Trademarks

[2001 Productions]

Since we're on the topic of copyrights, I have a somewhat related question for the gurus.

I know that, theoretically, a production is supposed to obtain permission from a company to feature their trademark. There are, however, many noteworthy exceptions, most recently the Oscar-winning animated short Logorama, which sets an encouraging precedent. Prior to that was The Coca-Cola Kid (one of my favorite movies).

In my current project we used several brand name products in the course of the movie, but usually took care that the logo wasn't featured front and center; e.g., a close-up of a beer bottle on a table was angled so that the label was only partially visible; an insert of a cell phone being dialed was shot such that the manufacturer's logo was upside down and at an angle.

There were, however, many scenes shot in a tavern. Since we used real, working business, there were, of course, neon signs and product posters hanging everywhere. The most blatant and distracting ones were taken down for the shoot, but there were too many to remove them all, and the walls would've looked silly bare. Also, in the scenes where the bartender is featured in close-up, the liquor bottle brands are clearly visible on the rack in the background. It seemed silly and potentially distracting to turn them all away from view, since they wouldn't be arranged that way in a real bar, so we left them. You can also clearly see the VISA and MasterCard stickers by the cash register.

My question is, does anyone have an example of a legal disclaimer I might include in the end credits to deal with this. I've seen them before, along the lines of "products featured in this film are not intended to endorse..." blah blah.

And/or is this the best way to deal with it?

 

[sonnyboo]

A trademark™ is a wholly different thing than a copyright©. Trademarks give the owner a great deal more control over how that is seen and used.

Because of their usage in public places, it is a lot harder for them to maintain and enforce. Usually, if McDonald's is out a car window they don't tend to take action, but it is within their legal rights to do so.

 

[2001 Productions]

That's why I find Logorama so fascinating. Have you seen this? Ronald McDonald is a principal character in it! He's the bad guy, curses and smokes. Used without permission -- and it won an Oscar!

Cue the lawyers!

 

[sonnyboo]

Are you sure it was without permission?

There are parody laws that create an exemption and complication. Since this was clearly a parody he was in the clear on the character, but the LOGOS are trademarked and that's a different story.

The E&O was probably outrageously expensive for this movie.

 

[indietalk]

Trademarks are funny, in that, if you ask for permission they will charge you and arm and a leg, however, if they come to you, they will pay you an arm and a leg for product placement.... this all for the same product in the same scene. It's a game of who contacts whom.

 

[2001 Productions]

Are you sure it was without permission?

Actually, no, I don't know that for sure. I was just going by what the producer said at the Oscars:

"I’m the producer of the film, so I have to thank the 3,000 non-official sponsors that appear in the film. And I have to assure them that no logos were harmed in the making of the project."

But I may have misinterpreted. It'd be interesting to know.

 

[2001 Productions]

Trademarks are funny, in that, if you ask for permission they will charge you and arm and a leg, however, if they come to you, they will pay you an arm and a leg for product placement.

I thought about looking into product placement, but figured since I'm a complete nobody I'd just be wasting my time.

 

[Blade_Jones]

I had a similar situation when I shot a scene inside a liquor store, but an entertainment lawyer told me that it was OK. Imagine if laws worked against the filmmaker in this case. Entire stores would have to be cleared of products, and that's just ridiculous. Anyway I even had a close up of a guy at the counter, with rows and rows of Camel cigarettes clearly right behind him. NOT trademark infringement.

 

[2001 Productions]

Thank you, Blade! Good to hear!

An update on Logorama, quoted in the LA Times, when asked whether permission had been obtained to use the logos, one of the creators said:

"Of course not! The film would've been impossible to make if we had waited for permission.... The film speaks about our current time, and uses the the graphic language of our time. It's a kind of time-sensitive snapshot, because in 20 to 30 years, when all of these logos will have been redesigned, the film will be obsolete. So we at H5 said to ourselves that we didn't have to ask permission since this isn't a commercial movie but rather one whose goal is to show the freedom of expression."

Interesting, no? Here's the link to the full interview:

http://latimesblogs.latimes.com/cul...n-firm-h5-eyes-oscar-glory-with-logorama.html

 

[sonnyboo]

I had a similar situation when I shot a scene inside a liquor store, but an entertainment lawyer told me that it was OK. Imagine if laws worked against the filmmaker in this case. Entire stores would have to be cleared of products, and that's just ridiculous. Anyway I even had a close up of a guy at the counter, with rows and rows of Camel cigarettes clearly right behind him. NOT trademark infringement.

Take a look at CLERKS 1 versus 2.... in the original, they made some changes of product logos, etc. but only when they were close up. In CLERKS II, they did 100% their own fictitious products, especially the NAILS cigarettes.

