Our law firm recently had the opportunity to address the issue of whether unauthorized use of a company’s trademark in a television program or film could result in a claim of trademark infringement. Based on our research, we found that when unauthorized use of a company’s trademark in a film or television program is minimal, incidental or insignificant, and does not advance the plot or particular scene, there probably will be no trademark infringement. However, this is not to say that every unauthorized use of a company’s trademark would be permitted or deemed to be fair use.
It’s understandable that a trademark owner would be shocked to learn that his or her registered trademark is being used without permission in expressive media, such as TV or film. Generally speaking, the motivations of a trademark owner to claim trademark infringement (or false endorsement) when its trademark is shown in a TV program or film without permission arise when its trademarks are placed in a negative light. For example, we found that the majority of lawsuits against use of trademarks in expressive media fall into one of two categories: (i) use of the same or similar branded products as part of a joke, or (ii) use of the same or similar branded products in a negative light (usually by a villain in a TV program or film).
In a number of these lawsuits, the trademark owner has alleged that viewers of the TV program or film will mistakenly believe that: (i) the trademark owner actually endorsed the TV program or film; and/or (ii) that the trademark owner sponsored or approved use of the trademark in the TV program or film. In almost all of these lawsuits, First Amendment free speech rights outweigh whatever theory of confusion or deception is made by the trademark owner.
Balancing Free Speech Rights v. Right to Prevent Confusion and Deception
Under the Rogers balancing test (Rogers v. Grimaldi (2nd Cir. 1989)) used by most courts around the country, a court will seek to balance the right of the trademark owner to prevent confusion and deception against Fist Amendment free speech rights of the creator of the TV program or film. “The finding of likelihood of confusion must be particularly compelling to outweigh the First Amendment interest recognized by Rogers.” (Twin Peaks Productions, Inc. v. Publications Intern, Ltd., 996 F.2d 1366 (2nd Cir 1993)).
Under the Rogers test, a trademark used in a TV program or film will be prohibited as trademark infringement or false endorsement under the Lanham Act only if the trademark has: (i) no artistic relevance to the underlying work; or (ii) if there is artistic relevance, use of the trademark in the underlying work explicitly misleads as to the source or the content of the work.
As noted above, if a trademark owner’s branded product has a relatively low profile in TV program or film, application of the Rogers test will usually preclude a finding of infringement. For example, in Gottleib Development LLC v. Paramount Pictures Corp (SDNY 2008), the judge dismissed a trademark infringement claim filed by a trademark owner that its branded product was briefly shown in the background of a scene in a film. The fact that the trademark owner’s branded product was visible in the background of a scene for fleeting moments meant that there was no possible confusion of source or sponsorship of the film.
In Louis Vuitton Malletier S.A. v. Warner Bros. Entertainment Inc. (SDNY 2012), a trademark infringement suit brought by Lois Vuitton against the use of a counterfeit Louis Vuitton bag in a Warner Brothers film was dismissed. Using the Rogers test, the court concluded that the counterfeit bag had artistic relevance to the plot because it was used to show a character was so ignorantly snobbish as to think the fake base was a genuine “Lewis Vuitton.” The court rejected the theory that there could be confusion or deception either that Louis Vuitton authorized use of a fake bag in the film or that Louis Vuitton endorsed the film itself.
In sum, when unauthorized use of a company’s trademark in a film or television program is minimal, incidental or insignificant, and does not advance the plot or particular scene, there probably will be no trademark infringement. For example, if all of the characters depicted in TV program wore a company’s branded apparel in a deliberate, planned or premeditated way, there may be a stronger case for trademark infringement or false endorsement. However, this is not to say that every unauthorized use of a company’s trademark would be permitted or deemed to be fair use. Each situation should be viewed in light of the applicable facts to determine whether use of the trademark would result in trademark infringement or trademark fair use.
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