Entertainment Law Resources
​
  • HOME
  • LAW PRACTICE
    • Mark Litwak
    • Glenn Litwak
    • Pete Wilke
  • ARTICLES & VIDEO CLIPS
    • Video & Audio Clips
  • STORE
  • RESOURCES
  • BLOG
  • CONTACT
  • FAQ
  • SITE MAP
  • CREATIVE ACCOUNTING REVISITED
  • CREATIVE ACCOUNTING REVISITED
  • New Page

Trademarks in Films

12/6/2024

0 Comments

 
A producer does not always need a release in order to show a product in a film. Assuming you don’t disparage the product, or misleadingly use its trademark in a manner that implies the manufacturer has endorsed or sponsored your film, a manufacturer would find it difficult to prevail in a lawsuit simply on the grounds that its product was shown without consent.
 
From a practical point of view, if a product is momentarily shown on the screen or is not identifiable, a producer may not bother to obtain a release.[1] A director who shoots a scene in a supermarket is not going to obtain releases for every product in the background. Still, a release never hurts, even if not legally required. Remember that distributors and insurance carriers may want to see releases for every identifiable product, regardless of legal precedent.
 
There is little case law concerning the unauthorized use of products in motion pictures because many disputes are settled out of court. Attorneys for product manufacturers have claimed that a non-approved use of a product in a motion picture, even if non-disparaging, could be a violation of the Lanham Act or product’s trademark. However, courts tend to disagree, finding that trademark law does not entitle the owner of a trademark to prevent any display of a trademark when it is communicating ideas or expressing points of view.
 
For example, in Wham-O, Inc. v. Paramount Pictures Corp.,[2] the manufacturer of the Slip ’n Slide toy slide brought suit and sought a temporary restraining order against Paramount Pictures for its unauthorized use of the toy in the movie Dickie Roberts: Former Child Star.
 
In this movie David Spade plays a former child star seeking to reenact the childhood experiences he missed while busy working in the entertainment industry. In an amusing sequence, the character misuses the toy slide to comic effect and suffers injuries. Paramount claimed the film used the Slip ’n Slide to convey an image of childhood fun. Wham-O argued that in a world where consumers know about product placement, “the viewing public has come to expect, that trademarked products featured in movies are there because, in fact, the trademark owner is associated with or has endorsed the movie through such product-placement arrangements.”[3]
 
The court found that Wham-O was not likely to succeed on the merits of the case because Paramount’s use of the product did not create an improper association in consumers’ minds between the product and the trademark.[4]

In the case of Hormel Foods Corp. v. Jim Henson Productions, a new puppet led to a lawsuit. Hormel Foods, the maker of Spam canned meat, sought to enjoin the release of the movie Muppet Treasure Island, alleging trademark infringement and dilution[5] after the creators of the Muppets, hoping to generate laughter, named a wild boar puppet character “Spa’am.” Hormel’s expert testified that the Spa'am character was unappealing and will lead to negative associations on the part of consumers because he has small eyes, protruding teeth, warts, a skull on his headdress, is generally untidy, and speaks in a deep voice with poor grammar and diction.[6] However, the court held that Hormel could not use federal trademark laws to enjoin what was a joke at its expense.[7]
 
Trademark law does not entitle the owner of a trademark to quash an unauthorized use of the mark by another who is merely communicating ideas or expressing points of view. “[T]he trademark owner does not have the right to control public discourse when the public imbues his mark with meaning beyond its source-identifying function.” [8]
 
Keep in mind that most manufacturers are pleased to have their product featured in a motion picture unless it is shown in a derogatory light. It’s free advertising.
 