Technically, if they TRADEMARK owner wanted to stop your movie from showing their products, they can and it's within their rights. Will they? Most likely not.

 

[2001 Productions]

In CLERKS II, they did 100% their own fictitious products, especially the NAILS cigarettes.

Interesting. I haven't seen the movie, but I wonder how much of that was for legal reasons versus just because it was an opportunity for humor (and they had the budget to pull it off). NAILS brand cigarettes is pretty damn funny!

 

[sonnyboo]

If you didn't have to pull every single item out of a store and then replace them with their own... and paying an art department to come up with every single item?

Just for laughs? I'm sure the studio writing the checks didn't find that humorous..


No, it's a standard practice to lower the cost of E&O insurance. Quentin Tarantino always has "Red Apple Cigarettes" and "Jack Rabbit Slims" in his movies (Jack Rabbit Slims has radio ads and posters in his other movies, etc.). It is always a budgetary concern with real movies.

 

[2001 Productions]

Was it shot in a real store? I figured for the second one they'd have built a set.

At any rate, your point is well taken. Just thinking out loud, I wonder why - considering K Smith's success - they didn't do product placement. Seems like an ideal opportunity. Course, if the subject matter was akin to the first one, maybe brands don't exactly covet that sort of association.

Amusing anecdote: I was on the set of The Goonies, lo those many years ago. The crew was setting up a dolly move shooting out a window where the opening car chase was going to pass by on the street outside. Don't know if you've seen the movie, but in this shot one of the kids is so caught up in the action he smears his pizza and milkshake all over the window in question.

Anyway, the location had been scouted months before, and in the intervening time a McDonalds restaurant had been built nearby. The producer/director, Richard Donner, showed up on set, took one look out the window and EXPLODED, screaming obscenities with his booming New York stage actor voice. The crew were diving for cover.

The DP, Nick McLean, came running to see what was wrong. Problem was, the McDonalds golden arches were clearly visible in the background of the shot, no way to avoid them (and, of course, no such thing as digital removal back then), and the production had an exclusive endorsement deal with Burger King. Arrangements had been made to block traffic on a state highway in order to get the shot, stunt drivers and vehicles were involved, it was a logistical nightmare.

The DP looked around, spied a bulletin board, pulled a flier off of it and taped it to the window. Donner calmed down and said, "That'll do it?" The DP assured him it would, so they went ahead and got the shot.

Of course, if you watch the final cut of the movie you'll see the flier isn't in the shot and the golden arches are, in fact, visible in the background. Your attention isn't on them, though, so it wasn't a big deal. McLean was just trying to assuage him.

 

[sonnyboo]

Was it shot in a real store? I figured for the second one they'd have built a set.

At any rate, your point is well taken. Just thinking out loud, I wonder why - considering K Smith's success - they didn't do product placement. Seems like an ideal opportunity. Course, if the subject matter was akin to the first one, maybe brands don't exactly covet that sort of association.

Yes, shot in the same QUICKSTOP as always, but even if they built a store, they'd put their own products in.

As for why, no brand wants to be associated with a movie with that many obscenities and potential protesting of their products. Everything is too politically correct these days.

 

[grinner]

When a company puts their POS in a public place, they want it to be seen. Hence the expense of creating the neons, ect. You don't need a release for having it the background. You should if it plays into the script or becomes a selling point to the piece being created.

 

[Cracker Funk]

I had a similar situation when I shot a scene inside a liquor store, but an entertainment lawyer told me that it was OK. Imagine if laws worked against the filmmaker in this case. Entire stores would have to be cleared of products, and that's just ridiculous. Anyway I even had a close up of a guy at the counter, with rows and rows of Camel cigarettes clearly right behind him. NOT trademark infringement.

REALLY?! I've got a scene that was shot in a convenience store, so there are logos everywhere. I had been planning to rotoscope my talent to create a really shallow depth of field, but I've been putting it off because rotoscoping is for the birds. So, what makes it legal for me to have these logos that are in the convenience store?

I have another scene in which a character is wearing a Chicago Cubs t-shirt. I'm assuming this would be a completely different matter, and that this is trademark infringement, no?

 

[Blade_Jones]

So, what makes it legal for me to have these logos that are in the convenience store?

I don't know. That's just what a lawyer told me. There was even one shot that had rows and rows of Camel cigarettes clearly visible behind the clerk. My entertainment lawyer confidently said "that's fine". There was never any dialog reference to the cigarettes (ex- "I'll take a pack of Camels please").

I have another scene in which a character is wearing a Chicago Cubs t-shirt. I'm assuming this would be a completely different matter, and that this is trademark infringement, no?

