Aditya Ezhuthachan is an attorney focused on entertainment law with Beverly Hills-based Pessah Law Group. In this column, he addresses what, if any, permissions a filmmaker needs when using brand names in a film, or portraying real businesses. —M.M.
Filmmakers frequently face questions about real-life products, company names, or other types of brands that almost inevitably make their way into their films. For instance, are they allowed to show products or name brands? Does it matter if the brand or company logo isn’t visible or identifiable?
What if the filmmaker intends to feature the product in the story? What if its inclusion is essential? On the flipside, what if the brand or logo’s appearance is unintended but unavoidable, due to a particular filming location?
This spiral of questions ultimately leads to a dreaded one: Do I need permission when using brand names in a film?
As with most legal analysis, the answer starts in a frustrating place: It depends.
Attorney Aditya Ezhuthachan on Whether You Need Permission When Using Brand Names in a Film
Narrowing down these good questions to ones most pertinent to filmmakers and their attorneys is not obvious or necessarily intuitive. But a wise place to begin is to start by asking two initial questions: First, is the product used or the brand portrayed in the same way that it is ordinarily used or portrayed in real life? And second, can the depiction in the film be seen as negative by the brand or maker of the product?
This year, HBO’s The White Lotus featured a character who faces arrest for a financial scheme. While wearing a sweatshirt for his beloved alma mater, Duke University, he considers suicide by handgun and fantasizes about killing family members. A Duke official issued a statement saying the show did not have permission to use the school’s registered trademark and added that it “creates confusion and mistakenly suggests an endorsement or affiliation where none exists.”
The White Lotus example raises what is actually at play here: trademark. The United States Patent and Trademark Office (USPTO) website describes a trademark as “any word, phrase, symbol, design, or a combination of these things that identifies… goods and services.”
It tells the public at large (i.e., potential consumers) that the trademark owner is the source of these goods or services, and so the trademark protects the goodwill that the owner has built up over time in the eyes of the public. Technically speaking, a trademark protects the public (as the holder of that goodwill) from a third party infringing on the trademark, causing confusion as to the source of goods and services or tarnishing that earned goodwill.
But films and television shows are not creating competing goods or services — so is trademark infringement an issue? It can be, if the use causes confusion about the source or sponsorship of the film or the product depicted.
In one famous case, Hormel Foods sued Jim Henson Productions, the producers of Muppet Treasure Island, because of a character named Spa’am, a wild boar who serves as chief of an island of pigs. Hormel makes Spam, the canned product made mostly of pork shoulder and ham. Ultimately, the court found that The Muppets were known for this sort of parody, so audiences and consumers would not be confused as to the source of any goods or mistakenly believe there was an endorsement or sponsorship involved.
But two related protections of trademark law can also come into play: trade libel and trademark dilution via tarnishment. Trade libel is a type of defamation (a.k.a. slander or libel) that involves a false statement of fact made to a third party that damages one’s reputation. In the White Lotus example, Duke would have a hard time proving that there was a false statement: The sweatshirt serves as clothing. The quality of the product is not brought into question.
Trademark tarnishment, on the other hand, requires a lower threshold of proof, since a plaintiff does not need to prove a false statement, just harm to the trademark’s reputation. Hormel also brought a claim of trademark tarnishment, but the court concluded that parody alone was not sufficient to find tarnishment. Instead, the goodwill is tarnished through portraying the trademark “in an unwholesome or unsavory context…”
A seminal case in the establishment of the concept of tarnishment involved the Dallas Cowboys Cheerleaders prevailing in an action against the owners of a theater exhibiting the pornographic film, Debbie Does Dallas, in which the lead actor performs sexual acts in a uniform strikingly similar to that of the iconic cheerleading squad. Tarnishment was found (along with trademark infringement) due to the association of the professional cheer team with the adult content.
So, if a product is used, or a brand portrayed, in the same way that it is ordinarily used or portrayed in real life, and in a manner where the use or portrayal cannot be seen as negative, is a filmmaker safe from a potential lawsuit? Not necessarily. As longtime writer of this column David A. Pierce used to say, “All someone needs to bring a lawsuit is the filing fee and directions to the courthouse.”
More Details on Using Brand Names in a Film — and Product Placement Opportunities
Some litigants will try their luck to protect their trademark even if there’s a slim chance of success. That’s why an entertainment attorney may still suggest avoiding the use of a product, or reaching out to the owner of the trademark to get permission to use it.
In my own practice, a filmmaker client was planning to film a scene where a popular brand of multi-tool was used to stab an attacker. The filmmaker argued that since the heroine is saving herself from an evil villain with the help of the tool, the association could be positive. After our discussion though, the client sidestepped the issue by having the heroine use the tool without the brand being identified.
Another filmmaker client reached out to a university to film on campus, since the script required the location. The filmmaker was a bit nervous, because in the script, the main character refers to the school as snobby and pretentious. The filmmaker was ready to dial it back — but the school granted permission. Asked if the snobby and pretentious line was OK, school officials simply said it was their favorite part.
Reaching out to a trademark owner can sometimes lead to a positive discussion about product placement — not just a free or reasonably priced license. But product placement can lead to creative input, which can be a hassle. I recall an anecdote about a car that was provided to an action movie, with the stipulation that the macho hero drive the company’s nice, sensible vehicle. The director balked that the car basically wasn’t cool enough — so a rival character owned it, but the hero stole it, creating an unexpected comic beat that enhanced the film.
Please note that the information presented here about using brand names in a film is meant to be educational in nature and provide a broad overview of the topic discussed. Each real-life example and lawsuit discussed here involved additional causes of action or details that required deeper analysis. So filmmakers should always consult with an experienced entertainment lawyer in order to be aware of the risks their projects may encounter.
Got a film-related legal question? Email Aditya Ezhuthachan at [email protected].
And you can learn more about Pessah Law Group here.
Main image: Courtesy of Shutterstock