Q: I’m writing a pilot for a TV workplace comedy and my characters work for a low-rent competitor of a real fast food chain. Can I mention the real chain without getting sued?
OK, everyone, say it with me now: “It depends!”
How you reference an existing brand will dictate whether you become liable for trademark infringement or public disparagement of the brand, but there are carve-outs in trademark law that allow you to fairly reference an existing trademark without getting into trouble. Yes, you heard me right: Trademark fair use exists!
Section 1115(b)(4) of the Lanham Act states:
“The use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin….”
Typical legal gobbledygook. What this is really saying is that you can mention another party’s trademark if you’re doing it in good faith and in a way that isn’t intended to piggyback on the commercial success of the mark. How? Glad you asked. There are three main ways.
1. Reference the Mark In a Descriptive Way
Some trademarks are known as “descriptive marks” because they use existing words and phrases to describe a characteristic of the product or service. Best Buy, for example, is a descriptive mark because it describes the quality of their pricing: You will literally get the best buy in our stores.
A hallmark of descriptive marks is that the words used in the mark have a primary meaning. Those words are then refashioned to have a secondary meaning, thus creating the mark (i.e. “best” and “buy” had meanings before Best Buy appropriated them to mean something else). The Lanham Act allows you to reference a trademark if you’re using the primary meaning rather than the secondary, commercially-protected meaning. Just because Apple is a registered trademark doesn’t mean you can’t still use the word “apple” to sell apples and other apple-related products. And you can fairly state that your apples are a “best buy” in the marketplace without infringing on the corporate name. And just because Donald Trump registered the phrase “you’re fired!” for his erstwhile NBC reality-show doesn’t mean you can’t say “you’re fired!” to under-performing employees of your apple company.
Apple, Best Buy, and “you’re fired!” took on secondary meanings because of the way they were used in the marketplace. But as long as you stick with the primary meaning of the words, you’re protected by fair use.
2. Reference the Mark in a Comparative Way
In advertising, comparisons between brands is a key factor in showing what your product or service can do. The Lanham Act permits advertisers to reference a brand by name for the sake of comparing one brand, service or product against a competing one, as long as the ad isn’t deceptive. There are certain First Amendment implications to preventing this type of use, and it also promotes healthy competition, allowing consumers to make informed choices.
This exception is pretty useful, but it applies mostly to advertisers. But that’s not to say you can’t utilize it when the time comes.
3. Reference the Mark in a Nominative Way
In my experience, both as an attorney and as a TV producer, this last one is by far the most useful for artists and filmmakers alike. Back in 2006, I was on a shoot for a Court TV show in Louisville. Our camera guy filmed B-roll out of the window of a moving car. Later, when the show was edited and the shot was used, our general counsel instructed us to blur the shot into oblivion because half a dozen famous logos were seen passing in the background: KFC, Starbucks, Kohls, Target, Chili’s, you name it. The request struck me as nonsensical, but we did it anyways because he seemed scared of getting sued. Even today, if you watch a reality show, especially if it’s on the E! Network, pay close attention to all of the logos that get blurred out. That’s a producer who is afraid of being sued and who doesn’t know about trademark fair use.
When you refer to the owner of a mark or their goods/services without attempting to use the actual mark for its commercial appeal, that’s considered a nominative use. Simply referring to the existence of Burger King doesn’t mean that you’re trying to appropriate the mark or convince others that Burger King has endorsed you. Likewise, having a character drink a Coke on camera doesn’t imply sponsorship or endorsement by the Coca-Cola Company. With branding and content staring at us from every angle, to prevent all uses or mentions of any brand simply because permission wasn’t given creates a dangerous slippery slope. As this blog succinctly points out:
“[A] great deal of useful social and commercial dialogue would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademarks.”
If this exemption didn’t exist, many content creators would be locked in perpetual litigation. Back in the ’70s and ’80s, you saw this fear play out firsthand if you ever watched a sitcom. How often did you see a character take a swig from a generic can of Cola or eat from a box of Cereal O’s? Product placement didn’t exist at the time and the networks didn’t want to anger any current or potential sponsors. Things have certainly changed in the last 10 years. Yeah, if Leonard on The Big Bang Theory drinks a can of Diet Coke, there’s probably a product placement deal in place between Coca-Cola and CBS, but even if you’re making a small indie movie where you can’t get that permission, it’s OK. You can still use the product. And that makes sense, doesn’t it? This is the world we live in now. Branding is everywhere; it’s inescapable. It doesn’t make sense to force artists and filmmakers to constantly shell out huge licensing fees to simply acknowledge the existence of a brand.
In a recent case, a federal court in Kentucky dismissed a lawsuit by several horse racing track owners and jockey clubs against Encore Racing Based Games, a video game company that identified those race tracks by name to describe where actual historical horse races took place. According to the court, Encore was “fully within their rights to describe where an event took place in their wagering system without implying the owners of the racetrack are sponsoring the game…even when the location described is most commonly conveyed using a registered trademark….”
This is the way it should be.
As with everything I write here, there are always exceptions upon exceptions upon exceptions. All cases are fact-specific and even if your situation seems close to something I’ve mentioned above, you should always talk to an intellectual property lawyer in person. But rest assured, trademark fair use exists and you can use it. MM
Gregory R. Kanaan, Esq. is a New England-based attorney representing artists, filmmakers and designers in Massachusetts and New York. His practice focuses on entertainment and art law, as well as intellectual property issues. He has resolved disputes involving copyrights, publicity rights, trademarks, and contractual disputes for a wide range of independent filmmakers and design professionals. Prior to becoming an attorney, Mr. Kanaan was a television producer, creating documentaries and series for The Discovery Channel, Court TV, TLC, and A&E, among others. When not practicing law, Mr. Kanaan writes for his blog, The [Legal] Artist, which aims to educate creative professionals on the legal issues that affect them most.
The answers to legal questions provided here are for general education and information purposes only, and are not legal advice or legal opinions. The information provided in this article is not intended to create a lawyer-client relationship between Mr. Kanaan and a reader.