How To Use Brands And Products In Film

Jun 29, 2017|Intellectual property
Rodriques Law

You made a movie or television show, a story about two skinheads, their violent childhood, alcoholism and their love for fast cars. One scene depicts a seedy bar. A group of teenagers. They are getting hammered. The bar-crowd is becoming a bit rowdy. Among them are two about to drop out of high school kids, Ben and Jerry. In the background of a couple of shots are recognizable logos and products of famous brands (Budweiser Beer, Stolichnaya Vodka and a collection of other liquor bottles and beer line a counter, a Yankees house flag hangs from a wall, Dunkin’ Donuts cup on a table). Except for the fact that it’s obvious that most of the bar patrons are underage, none of these brands are used in any negative light, nor is any special attention drawn to them. Moments later, in another scene, a Mercedes-Benz, driven by Ben, Jerry rides shotgun, both are rambunctious and drunk, speed out of the parking lot, barely missing a sweet old lady walking her dog. Cut to, moments later, the Benz is involved in a high-speed car chase scene, wreaking havoc in the streets of New York City, driving on sidewalks, breaking numerous traffic laws, against a backdrop of the Empire State Building (a trademarked landmark). Additionally, your movie’s title (Ben and Jerry) bears the name of a famous company founded by Ben Cohen and Jerry Greenfield (Ben & Jerry’s), manufacturers of ice cream, frozen yogurt, and sorbet.

You plan on submitting your film to festivals, get picked up for distribution, put it on YouTube, or making it available to rent or download from your own website. You don’t want to break any trademark laws or be rejected or get a cease and desist notice and you don’t have the budget to spend thousands of dollars blurring out the logos in those scenes. You write to the companies that own the trademarks begging for sponsorship or product placement. But not only are you denied, these companies demand that their brands and products be cut from all scenes.

Trademark owners may object to the use of their trademarks in fictional films or other media productions without their consent, and seek to enjoin such uses by filing a trademark infringement action under section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)), unfair competition in violation of the common law of New York, under the Federal Trademark Dilution Act ("FTDA"), and dilution of trademark in violation of New York's anti-dilution statute (section 368-d of the New York General Business Law).

There’s obviously a conflict between trademark rights and the right of others to express themselves freely in their own artistic work. So how do you use names, logos, images, products and landmarks in your film without violating trademark law?

A. Trademark Infringement and Unfair Competition

In the context of filmmaking, the purpose of trademark law is to avoid reasonable potential consumers becoming confused, mistaken or deceived regarding whether the trademark owner either (i) was the source or producer of the motion picture, (ii) endorsed or sponsored the film or (iii) otherwise approved the use of the its trademark or goods in the movie.

The focus of a trademark infringement action is “likelihood of confusion”.

    a. Likelihood of Confusion

The Second Circuit has set forth the following eight factors used in determining whether a likelihood of confusion exists: (1) the strength of the plaintiffs’ mark, (2) the degree of similarity between the plaintiffs’ and the defendant’s marks, (3) the proximity of the parties’ products in the marketplace, (4) the likelihood that the plaintiff would “bridge the gap” between the products, (5) the degree of actual consumer confusion, (6) the good or bad faith with which the defendant adopted the plaintiffs’ mark, (7) the quality of defendant’s product and (8) the sophistication of the relevant consumer group.

No single factor is dispositive. Neither does a finding of a likelihood of confusion require a positive finding on a majority of these "digits of confusion."

    1. Strength of the Mark

The more deeply a senior user’s mark is embedded in the consumer's mind, the more likely it is that the junior user’s mark will conjure up the image of the senior user’s product instead of that of the junior user. 

There is no doubt the Yankees, Dunkin Donuts, Mercedes-Benz, Budweiser Beer, Stolichnaya Vodka and other liquors are strong, recognizable brands. However, this alone does not always lead to confusion as to source, endorsement or sponsorship.

