Hi John Hess from FilmmakerIQ.com.
Recently Lindsay Ellis, a wonderful YouTube analysis channel released a video called Product
Placement and Fair Use.
In this one though I feel Ellis might have painted too bleak of a picture about what
is allowed in the depiction of brands in narrative filmmaking.
Since this question does pop up a lot and I have an obsession with the philosophy of
IP laws, I felt compelled to make this short IQBits.
Now, I am not a lawyer.
But I did stay at a Holiday Inn Express one time and I took one summer class in Business
Law with a professor that got me hooked on the subject matter...
I'll make this disclaimer again at the end, but when it comes to intellectual properties,
judgement is based on specific application and it's a matter of convincing a judge on
the merits of the details of your specific case.
So the real answer to every legal question on Intellectual Property is, "It depends"
First - let's clear up the definitions of intellectual property of which there are three
kinds: Copyright - which we did a whole history of video.
Copyright covers artistic expressions from books to visual arts, music and motion picture.
The duration of protection is currently life plus 70 years or 90 years if commissioned
as a work of hire in the US.
Then there's patents which cover industrial processes - Design patents last for only 14
years after they are granted.
Utility Patents can last a maximum of 20 years if the maintenance fees are paid on time
And finally there's Trademark - the subject of this video.
As defined by the Lanham Act of 1946, a trademark is "any word, name, symbol, or device, or
any combination thereof' used by a manufacturer or seller "to identify and distinguish his
or her goods, including a unique product, from those manufactured or sold by others
and to indicate the source of the goods, even if that source is unknown."
Think unique names, think graphic logos, sound cues, even slogans like Think different.
Trademarks unlike the other two categories of IP do not have an expiration date so long
as the company uses the trademark and protects it.
Fair use is the defense that balances freedom of speech with the interests of intellectual
property rights holders.
In patent law there is no such thing as fair use, at least right now.
In copyright fair use is reserved for commentary, education, criticism and so forth.
The vast majority of content online regarding fair use is talking about Fair Use in Copyright
- so let's skip ahead.
What we're interested in is Trademark Fair Use which is not talked about as Copyright
Fair Use.
Copyright protects expression - the power of Congress to protect copyright and patents
is directly stated in the Constitution.
Trademark on the other hand stems from the Commerce Clause.
It's to ensure that businesses can mark their goods and services and that consumers can
understand where their goods and services are coming from.
So trademark protection is less concerned about granting exclusive right to trademark
holders than it is about promoting efficient markets by giving consumers truthful information.
Now because trademark carries a lot of information about a product essentially in shorthand,
it's also extremely useful in communications: especially entertainment to bridge the gap
between the real world and the fictional one.
So if the use of a trademark, even unauthorized use, does not interfere with the trademark's
function in the marketplace and there is a public interest like first amendment freedom
of speech issue at hand, the courts generally favor public interest.
But before diving into issues of first amendment let's look at the two kinds of fair use
defenses regarding Trademark when dealing with commercial speech - or advertising:
Classic or Descriptive and Nominative.
Classic or Descriptive Fair Use pops up when when a trademark is being used for ordinary,
descriptions of a product or service.
In KP Permanent Make-up, Inc. v. Lasting Impression Inc in 2004, a permanent makeup company advertised
"Micro Colors" to describe their product even though Micro Colors is a trademark of
another product in the same category.
That was ruled not infringing because micro colors was used in a descriptive sense.
Another example is Sunmark, Inc. v. Ocean Spray Cranberries, Inc., from 1995.
Ocean Spray labeled their products as Sweet-tart which is descriptive of the product and not
infringing on the Trademark of the Sweet Tart Candies made by Sunmark.
Nominative Fair use is when you use a trademark, not to describe your product but to refer
to the actual product or service associated with that trademark.
For Nominative Trademark fair use you need the following conditions.
The use of the trademark must be accurate, not misleading or defamatory
The use must not imply any endorsement
There is no easier way to identify the product
And you use only the bare minimum that is required to identify the other trademark.
This often means you refer to it name and not with a logo but not always.
This allows forms of competitive advertising where they actually mention the competitor
brand instead of saying "the leading major brand".
This also allows a car repair shop to use the Volkswagen brand saying they are tooled
to work on Volkswagens even if they are not officially an authorized Volkswagens service
shop.
There is even a case involving a former Playboy Playmate where the court ruled that she could
use the trademark Playboy to describe herself on her website.
But these are the rules generally applied to fair use in commercial speech.
A film is not commercial speech, it is protected speech under the first amendment since the
Supreme Court Case Joseph Burstyn, Inc. v. Wilson in 1952.
And in a culture where brands are part of daily life and carry so much meaning, the
ability to mention brands by name is a necessity for free speech.
