protected.

Use of a trademark

The presence of products in a successful movie normally enhances the sale of the products – an example is the two-thirds increase in the sale of the candy Reese’s Pieces in the months following the release of Steven Spielberg’s movie “E.T.”. If some owners of famous marks nevertheless sue movie producers for the presence of their marks in the movie, it is usually because they are concerned with what they consider is the negative context in which their products appear.

The first high-profile case, Wham-O, Inc. v. Paramount Pictures Corp. (U.S. District Court, N.D. California. 30 September 2003), concerned a comedy sequence in the movie „Dickie Roberts: Former Child Star“. In the scene, three children play on a water toy slide. One of the characters tells the other two: ”O.K., Stranger Danger, this is a Slip ‘N Slide.” The children fail to properly inflate and lubricate the slide, so Dickie Roberts, the main character, makes three unsuccessful attempts in sliding, the last attempt ending in a collision with a picket fence. The scene lasts approximately 70 seconds, and it played a prominent role in the advertisement and promotional campaign.

”Wham-O, Inc.”, the manufacturer of the Slip ‘N Slide, sued for dilution (both blurring and tarnishment), trademark infringement (confusion), and unfair competition. The court rejected the allegation of tarnishment, because the slide was obviously misused by the movie characters, so consumers would not form unfavorable associations with the mark Slip ‘N Slide. There was no blurring, either, because there was no risk that, as a result of the use of the product in the scene, association between the Slip ‘N Slide and “Wham–O” would weaken in the minds of consumers; on the contrary, the plaintiff itself was actually concerned that consumers would associate the slide with “Wham–O” too much. As to the allegation of a trademark infringement, it failed because there was no likelihood of confusion as to who makes what product: consumers would not mistake “Wham–O” for a movie production house, and they would not mistake Paramount Pictures Corp. for a supplier of toys. For the same reasons, the unfair competition claim also failed.

A month later, another district court (C.D. Illinois) dealt with a similar issue in the case Caterpillar Inc. v. Walt Disney Co. (20 October 2003). Disney produced and promoted a movie entitled “George of the Jungle 2”. Caterpillar bulldozers, bearing the Caterpillar and Cat trademarks, appear in four scenes. Three scenes average ten seconds apiece. The fourth scene consists of a seven minute battle between George – a husband of Ursulla, who lives in the Ape Mountain – and his animal allies against the bulldozers driven by minions of Lyle, Ursulla’s former fiancée. The narrator chimes in with statements such as: “maniacal machinery”, “deleterious dozers”, “deadly dozer heading to destroy”, and similar.

Caterpillar alleged that the scenes associated Caterpillar with the death and destruction of the environment, which irreparably harmed Caterpillar’s corporate image and injured Caterpillar’s business. The court rejected the allegation of dilution by tarnishment, because the attributes given by the movie narrator to the bulldozers did not imply that the machines were directly responsible for the attempted destruction of Ape Mountain. Instead, as it was clear to everyone watching the movie, the bulldozers were operated by humans; they were instruments in the hands of Lyle, the movie villain. As to the allegations of a trademark infringement and unfair competition, the court considered it unlikely that the appearance of Caterpillar products and trademarks would confuse consumers into believing that George 2 was somehow sponsored by, associated with, or otherwise affiliated with Caterpillar. The court did not make a final determination, because of the nature of the proceedings (the court was asked to decide on Caterpillar’s motion to obtain a preliminary injunction on the showing of the film). However, the court assessed the plaintiff’s likelihood of success on the merits as “slightly more than negligible”.

The most recent in the line of prominent U.S. cases concerning alleged trademark infringement and dilution in the movies is the highly-publicized Louis Vuitton Malletier S.A. v. Warner Brothers Entertainment Inc. (SDNY, 15 June 2012). The case also arose from the use of a product and mark in a comedy, “The Hangover: Part II”. The case differs in one major respect from Wham-O Inc. v. Paramount Pictures Corp. and Caterpillar Inc. v. Walt Disney Co., in that the product present in “The Hangover: Part II” is a knock-off rather than a genuine good manufactured by the plaintiff. In a scene in the movie, as the four main characters are walking through the airport, a porter is pushing on a dolly what appears to be Louis Vuitton (LV) trunks and two LV travel bags. Alan, one of the characters, carries what appears to be a LV bag, but in actuality it is a Diophy knock-off. Alan places the bag on the seat next to him. When another character moves the bag to make room for a third character, Alan says: “Careful that is . . . that is a Lewis Vuitton,” mispronouncing “Louis.” The Diophy bag appears on screen for no more than a few seconds at a time and for less than thirty seconds in total. The scenes were used in commercials and advertisements for the movie.

In contrast to Caterpillar, LV did not allege that the defendant misled the public into believing that plaintiff sponsored or was affiliated with the movie. Instead, LV argued that Warner Brothers confused the public into believing that the bag appearing in the scene on the bench (the Diophy bag) was an authentic LV bag and that LV sponsored and approved that use. According to LV, this type of confusion was sufficient to make the use infringing. LV considered the fact that the bag was displayed in the context of an artistic creation insufficient to alter the infringing nature of the use. The court disagreed. It applied the rule established in the influential Rogers v. Grimaldi decision by the U.S. Court of Appeals for the Second Circuit (1989), that there is no trademark infringement where the defendant’s use of the mark is (1) artistically relevant to the work and (2) not explicitly misleading as to the source or content of the work. “Misleading” means that the defendant’s use of a mark “induces members of the public to believe the work was prepared or otherwise authorized” by the plaintiff. In this case, the use of the Diophy bag was artistically relevant, in that it helped portraying Alan as a snobbish, socially inept and comically misinformed character. Also, the use was not explicitly misleading, in that consumers would not mistakenly believe that LV sponsored/authorized the movie.

Use of copyrighted work

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