    2. Degree of Similarity Between the Marks

The greater the similarity between products, the greater the likelihood of confusion. In Universal City Studios, Inc. v. Nintendo Co., Ltd., the court decided that in order to determine if confusion is likely, each trademark must be compared in its entirety. For example, in Vitarroz Corp. v. Borden, Inc., it was held that “the setting in which a designation is used affects its appearance and colors and the impression conveyed by the mark”. In Hormel Foods Corp. v. Jim Henson Productions, Inc., the court found that “placement of the marks next to other identifying but dissimilar symbols is clearly relevant.” 

Applying these principles, when Ben and Jerry and the brands and products depicted are viewed as a whole, the filmmaker’s use of the Empire State Building, Mercedes-Benz, Dunkin’ Donuts, Budweiser and Stolichnaya next to the different brands of whiskey, vodka and beer, would be unlikely to raise in the minds of an appreciable number of ordinarily prudent consumers a suggestion of sponsorship, endorsement or affiliation.

    3. Proximity of the Products

In Hormel Foods Corp. v. Jim Henson Productions, Inc., the Court found defendant’s mark was less likely to cause consumer confusion “where the plaintiff and defendant’s products occupy distinct merchandising markets,” for example, “luncheon meat, in the case of SPAM, and a Muppet motion picture, in the case of Spa'am”.

In ESS ENTERTAINMENT v. Rock Star Videos, “strip clubs and video games are not related products”. The Play Pen is a Strip club where food and refreshments are served and live nude dancers perform. The video game, Grand Theft Auto: San Andreas, is generally played at home, sitting in front of a screen. Although there may be an overlap in terms of customers, the Play Pen and San Andreas do not directly compete for purchasers.

Applying this principle, since the film and the brands depicted are noncompeting products, and since the they occupy distinct merchandising markets - cars, in the case of Mercedes, and a fictional motion picture, in the case of Ben and Jerry, there would be no likelihood of confusion.

    4. Bridging the Gap

Bridging the gap refers to the "senior user's interest in preserving avenues of expansion and entering into related fields." In Westchester Media v. PRL USA Holdings, Inc., the court held that “the danger of affiliation or sponsorship confusion increases when the junior user's market is one into which the senior user would naturally expand.” In ESS ENTERTAINMENT v. Rock Star Videos, the court observed that “plaintiff is not now and has never been in the video game business, and has no plans to enter that business. Defendants have never been in the strip club business and have no plans to enter that business. The difference between the parties' businesses and product lines makes it improbable that a player who sees the Pig Pen, and recognizes that it was modeled after the Play Pen, will believe that the owners of the Play Pen endorsed or sponsored the Game”.

Applying this principle, there is no indication that Annhuser-Busch or other owner of any of the brands depicted in Ben and Jerry has plans to enter into the motion picture production business. However, many companies, including Mercedes, do sponsor or endorse films through product placement. But there is no indication that the filmmaker claims to be in partnership with any brand to promote the film. In this case, there would need to be evidence of “actual consumer confusion”.

    5. Actual Confusion

There must be evidence of actual confusion by potential consumers of the film as to the producer, sponsorship or endorsement. In Caterpillar Inc. v. Walt Disney Co., there was no evidence that consumers, members of the media, or anyone else had mistaken Spa'am as a promotional figure for SPAM, or as a character sponsored by the Caterpillar. There was no evidence of actual consumer confusion, “although the absence of such evidence is understandable” due to the fact that Walt Disney had yet to release George of the Jungle 2 to the public.

    6. Bad Faith

In Hormel Foods Corp. v. Jim Henson Productions, Inc., the court held that Henson “would have absolutely nothing to gain from creating a confusion among consumers” causing them to believe there was a business association between Henson and Hormel. “There is nothing to indicate that Henson acted in bad faith”.

Applying this principle, there is no indication that the filmmaker intentionally included the brands and products in the film in order to deceive the public into believing the trademark owners produced, endorsed or sponsored the film or otherwise approved of their brands and products being depicted.

Even if the filmmaker used the marks with the intent to encourage the companies to pay for their brands to be integrated into the film, there is no indication that the filmmaker did so with the purpose of riding on the reputation and goodwill of these companies or to induce the public to go see the film when it is released.

