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]).
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]).
