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
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at the end of the year. 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
Nicely well-explained. There's a takeaway from this helpful video I hope isn't missed: You can be right and still have a very bad day. All those court case examples where the defense prevails were still court cases.