There is no evidence from which an inference of bad faith could be drawn. In fact, the public would not know that these brands are depicted in the scenes until they watch the movie, either having paid to see it in theaters, streaming it online, purchasing the DVD/Blu-ray, or watching a friend’s copy. There is no indication the filmmaker featured any of these brands in its promotion of the movie. Therefore, the use of these brands and products in the film could not have had an effect on the purchasing decision of consumers.

    7. Quality of the Products

In Hormel Foods Corp. v. Jim Henson Productions, Inc., the quality of a junior user's product can be relevant in two ways: (1) an inferior product may cause injury to the plaintiff’s trademark because the public may think that the senior and junior products came from the same source; or (2) products of equal quality may tend to create confusion as to source because of this very similarity. 

Applying this principle, it is unlikely that a large group of the intelligent public would think that Mercedes has endorsed a low budget indie film with no star attached. In fact, these qualities may be why these brands would not endorse the film in the first place. Even if “Ben and Jerry” is a big budget film (being made for $10M or more) with name talent, the result may be same.

For example, the makers of Concussion (with a production budget of $35M) starring Wil Smith, about a Nigerian doctor who discovered chronic traumatic encephalopathy which affects athletes in the NFL, uses official NFL trademarks throughout the movie. So how did a major motion picture, starring one of the world’s biggest movie stars, get away with using the League’s trademarks and materials in a film that casts it in the worst-possible light? The producers were careful to make sure there was nothing, factually, with which the NFL could find fault. “We had great lawyers,” said Scott. “And we checked every fact, so that there was no way we can be discredited.”

    8. Consumer Sophistication

The Court in Wham-O, Inc. v. Paramount Pictures Corp. found that defendants' use of the plaintiff’s "Slip `N Slide" in the background of a scene in the film, Dickie Roberts: Former Child Star, “will not spur any likelihood of confusion” that the consuming public will be confused as to who makes what product. In that regard, “consumers and viewers will not mistake plaintiff for a movie production house, and consumers and viewers will not mistake defendants for a purveyor of toys.” The court further observed that it is a “fact that the appearance of products bearing well known trademarks in cinema and television is a common phenomenon.” For example, action movies frequently feature automobiles in a variety of situations, and the mere appearance of a Ford Taurus in a garden variety car chase scene is not, by itself, sufficient to constitute unfair competition.

Applying this principle, it is unlikely that any reasonable moviegoer would buy, download, stream or rent the filmmaker’s movie because they believed that it was produced, endorsed or sponsored by the New York Yankees, Annheuser-Busch, Dunkin’ Donuts or Mercedes. A consumer who would be likely to watch the movie would do so because he likes the filmmaker’s work. Seriously, why would any company pay to have their brand portrayed in a film where its product is portrayed in a negative light?

B. Trademark Dilution

In addition to avoiding consumer confusion, trademark laws are designed to protect a trademark owner’s goodwill and reputation.

In Academy of Motion Picture Arts & Sciences v. Creative House Promotions, Inc., the court held that trademark dilution is "the gradual whittling away of a trademark's value" and the "lessening of the capacity of a famous mark to identify and distinguish its goods and services”. In I.P. Lund Trading ApS v. Kohler Co., the court held that trademark dilution carries the risk of causing injury to business reputation, because it dilutes the distinctive quality of a mark “by creating an association in consumers' minds between the mark and a different product." Trademark law also provides protection from an “appropriation of or free riding on the investment the trademark holder has made in its trademark".

Unlike trademark infringement, trademark dilution does not require that there be any competition or likelihood of confusion regarding the source or sponsorship of a product.

A likelihood of dilution can be established by a showing either of blurring or of tarnishment.

    i. Blurring

Dilution by blurring can occur where the defendant uses the plaintiff's trademark to identify the defendant's own product, thereby raising the possibility that the trademark will lose its ability to serve as a unique identifier of the plaintiff's goods. For example, DuPont shoes, Buick aspirin tablets, Schlitz varnish, Kodak pianos, Bulova gowns, Tylenol snowboards, Netscape sex shops and Harry Potter dry cleaners, although there may be concurring uses of the same name that are non-infringing, such as the use of the "Delta" mark for both air travel and sink faucets.

