Tuesday, 4 June 2013

"Prominence Invites Creative Comment"

Warner Bros, maker of the latest Batman film, The Dark Knight Rises, very recently defeated a trademark infringement lawsuit brought by software company, Fortres Grand.  The gravamen of the case was the movie's depiction of a fictional software product called Clean Slate that allowed characters to erase records of their criminal past.  As it would happen, Fortres Grand is the real-life maker of a software product also called Clean Slate.  Fortres Grand filed the lawsuit alleging that the movie's use of the Clean Slate name raised a likelihood of consumer confusion, the judge however disagreed, holding that consumer confusion was unlikely, and further that the movie's use of the name was fair use.

Several months earlier another film, Flight, was involved in a trademark squabble for its depiction of real-life brands without approval of the owners.  In Flight, a pilot's substance abuse problems were portrayed by using many real alcoholic beverage brands such as Budweiser, resulting in a request by Anheuser-Busch InBev, owner of the Budweiser mark, that its brand names be obscured in the film.

These two disputes seem to present a mirror-image of each other.  One in which a fictional work accidentally uses the name of a real brand, and one in which a fictional work portrays a real brand in a manner that the owner of the trademark finds objectionable.  These scenarios may fuel allegations of trademark infringement, tarnishment, false association, or product defamation, but such claims are likely to fail due to the First Amendment rights of filmmakers.  Distilled, the issue is whether trademark law gives brand owners the ability to censor creative works, and the answer is most often no.  When weighed against each other, the property right in a trademark by and large does not prevail over the First Amendment protection of artistic expression.

I can't help but wonder what it is about film that causes brand owners to object so readily, even when their trademark-related claims are weak.  Perhaps licensing and product placement have conditioned viewers to accept, or assume, that brands appear in films at the will of the brand owner.  Does this situation thus make viewers experience brands in films in a way that is more "real," (or perhaps more confusing)?

Pondering this question, I set about researching trademark disputes related to literary works, wondering when, if ever, trademark owners brought similar claims related to the content of books.  After turning over many stones, I identified many disputes related to book titles, yet was unable to find any cases truly challenging use of brands in books.  The closest case I could find related to a series of books about the "Pee Wee Scouts."  Doubleday, publisher of the books, was sued in federal court in New York for allegedly infringing the trademarks of the Boy Scouts and Girl Scouts.  Citing the title "Pee Wee Scouts" as well as certain content of the books (such as scouts using handbooks or attending national conventions), plaintiffs alleged that consumers would be confused into thinking the books were created or sponsored by plaintiffs.  The court disagreed, dismissing the case on summary judgment, a result that was resoundingly affirmed on appeal.

In a 2006 interview with the Paris Review, Stephen King spoke candidly on his reasons for very frequently using brand names in his works, even when he received literary (non-trademark related) criticism for doing so.  His answer focused heavily on creating accurate cultural references, on enhancing the image a reader may perceive while reading the book (think Jack Torrance taking all that Excedrin in The Shining).  Still these reasons seem just as viable in the context of film.  Indeed, there should be no difference.  As the court provided in the Pee Wee Scouts case, "It is at once apparent, when we deal with the content of a book or motion picture, that we deal with no ordinary subject in commerce. . . . Their importance as an organ of public opinion is not lessened by the fact that they are designed to entertain as well as to inform; . . . books and motion pictures are a constitutionally protected form of expression notwithstanding that their production, distribution and exhibition is a large-scale business conducted for private profit."  Girl Scouts of the United States v. Bantam Doubleday Dell Publishing Group, Inc., 808 F. Supp. 1112, 1120 (S.D.N.Y. 1992) (internal citations and quotations omitted).

Hat tip to Bob Cumbow and the World Trademark Review.

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