Since 1988 a test called the Rogers test has begun formulating to determine if an unauthorized
use of trademark is entitled to First Amendment protection or if it is a Trademark Infringement.
Although the Rogers test is still somewhat confusingly applied and not all circuits adopt
it the same way, it is at least a groundwork for understanding this balance between protecting
the rights of the Trademark holders and rights of artists to their freedom of speech.
The Rogers test comes from the case: Ginger Rogers v. Alberto Grimaldi.
Alberto Grimaldi and MGM distributed the 1986 Federico Fellini film Ginger and Fred, a movie
about Pippo and Amelia, two Italian cabaret performers who pretty much resembled Fred
Astaire and Ginger Rogers.
Ginger Rogers claimed that the film violated her Lanham Act trademark rights, her right
of publicity, and was a "false light" defamation
The courts decided with Grimaldi - noting that the movie only tangentially related to
Astaire and Rogers.
And from that decision a two prong test began to develop.
The first test: Does the use of the trademark in question have artistic merit?
Truthfully this a pretty low bar to pass.
In the case of Fred and Ginger - the title has artistic merit because it is the nicknames
of these cabaret singers - it lends the film an air of sophistication and class - it has
something to do with the story.
If it had nothing to do with the story and was only chosen to piggy back on the success
of Astaire and Rogers - then it would fail this test.
The second test: does the use of the trademark explicitly mislead the viewer as to the source
of the product.
Sure maybe someone might have thought that "Fred and Ginger" was about the Astaire
and Rogers, but that would be a real blow to free artistic expression if you had to
check every possible meaning and eliminate all sources of confusion - Now if it was "The
True Life Romance of Fred and Ginger" or "Ginger Rogers presents: Fred and Me"
those would be explicitly misleading and grounds for Trademark infringement.
Let's take a look at how the Rogers test played out in some real life cases starting
in a genre that's plagued with infringement issues: Mockbusters: we talk more about the
genre in our History of the Mockbuster video -
Warner Brothers Entertainment v. The Global Asylum, Inc.
Asylum if you don't know, puts out cheap movies with titles that sound a lot like Blockbusters
hoping to catch a quick sale.
This case involved their mockbuster "Age of Hobbits" scheduled to catch the media
blitz of "The Hobbit".
This is a failure of both prongs of the Rogers test.
First of all, Asylum's use of the word "Hobbit" to describe a prehistoric variety of Indonesian
people held no special artistic merit.
Even though the scientific community does nickname this real-life human subspecies "Hobbits"
it's not the meaning originally created by J.R.R Tolkien.
Age of Hobbits fails the second prong of the Rogers test because… well, I mean that's
the point of mockbusters - to ride the coat-tails of a big productions to confuse the audience
of their origins.
The Age of Hobbits sounds like it would come from the same producers as The Hobbit.
That was an example of an issue of the title.
Since the Rogers case, the courts have expanded the application beyond the titles and into
the actual content of the films themselves.
In Louis Vuitton v. Warner Brothers 2012 - we see an application of the Rogers test in regards
to a prop.
In the Hangover II, Zach Galifianakis's character chides his friend for handling his
bag in this short scene:
Mind if I sit?
Wolfpack only! Find another chair.
There's no Wolfpack Allen.
It's no problem
There's no problem, Teddy, you're sitting here.
Careful that's a Lewis...
That is a Lewis Vuitton!
Well Louis Vuitton wasn't too happy about that… considering the bag wasn't even
made by them, it was made by Chinese American company Diophy.
They argued that because the filmmakers used a knock off bag, people would assume that
Louis Vuitton approved and endorsed that bag to be shown in the movie.
In other words because the movie says it was a Louis Vuitton bag, and it was actually a
knockoff back, this is a false representation of their trademark.
If this was a commercial speech or advertisement - this would fail to be nominative fair use
because it misrepresents Louis Vuitton's trade mark.
But this isn't commercial speech so let's apply the Rogers test.
First - was the use of the trade mark arbitrary or did it have artistic merit?
Well Teddy's mispronunciation of the brand demonstrates more of his character, he's
snobbish and stupid - he doesn't even call the high end bag by it's real name - that's
artistic merit right there.
For the second prong: does the Hangover explicitly mislead people about the origin of the Louis
Vuitton bag?
Most people watching the film would probably never know the bag is was a knock off in the
first place.
So this really does not meet the requirement of being explicitly misleading. So the court found in favor of Warner Bros.
A more recent case can be found this time in video games in the case of Mil-Spec Monkey,
Inc. v. Activision Blizzard, Inc. over the game Call of Duty: Ghosts in 2014.
Mil Spec is a company that designs military themed apparel and bags.