In Mattel Inc. v. MCA Records Inc., the court held that to be blurring, use of the mark need not bring to mind the junior user alone. “The distinctiveness of the mark is diminished if the mark no longer brings to mind the senior user alone.” The court acknowledged that the use of the Barbie trademark in the song’s title (Barbie Girl) was blurring, in that “after the song’s popular success, some consumers hearing Barbie’s name will think of both the doll and the song, or perhaps of the song only”. Similarly, in Dallas Cowboys Cheerleaders Inc. v. Pussy Cat Cinema, Ltd, the court determined that “it is hard to believe that anyone who had seen defendants' sexually depraved film could ever thereafter disassociate it from plaintiff's cheerleaders.”

In contrast, in Wham-O, Inc. v. Paramount Pictures Corp., the Ninth Circuit rejected plaintiff’s claim that defendants' use of the trademarked Slip’N Slide water slide will engender an unfavorable association in viewers' minds between the slide and the film, where the slide was misused in the film for comic effect, and even though the misuse resulted in a character being injured. The court found that “the kind of misuse to which defendants put the slide does not make plaintiff’s marks less unique or identifiable, and plaintiff has not demonstrated anything to confirm actual dilution.” The court also found that after seeing the film, viewers “would still associate the Slip’N Slide trademark with the water slide it identifies”.

Applying these principles, there is no evidence to show that the filmmaker used Mercedes or any of the other brands and products to describe or identify the film or to draw attention to the film. The filmmaker does not seek to depict these brands and products in order to market the film or to sell movie tickets, VOD, DVDs or Blu-rays. Even were the film to be made and be a big box office success, there is nothing to suggest that a customer viewing a Mercedes car will always associate the car with the film, or perhaps think of the film only. After viewing the film, viewers would still associate Mercedes with the luxury car it represents. Likewise, it is doubtful that sales of Budweiser Beer or Stolichnaya Vodka or Dunkin’ Donuts coffee would diminish after viewing the movie.

    ii. Tarnishment

In addition to being used as a source identifier of goods or services, a trademark can also attest to the quality of the product to which it is associated (with the expected result of increasing sales or awareness of the product).

A trademark is tarnished when it is used in such a way that consumers form an unfavorable or negative association with the mark, resulting in injury to the trademark holder’s business and reputation.

Tarnishment can occur through a variety of uses, such as when a trademark, or its likeness, is placed in the context of sexual activity, obscenity, or illegal activity.

There are a number of cases where the courts have rejected tarnishment claims, and such plaintiffs were unable to get their logos and products removed from defendants’ movies. In Hormel Foods Corp. v. Jim Henson Productions, the plaintiffs worry that sales of their product, SPAM, would drop off if it is linked with the "evil in porcine form" in defendant’s film, Muppet Treasure Island, in which Spa'am is the high priest of a tribe of wild boars that worships Miss Piggy as its Queen Sha Ka La Ka La. In Wham-O, Inc. v. Paramount Pictures Corp., the defendant’s film presents a comical misuse of the plaintiff’s trademarked Slip’N Slide toy. “It is an obvious and unmistakable misuse, one recognizable by even the youngest or most credulous film viewer, and one expressly described as a misuse in the film itself”. In Caterpillar Inc. v. Walt Disney Co., Walt Disney’s film depicted Caterpillar’s bulldozers as being “associated with the evil character Lyle and his nefarious scheme”. Here, the court reasoned that “the appearance of products bearing well-known trademarks in cinema and television is a common phenomenon,” and “it is clear to even the most credulous viewer or child that the bulldozers in the movie are operated by humans and are merely inanimate implements of Lyle's environmentally unfriendly schemes.”

