Q: The trailer for my first film was recently posted online. A brief scene in the movie (which also appears in the trailer) was filmed at a local restaurant parking lot, which I never asked permission to use.
Now, the restaurant’s owner, who had no knowledge of the film prior to the trailer’s release, says he’ll sue me unless the restaurant receives some sort of compensation. Does he have a case?
It appears that the restaurant owner believes that he has the right to compensation because his property and perhaps the trademarked name of his restaurant appear in your film. In all likelihood, that claim would fail. Obviously, a property owner has no right to compensation merely because his parking lot appears on screen. Imagine if a moviemaker filming in Times Square needed a license from every building, restaurant and store owner? This is untenable and not the law.
Similarly, although trademark owners often believe that their consent is required in order to depict their mark in a film, that is generally false as well. I would assume that any images of the name of the restaurant in your film are brief and just happenstance of the location. Such “incidental” use of a trademark should not give rise to a claim. The depiction of a mark in a film should only constitute trademark infringement where it is substantial enough that a reasonable viewer is likely to be confused as to the mark holder’s affiliation with, or sponsorship of, the movie. This “likelihood of confusion” is the standard for trademark infringement.
There are obvious examples where the use of a trademark in a film is so pervasive that the consuming public assumes some type of association between the mark and the film—Cast Away, with its blatant advertising of Fed Ex, jumps to mind. But if a trademark is depicted on screen only incidentally because the film happens to be shot in a location that has storefronts, billboards, etc., that is not likely to cause confusion and should not be adjudged as infringing. The many films showing scenes in Times Square or on the Las Vegas strip are good examples. It is almost impossible to have a scene in either of those locations without inevitably showing some trademarks. But so long as the trademarks are not depicted or used in such a way that consumers could believe there is a sponsorship of the film by that mark holder, there is no trademark infringement.
If your restaurant owner is not persuaded by the foregoing and is so litigious that he insists upon pursuing this trivial matter, the claim you should be more concerned with is trespass. Even though the restaurant is a public accommodation that invites guests—which invitation is a consent to the trespass—a claim can be asserted when an invitee exceeds the scope of that consent. Whether or not a trespass claim could be asserted depends on the circumstances. Either way, it is difficult to imagine what damages the restaurant owner has suffered because of the trespass, so one would hope that he could be persuaded not to assert this claim. MM
Gregory Korn is a Partner at Kinsella Weitzman Iser Kump & Aldisert, a high-profile, L.A.-based entertainment litigation firm, and specializes in the areas of entertainment and intellectual property litigation. He has represented actors, musicians and production companies in a variety of contract, trademark and copyright matters. Korn has also litigated numerous real estate and trust matters, including the successful representation of a trustor in a series of appeals before the Ninth Circuit Court of Appeals and California Court of Appeal. In 2007, Korn was named a “2007 Southern California Rising Star” by the publishers of Los Angeles Magazine. Korn is a graduate of the University of California, San Diego (B.A. 1996) and the UCLA School of Law, Order of the Coif, (J.D. 1999). Prior to practicing, Korn clerked for the Honorable Stephen V. Wilson, United States District Judge for the Central District of California.
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