[1] You should always have a lawyer review your script before production to determine what releases may be required.
[2] Wham-O, Inc. v. Paramount Pictures Corp., United States Court of Appeals for the Ninth Circuit, Appeal No. 03-17052, Appellant’s Reply Brief, May 18, 2004.
[3] Wham-O, Inc. v. Paramount Pictures Corp., United States Court of Appeals for the Ninth Circuit, Appeal No. 03-17052, Appellant’s Reply Brief, May 18, 2004.
[4] Wham-O’s trademark infringement and dilution claims were also rejected and its request for injunctive relief was denied Wham-O, Inc. v. Paramount Pictures Corp., 286 F. Supp.2d 1254 (N.D. Cal. 2003).
[5] Trademark law does not entitle the owner of a trademark to quash an unauthorized use of the mark by another who is merely communicating ideas or expressing points of view. “[T]he trademark owner does not have the right to control public discourse when the public imbues his mark with meaning beyond its source-identifying function.” Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900, 63 U.S.P.Q.2d (BNA) 1715 (9th Cir. 2002), cert. denied, 537 U.S. 1171, 123 S. Ct. 993, 154 L. Ed. 2d 912 (2003) (citing Anti-Monopoly, Inc. v. Gen. Mills Fun Group, 611 F.2d 296, 301 [9th Cir. 1979]). (Hormel Foods Corp. v. Jim Henson Prods. (S.D.N.Y. Sep. 22, 1995) 1995 U.S.Dist.LEXIS 13886.)
[6] (Hormel Foods Corp. v. Jim Henson Prods. (S.D.N.Y. Sep. 22, 1995) 1995 U.S.Dist.LEXIS 13886, at *5.
[7] Hormel Foods Corp. v. Jim Henson Productions, Inc., (1995) 1995-2 Trade Cases P 71,154, 36 U.S.P.Q.2d 1812.
[8] Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 900, 63 U.S.P.Q.2d (BNA) 1715 (9th Cir. 2002), cert. denied, 537 U.S. 1171, 123 S. Ct. 993, 154 L. Ed. 2d 912 (2003) (citing Anti-Monopoly, Inc. v. Gen. Mills Fun Group, 611 F.2d 296, 301 [9th Cir. 1979]).

 

0 Comments

Your comment will be posted after it is approved.


Leave a Reply.

    Archives

    February 2025
    December 2024
    September 2024
    July 2024
    April 2024
    February 2024
    January 2024
    December 2023
    October 2023
    September 2023
    August 2023
    July 2023
    June 2023
    May 2023
    April 2023
    February 2023
    January 2023
    November 2022
    September 2022
    July 2022
    June 2022
    April 2022
    March 2022
    January 2022
    December 2021
    August 2021
    July 2021
    May 2021
    March 2021
    December 2020
    November 2020
    August 2020
    July 2020
    June 2020
    May 2020
    April 2020
    March 2020
    December 2019
    October 2019
    September 2019
    August 2019
    July 2019
    June 2019
    April 2019
    March 2019
    February 2019
    January 2019
    December 2018
    October 2018
    September 2018
    August 2018
    May 2018
    March 2018
    January 2018
    December 2017
    August 2017
    April 2017
    March 2017
    January 2017
    December 2016
    November 2016
    May 2016
    April 2016
    March 2016
    February 2016
    January 2016
    November 2015
    October 2015
    September 2015
    August 2015
    July 2015
    May 2015
    April 2015
    March 2015
    December 2014
    November 2014
    July 2014
    May 2014
    April 2014
    March 2014
    January 2014
    November 2013
    October 2013
    September 2013
    August 2013
    July 2013
    June 2013
    May 2013
    March 2013
    February 2013
    December 2012
    November 2012
    October 2012
    September 2012
    August 2012
    May 2012
    April 2012
    February 2012
    December 2011
    October 2011
    September 2011
    July 2011
    June 2011
    April 2011
    February 2011
    January 2011
    December 2010
    November 2010
    October 2010
    September 2010
    July 2010
    June 2010
    May 2010
    February 2010
    December 2009
    November 2009
    October 2009
    September 2009
    July 2009
    June 2009
    January 2009

    Disclaimer: The information in this blog post (“post”) is provided for general informational purposes only and may not reflect the current law in your jurisdiction. No information contained in this post should be construed as legal advice from the individual author, nor is it intended to be a substitute for legal counsel on any subject matter. No reader of this post should act or refrain from acting on the basis of any information included in, or accessible through, this Post without seeking the appropriate legal or other professional advice on the particular facts and circumstances at issue from a lawyer licensed in the recipient’s state, country or other appropriate licensing jurisdiction.
    For older posts, please visit The Litwak Blog.
    Join our Email Newsletter list
    Email Newsletter icon, E-mail Newsletter icon, Email List icon, E-mail List icon
    For Email Newsletters you can trust
Picture
Home
Law Practice
Store
Articles & Video Clips
Resources

Blog

Contact
FAQ
Site Map

LAW OFFICES OF
MARK LITWAK & ASSOCIATES

201 Santa Monica Blvd.
Suite 300
Santa Monica, California 90401
Phone: 310-859-9595
[email protected]


Follow us on
Join our Email Newsletter list
Email Newsletter icon, E-mail Newsletter icon, Email List icon, E-mail List icon
For Email Newsletters you can trust
Copyright  2013-2025, Mark Litwak. All Rights Reserved.│ Legal Disclaimer │ Terms of Use & Copyright    │  Privacy Policy