In Mattel, Inc. v. MCA Records, Inc., the court found that, “if a trademark is placed in a negative context through a defendant’s depiction, the reasonable consumer is correspondingly less likely to be fooled into thinking that any trademark owner would sponsor or endorse such a negative portrayal.”

As these cases indicate, tarnishment does not occur simply because a trademarked product is depicted in a negative context or that the trademark holder finds objectionable.

Applying these principles, the makers of Budweiser Beer, Stolichnaya vodka, Mercedes car and the other brands would be unlikely to succeed on a claim that the portrayal of their respective products and trademarks in Ben and Jerry casts them in an unwholesome or unsavory light. There is nothing in the film to even remotely suggest that these brands and products are shoddy or of low quality, or even that the products are made for underaged consumers.

The depiction of a Mercedes, for example, driven by alcoholic teens causing havoc through the streets of NYC will not weaken the association of the Mercedes brand as a luxury car. In fact, if in real life a Mercedes would be the car of choice for irresponsible teens, the filmmaker’s choice would tend to increase public identification of the Mercedes' mark with Mercedes-Benz, and not with the producers of Ben and Jerry. Moreover, the filmmaker is not using the name "Mercedes" as a product brand name. Rather, Mercedes is used by a character in the film. This tends to dissipate the fear that Mercedes will no longer be considered a unique product identifier of Mercedes cars. Therefore, to those viewing Ben and Jerry, the misuse of a Mercedes car will be apparent to even the youngest viewers and the Mercedes brand will not be harmed.

C. Fair Use Defenses

Fair use is a privilege given to others to use an owner’s trademark in a reasonable manner without the owner’s consent. However, the fair use defense will not be available if there’s a likelihood of confusion regarding the source, endorsement or sponsorship of a product.

There are two fair use defenses available in trade dress or trademark infringement cases: classic fair use and nominative fair use.

    1. Classic Fair Use

A use is classic fair use where defendant has used the plaintiff’s mark only to describe the defendant’s own product. To prevail on a classic fair use defense, a defendant must show: (1) that it has not utilized the trademark as a trademark or service mark; (2) that it has used the trademark fairly and in good faith; and (3) that it has used the trademark only to describe its own goods or services.

In Sunmark, Inc. v. Ocean Spray Cranberries, Inc., the classic fair use exclusion allowed Ocean Spray to describe its cranberry drink as tasting “sweet-tart,” despite candy company Sunmark having a trademark on the term “SweetTart” for its candy. In WCVB-TV v. Boston Athletic Association, the holder of the trademark “Boston Marathon” unsuccessfully tried to prevent a TV station from using the name in its coverage of the Boston Marathon. On the other hand, court in Brookfield Communications, Inc. v. West Coast Entertainment Corp. held that while the defendant could legitimately use the term "Movie Buff' to describe a movie devotee”, it was barred from using "MovieBuff," since, without the space, the term was not an English language word and "was used to refer to Brookfield's products and services, rather than to mean `motion picture enthusiast'".

Applying these principles, the classic fair use defense would not be available, since there is no indication the filmmaker is using the brands and products to describe or refer to the filmmaker’s own film.

    2. Nominative Fair Use

In contrast to classic fair use, nominative use is the use of a mark to identify or to refer to the plaintiff’s product, even if the defendant's ultimate goal is to describe his own product. In Mattel Inc. v. Walking Mountain Productions, the court held that to prove nominative use, a defendant must show that (1) the “plaintiff's product or service in question must be one not readily identifiable without use of the trademark"; (2) "only so much of the trademark or trademarks may be used as is reasonably necessary to identify the plaintiff's product or service"; and (3) "the user must do nothing that would, in conjunction with the trademark, suggest sponsorship or endorsement by the trademark holder." 

In New Kids on the Block v. New America Pub., Inc., the court reasoned that nominative fair use is generally used where it is often virtually impossible to refer to a product without using the trademark in question, such as “for comparison, criticism or point of reference”. Also, whereas the plaintiff carries the burden of persuasion in a trademark infringement claim to show likelihood of confusion, the court in Brother Records held that “the nominative fair use defense shifts to the defendant the burden of proving no likelihood of confusion”. 