I don't know about that. There's a famous case involving someone smoking pop and wearing a Dodgers baseball cap. The case involved a print ad. The Dodgers weren't happy about the unsavory association.

Instead of set decoration, now you're drawing attention to the product. There might be some confusion as to whether or not the Cubs have endorsed your movie. I don't know.

 

[Cracker Funk]

Yeah, it's especially bad that he is wearing the Cubs t-shirt while in the midst of burglaring a house. I've been kicking myself so hard for that one. It's amazing the things that can slip by, when shooting a movie with a two-man crew. Screw-ups like this are one of a million reasons why filmmaking really requires a large crew. I think I'll have to blur it out; here's to crossing my fingers that it won't be annoyingly distracting.

Thanks for sharing your experience. I'm going to go ahead and leave the convenience store scene as-is. Pepsi and Coke and Vitamin Water aren't watching my movie, anyway!

 

[Jack Lynt]

I think I'll have to blur it out; here's to crossing my fingers that it won't be annoyingly distracting.

Oh, Man, don't do that unless you have to. There has to be a concrete, reliable, authoritative answer to that question. Is there an entertainment lawyer up there in the Premiere Forum?

Hey, I have one book on law and photography...I got it out trying to find any relevant info. I have been wondering if the laws and rights that apply to still photographers apply to filmmakers. The book is Legal Handbook for Photographers: The Rights and Liabilities of Making Images, 2nd ED. by Bert Krages, Esq. It's a great book, and I recommend it muchly. He writes that trademark infringement is usually decided by whether the use of a trademarked image is likely to cause confusion "regarding the affiliation of the trademark to the owner." That seems to be in agreement with what Blade_Jone's lawyer said about filming in a bar or supermarket. But would a reasonable person conclude that the Cubs had sponsored or endorsed CF's use of the image or the t-shirt? If so, maybe that doesn't bode well. But I'm thinking that's not likely...so, good, right? On the other hand, Krages goes on to describe "laws that protect trademarks from being tarnished or diminished in value even if there is no possibility of confusion on the part of consumers." He says it applies when the image is used in a commercial context, not for editorial or commentary uses or for news reporting.

Okay, I know I'm left in doubt about what precisely that might mean for you and other filmmakers. Sorry! Maybe it does help to describe the legal terrain a little?

If there's an entertainment lawyer or one of you experienced, hard-bitten filmmakers in the store, please report to this thread.

 

[Michael Allen]

This is by Michael Donaldson who's an entertainment attorney.

The important part of a trademark is what the mark represents. A trademark represents the source - it identifies who made the goods you are buying or who provided the services you are enjoying. So the big question remains, "Can I use someone else's trademark in my film?"

The good news is that as a filmmaker, your right to include a trademark in your film is clear. You have a right to include the trademark in your film as long as the trademark or the product bearing the trademark is used as it was intended to be used without any consequences of its use being abnormal or out of the ordinary. Therefore, as long as a filmmaker is using a trademark or logo as it was intended to be used, and do not disparage or tarnish the trademark or logo in your film, you may include such trademark or logo without asking permission to do so. Simple, right?


Like any other rule, there is always one caveat. You as a filmmaker do not have the right to commit trade libel, not even in the name of entertainment. Trade libel occurs when a product or service is falsely accused of some bad attribute. For example, if you showed someone in your film eating a McDonald's hamburger, then that person immediately keeled over because the food was poisonous, that would libel the trademark.

Another major question that arises sounds something like this, "So if I can use a trademark in my film in a non-libelous manner, why would I want to pay a license fee to clear it?" While the law does not require the filmmaker to obtain permission to use these items in film or television shows, there may be some good business reasons to do so anyway. For instance, broadcast television is an advertiser- supported medium. Therefore, if you used Coca-Cola labels on every beverage, and these beverages are prominently visible on the television screen, you have essentially given Coca-Cola free airtime.


I do not think the network broadcasting your show would be too thrilled giving away free airtime. Additionally as a filmmaker, you may potentially create more than one film. By showing goodwill and possibly paying or asking permission to use a trademark in your current film, the trademark holder may be willing to support, or even finance a portion of your project (assuming of course the trademark holder liked the use of their product or trademark in the film). So while permission to use a logo or trademark may not always be necessary, it might make good business sense to get permission anyway.

Michael C. Donaldson is an entertainment attorney who has been fighting for independent filmmakers for over thirty years. His book Clearance and Copyright, the third edition of which was just released, is used in over 50 film schools and has become the standard reference book for the industry. Visit: [http://www.clearanceandcopyright.com]