Mil-Spec's patches are quite popular, in particular its "angry monkey" patches
which the company uses as a trade mark.
In Call of Duty you can customize your character with patches - one of the available patches
looks very similar to Mil-Spec's trademark.
The court ultimately decided in favor of Activision again applying the Rogers test.
First - because the game is a combat shooter seeking to be as realistic as possible - there
is artistic merit in using a visual that military personnel would recognize.
It doesn't just randomly appear in a game that has nothing to do with the military.
The second prong, does the use of trademark EXPLICITLY mislead the public into thinking
that Mil-Spec created or sponsored the game.
Despite the fact that there were people that mistakenly believed that Mil-Tec was involved
with the game, the court found it was not explicit enough to warrant any infringement.
Copyright however, is a different matter and the last article I found on that says they're
still litigating that.
So now that you know about Trademark Fair use and First Amendment issues with the Rogers
Test - why is it that shows still blur out logos and use fake brands.
Well there are two reasons - first is to avoid a lawsuit.
All the cases I just mentioned cost money to litigate even if you win.
So if you don't have to to use a trademark or it's not important to the story, then
why risk it - it's just cheaper use a fake brand plus the art department can actually
control the look of the products and make them fit your production.
The second reason is: Advertising and Paid Product Placement.
Probably the most famous case of this was the film E.T.
- Knowing that Spielberg's film would be a huge success, the studio recognized a potential
revenue stream in paid product placement.
The fact that ET eats candy is an artistic choice - but which candy could be sold off
for some extra dough.
Mars balked at the price tag so it was a no go for M&Ms… but Hershey said yes and paid
1 million dollars to have their new product Reeses Pieces featured and to incorporate
the film character into their promotions - and of course - the rest of that is Paid Product
Placement history.
So there is value in being part of a big hit movie - so big time film producers are reluctant
to just give that screen time away for nothing.
These movies are good at getting eyeballs and as the Joker says…
If your good at something never do it for free.
With TV, the issue is complicated by fact that a show's production may not have any
connection to the products ultimately advertised on that show.
Cooking shows are notorious for this kind of thing - ever notice how the cans they use
are all non-descript?
That's because if the chef uses a can of Heinz tomato paste, the TV network will have
a harder time selling advertising to the competing tomato paste maker Hunts.
To make sale of advertising as easy as possible and to not stir the pot so to speak, TV shows
avoid any use of trademarks when possible to make the shows advertiser agnostic..
That's not to say that shows don't use paid product placement… because they certainly
do.
There are cases of major brands actually supplying "generic products" for use in tv shows.
I've heard that Coke and Pepsi will make cans and bottles for TV and film production
that look generic but have a tinge of their own branding.
Sometimes this actually works better than Paid Product Placement: - when a generic brand
is just off enough it can make the viewer subconsciously notice and think about the
product.
So that's TV and Big Hollywood productions.
What should the small production that won't have the pull to secure paid product placement
take away from all of this?
Well you could play it safe and make sure that no brands are visible or mentioned in
your movie - replace any branded product with a generic look alike.
That's an appropriate and responsible line of action - however it can be more costly
in time and money to create or rent generic products.
You can even blend the real and generic if creating a trademark free set is not entirely
practical - Take this scene from Good Will Hunting, a $10 million independent film from
1997 before Matt Damon and Ben Affleck were household names.
They shot this scene at the Bow and Arrow Pub in Boston.
Now obviously the reason you shoot on location is so you don't have to make a set but that
doesn't mean you can't dress up a bit more.
They stuck up some fake posters - like this one for Brickhauser Beer - that's a fake
brand.
But they did leave up a Guinness Draught sign and this Burgers and Miller High Life Neon
sign in the window.
I doubt that those brands paid for their signs to be in a small independent movie written
and starring a couple nobodies.
So even though the use of these trademarks is unauthorized it would be protected by the
first amendment.
Of course specifics and details matter a lot.
Every case is decided on the facts and must be weighed - there is no blanket statement
that says if you do this than that will happen - if you use so much of this
than that's infringement.
No.
But hopefully you have a better understanding of the basics of trademark use in your film,
on more complex topics, please consult a lawyer not take legal advice from some goofy pudgy guy
on YouTube with glasses who talks about moviemaking.
Remember even if you do everything right, anyone can sue for any reason - that's why
movies have to carry Errors and Omissions Insurance.
If you liked this video thumbs up, subscribe and ring that trademarked bell.
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Check out our merch store in the description below for official branded IQ gear.
If you didn't like the video, I can't think of a better way to express your displeasure
then buying 100 shirts and burning them in a ceremonial bonfire.
Record it, post it to YouTube, It's your free speech!
I'm John Hess, I'll see you at Filmmaker IQ.com
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