In Wham-O, Inc. v. Paramount Pictures Corp., defendants use the plaintiff's slide to identify the plaintiff’s slide, which would not be otherwise readily identifiable, and in doing so (1) the defendants use it to identify the plaintiff’s slide as a specific product; (2) defendants use only so much of the trademarks as is reasonably necessary to identify the product or service (a character mentions the product by name twice in the film, no depiction of plaintiff's logos or marks appears otherwise, defendants do not reference plaintiff's marks unnecessarily or abusively; and (3) defendants use does nothing that would, in conjunction with the trademark, suggest sponsorship or endorsement by the trademark owner (such as, it is not used or displayed more prominently than any other product). “Like any other portion of the film's dialogue or set, plaintiff's trademark forms part of the film's jumble of imagery; it is not highlighted so as to exploit the value of plaintiff's trademark. Nothing in the record suggests defendants used plaintiff's marks to imply that plaintiff placed its imprimatur on the film; nowhere in defendants' publicity efforts is plaintiff's mark unreasonably displayed or abused. Defendants, instead, use the marks and product in a specific and unique descriptive sense: to evoke associations with an iconic child's toy.” As the court observed, “as any moviegoer can attest, it is not unusual for movie producers to use a signature scene - and the products and props therein - to cultivate interest in a film. Films with car chases do so with cars; films with gunplay do so with firearms; films with haute couture wardrobes do so with clothing.”

Taken together, the three facets of the relevant test would suggest that the filmmaker’s use of the brands, products and landmark in the film is nominative fair use. The filmmaker used the brands to identify or to refer to the trademark holders’ products, where the characters happen to drink Budweiser Beer, Stolichnaya Vodka and other brands of liquor, and one of them drive a Mercedes-Benz. There is no indication that the filmmaker used the brands and products more than is reasonably necessary, or to get attention or marketing for the film, or that the trademark owners endorsed the film or otherwise approved of the use of their products in the scenes. There is nothing that indicates that the filmmaker used the trademarks as if it they were his own. Likewise, there is no indication that the filmmaker’s depiction of the Empire State Building in the film is for any purpose other than to advance the film’s plot, and to signify that the action in the scene takes place in New York City.

D. First Amendment

First Amendment interests in artistic expression will generally outweigh whatever consumer confusion that might exist. In Rogers v. Grimaldi, “a literary title falls outside the reach of the Lanham Act if it (1) has some artistic relevance and (2) does not explicitly mislead as to the source or content of the work.” The Second Circuit and other courts have extended the Rogers First Amendment balancing test beyond a work’s title and have applied it to all expressive uses of a trademark or trade dress in artistic works. Artistic works include movies, plays, books, and songs.

    i. Artistic Relevance

Under the Rogers test, to prevail on a First Amendment defense, defendants must first show that the use of plaintiff's trade dress and trademark surpasses the minimum threshold of artistic relevance to the work's content.

In New York Racing Ass'n v. Perlmutter Pub., Inc., the court found that "the use of Plaintiff's marks in Defendants' paintings where the mark actually appears in the scene depicted serves the artistically relevant purpose of accurately depicting the scene (realism)" and as a result, “the Lanham Act should not apply to the Defendants' shirts that display reproductions of these paintings because the interest in free expression outweighs the need to avoid consumer confusion."

In University of Alabama v. Moore, the court reasoned that Moore's depiction of the University's uniforms is artistically relevant because the "uniforms’ colors and designs are needed for a realistic portrayal of famous scenes from Alabama football history."

In ESS ENTERTAINMENT v. Rock Star Videos, the Pig Pen in Grand Theft Auto: San Andreas has artistic relevance to defendants' “twisted, irreverent image of urban Los Angeles in the video game”. In designing the Pig Pen, defendant used reference photographs of the strip club, Play Pen, and other East Los Angeles locations for inspiration. The court held that, “rather than being arbitrary, defendants' decision to borrow the Play Pen trade dress and mark was closely connected to the artistic design of Los Santos and the overall theme of the Game”.

In Louis Vuitton Malletier S.A. v. Warner Bros. Entertainment Inc., Louis Vuitton disputed the use of a knockoff bag in the movie, Hangover: Part II. The film made it appear that one of the main characters owns an over-the-shoulder Louis Vuitton “Keepall” bag without notifying the audience that the bag is a fake. This scene was even included in commercials for the film. The court held that the use was artistically relevant because the film intended for the bag to enhance the funny and snobbish image of the protagonist, rather than exploit the mark’s popularity and good will. Furthermore, the court even felt that the bag introduced a tension between the characters.

Applying these principles, Ben and Jerry would satisfy the artistic relevance prong of the Rogers test. The filmmaker’s use of the Budweiser Beer, Stolichnaya vodka, Mercedes-Benz car and other trademarks or trade dress in the film bear some artistic relevance of accurately depicting the brands and products in the movie. The scenes depict troubled teens trying to function normally while in a drunken stupor. In fact, the narrative would be entirely different without the presence of alcohol, a car and even the Empire State Building.  

    ii. Explicitly Mislead as to the Source or Content

To determine whether an artistically relevant trademark misleads as to the source or content of the work, the Second Circuit applies the likelihood of confusion test used in evaluating standard trademark infringement claims.  However, in Cliffs Notes, the court held that the likelihood of confusion must be "particularly compelling" to outweigh the First Amendment interests at stake.

In Dallas Cowboys Cheerleaders Inc. v. Pussy Cat Cinema, Ltd, for approximately twelve minutes of the final scene of the porn movie Debbie Does Dallas, Debbie engages in various sex acts while clad or partially clad in the uniform strikingly similar to that worn by the Dallas Cowboys Cheerleaders. The Court found that the uniform depicted in the film “unquestionably brings to mind the Dallas Cowboys Cheerleaders”, making it “particularly compelling” that the public was likely to associate the Dallas Cowboys Cheerleaders with defendants' movie and be confused into believing that the Dallas Cowboys Cheerleaders “sponsored the movie, provided some of the actors, licensed defendants to use the uniform, or was in some other way connected with the production”. In addition, the “defendants advertised the movie with marquee posters depicting Debbie in the allegedly infringing uniform and containing such captions as "Starring Ex Dallas Cowgirl Cheerleader Bambi Woods" and "You'll do more than cheer for this X Dallas Cheerleader." Similar advertisements appeared in the newspapers.

On the other hand, In ESS ENTERTAINMENT v. Rock Star Videos, the court found that the Pig Pen did not explicitly mislead consumers as to the source of defendants' work. Although “the Pig Pen incorporates certain elements of the Play Pen's logo, neither the video game nor any promotional materials for San Andreas contained any explicit indication that the Play Pen's owners endorsed the work or had a role in producing it." 

In Louis Vuitton Malletier S.A. v. Warner Bros. Entertainment Inc., the court held that the defendant’s use did not pass the particularly compelling likelihood of confusion standard. The court felt most audience members would not realize the bag was a fake, because it only appears on-screen for a few seconds. Additionally, the character’s misrepresentations of the bag are a joke within the film that few audiences will take seriously.

Applying these principles, the filmmaker would satisfy the Rogers test. There is no indication the filmmaker’s use explicitly misleads as to the producer or sponsor of the film or that any of the trademark owners approved the use of their brands or products in the film. Whether the brands were randomly or intentionally selected, such as the different brands of alcohol used in a single scene, it would be unlikely to raise in the minds of the viewing public a suggestion of sponsorship or affiliation.  

Indeed, deception is less likely with respect to the brands and products used in the scenes than in the title, where the title of the film incorporates the famous trademark of the manufacturer of frozen treats, Ben & Jerry’s.

E. Names and Titles

In Rogers v. Grimaldi, the Second Circuit held that trademark law does not bar even a minimally relevant use of a celebrity's name in the title of an artistic work where the title does not explicitly denote authorship, sponsorship, or endorsement by the celebrity or explicitly mislead as to content. The court found that the title Ginger and Fred surpasses the minimum threshold of artistic relevance to the film's content. The central characters in the film are nicknamed "Ginger" and "Fred," and these names are not arbitrarily chosen just to exploit the publicity value of their real life counterpart (Ginger Rogers) but instead have genuine relevance to the film's story.

In Twentieth Century Fox Television v. Empire Distribution Inc., the owner of a media enterprise sent a cease and desist notice to Fox television network in connection with the popular television show Empire and the show’s soundtracks, which allegedly created confusion over the “Empire” and “Empire Distribution” marks. Applying the Rogers test, the court found Fox’s use was “clearly relevant” to the plot and location of the defendant’s television show. The court held that the plaintiff’s use was not explicitly misleading, even if there was a danger of some consumer confusion.

Apply these principles, the film’s title Ben and Jerry would pass the Rogers test. The title bears some artistic relevance to the film (the central characters are named “Ben” and “Jerry”, and the film’s title does not explicitly mislead as to who produced, sponsored or endorsed the film.

F. Product Placement, Sponsorship and Branded Content

Product placement is where companies would pay a filmmaker for their brands to be integrated into the film or television program and/or in its marketing. These arrangements effectively provide production financing and an additional source of film revenue. Few big budget movies are made these days without product placement. Doritos, Apple Watch and Mercedes have all appeared in the trailer for Star Wars: The Force Awakens. Heineken signed a reported $45 million partnership to have its beer featured in the James Bond movie, Skyfall. According to a Priceonomics analysis, products placed into storylines can be a lot more successful for brands than traditional advertisements, such as TV ads.

Branded content (also known as branded entertainment) is a form of advertising that uses the generating of content to promote the particular brand which funds the content's production. For example, in the short film The Escape, directed by Neill Blomkamp, produced by BMW Film’s and starring Clive Owen, the movie’s purpose is to draw attention to BMW’s cars.

With the increasing prevalence of product placement and branded content in the movie and television business, a given use could confuse the public. A company can make the argument that their brand appearing in a film would lead people to assume it was product placement.

However, as the court in Mattel, Inc. v. MCA Records, Inc. observed, the pubic would be less likely to be fooled into thinking that any trademark owner would sponsor or endorse a film that portrays its product in a negative light. In that regard, it probably would be unlikely that the public would suspect that the maker of Budweiser beer, for example, has endorsed a movie, where more than one brand of beer is shown, with no particular attention drawn to any, and where the beer is irresponsibly consumed by teenagers.

On the other hand, where a product is depicted positively, isn’t that the purpose of product placement? People who watch the movie will want to go out and buy that brand. In a world where the public increasingly views the appearance of such brands in a movie as product placement, what would render such use “explicitly misleading”? What factors will make a likelihood of confusion “particularly compelling”? How will the courts’ likelihood of confusion analysis affect filmmakers who are without deep pockets?

It will be interesting to see how the courts will continue to balance the constitutional protections of the First Amendment under the Rogers test, with the property rights of trademark holders, to the use of brands and products in movies without chilling filmmakers from exercising protected forms of speech in creative works.

G. Conclusion

In general, it is not necessary to blur the logos and products of brands in films. There are several limitations on a trademark holder’s ability to successfully assert its trademark rights to prevent the unauthorized use of its trademark in a works of art. How the product is portrayed makes a huge difference for trademark owners, but it does not require filmmakers to seek consent for every use of a mark in his film. The motion picture industry would be severely crippled if trademark owners can use their marks to stop real products being shown in films, or even just in films which are not to their liking.

When you do see producers blurring out logos or brand names, it may be because they are trying to avoid an uncertain, lengthy, and expensive trademark litigation between competing parties that have unequal resources. But this can have disastrous chilling effects on artistic freedom. So sometimes it is worth the risk to leave the brands and products in, especially if a particular trademark is central to your character and plot, and if the mark is essential to the message you want to convey in your film.