I. Concerns and questions from filmmakers

A common ongoing concern of filmmakers is whether and to what extent a trademarked image may be included in a film. Questions abound in the film community about whether someone’s logo can be used in the film, what if any is the difference, if any,  if it is filmed from a public place, and what about famous public buildings? Filmmaking message boards often include robust discussions about the concept of product placement and its role in independent films. In these technologically advanced days, the question of whether YouTube may be used to advertise or update progress of a film, and whether trademarks can be included in trailers uploaded to that site. You cannot take anything you want off the internet, and owners of trademarks and other intellectual property will be watching to make sure their materials are not uploaded to the internet without their permission. The items on the internet may be there with permission, though you will not be able to tell that from viewing the photograph or clip. It also may have been taken and uploaded without permission, and the uploader may have already gotten a threatening letter from a lawyer representing the material’s copyright holder. It is a rare case that programs or clips on the internet are in the public domain, and the risk of not being able to obtain insurance or distribution for your film is not worth taking the material. In addition, YouTube now has an automatic video monitoring service called “Claim Your Content” which will automatically identify copyrighted material and remove it from its site.[1] You may check back to see the clip you took from YouTube and find that it has been removed, which is a pretty good indication it was uploaded without permission. Trademark holders are especially diligent in ferreting out uses of their mark in an unfair way to bolster marketing of a film or other product, associating unrelated products with their goodwill and benefiting from their works without paying for them.

A filmmaker must be aware of the laws regarding the unauthorized use of famous trademarks in films, as well as case examples of what can happen if it is done.

II. Federal and State Trademark and Unfair Competition laws

Protection of trademarks and service marks is governed by the federal Lanham Act, which is part of Title 15 of the United States Code, passed in 1946 during the presidency of Harry Truman. It prohibits activities such as false advertising and trademark infringement and prevents use of a mark that would create consumer confusion about the origin, sponsorship, or approval of their goods by another person,[2] or that misrepresents the source of the trademarked product or service in commercial advertising.[3] The mark owner is not required to share its widespread reputation and goodwill with the infringers using a similar mark.

Unlike the subjects of copyright or patents, trademarks are intended to be used in commerce to identify goods.  As long as they are used on the product, protection of the mark, either a trademark for goods or a service mark for services, protection of them does not have a time limit. They do have a requirement of continuous use, and can be deemed abandoned by lack of use. Depending on the class of goods, the use of a trademark or service mark can be worldwide or in a certain geographical area. With the global economy and worldwide sites such as YouTube and Facebook, the geographical area of use of a mark has been expanded. Filmmakers are no longer insulated from infringement suits by their geographical distribution limitations, since their film is likely to be viewed by people in the areas where the trademark is used.

Two causes of action are available to owners of trademarks who want to protect against infringement of their mark. The first is deception, or misleading use of a mark, or even outright counterfeiting of the mark, causing the possibility of consumer confusion, which is the main harm envisioned by the Congress when the trademark laws were enacted. Some states, including Ohio, have criminal statutes prohibiting counterfeiting of trademarks.[4] The civil trademark laws were designed to protect the makers of products using a famous mark from others “passing off” their goods as those of the trademark owner, especially when they consisted of inferior goods. The Act  prohibits any person from using on or in connection with any goods in commerce any “ … word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact” to mislead or deceive people about the affiliation, association or connection with a person or product, “ … or as to the origin, sponsorship or approval of his or her goods, services or commercial activities by another person, or in commercial advertising or promotion misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities”[5]  The Lanham Act defines “famous mark” as “…widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.”[6] This false association not only hurts the market for the trademark owner’s goods, but had the potential to harm the reputation of the trademark owner and his goods. The second cause of action that trademark owners use against infringers is the concept of dilution, which has two different ways a mark owner can be harmed. The first is by using the mark on different goods from different sources so that the strength of the mark is diminished by overuse and its distinctiveness is eroded, called “blurring”[7]. The other type of dilution is by tarnishment of the mark, using it in inferior or in an unwholesome or degrading context that harms the reputation of the famous mark.[8] Under the Act, neither type of dilution requires actual or likely confusion, competition, or actual economic injury.[9]

State anti-dilution statutes were the main source of protection for owners of trademarks, until Congress in 1996 amended the Lanham Act to adopt the Federal Trademark Anti-Dilution Act. The state laws were considered too varied and difficult to enforce uniformly against infringers who had goods in commerce across the country. The state anti-dilution laws formerly had a different standard of proof for dilution, requiring only the “likelihood of dilution” rather than “actual dilution”.[10] State statutes also do not contain an exemption for noncommercial use.[11] When the Federal Trademark Anti-Dilution Act (FTDA) was adopted, it defined dilution as “the lessening of the capacity of a famous mark to identify and distinguish goods.”[12] Another amendment in 2006 lessened the burden of proof for the mark holder to require only the likelihood of dilution, rather than actual dilution.[13] Previously, state anti-dilution statutes provided the only avenue for protection of trademarks from similar or the same marks by non-competitors, but Congress determined that the many different state laws were inadequate to protect trademarks in the global marketplace. The new federal anti-dilution statutes provide for injunctive relief, damages and possibly destruction of the infringing goods under the new amendments.[14]

How do these federal and state laws affect the filmmaker; will he or she be violating the law by any appearance of a famous mark in his or her film? Fortunately, the trademark statute itself, in section 1125, “False designations of origin, false descriptions, and dilution forbidden” provides that noncommercial use of a mark, in the sense that the use is not attempting to identify the source of goods, but is used in a nominative sense, is considered fair use and not infringement:

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3) Exclusions

The following shall not be actionable as dilution by blurring or dilution by tarnishment under this subsection:

(A) Any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person’s own goods or services, including use in connection with—

(i) advertising or promotion that permits consumers to compare goods or services; or

(ii) identifying and parodying, criticizing, or commenting upon the famous mark owner or the goods or services of the famous mark owner.

(B) All forms of news reporting and news commentary.

(C) Any noncommercial use of a mark.[15]

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That is not to say that any commercial use of a trademark will trigger a lawsuit; even if a trademark is used in connection with a commercial, i.e. for-profit unrelated product, it is not to be confused with “commercial use” under the Lanham Act. Collateral use of a trademark, uses as it was intended by a secondary user as part of a larger work such as a film has been allowed so long as the public would not be deceived or led to believe that the senior user of the mark was somehow the sponsor of the secondary user’s item.[16] Collateral use has come to mean the association of the mark with the authentic product, and only dilution can be used to attack an otherwise fair use, as when the mark is not used so as to confuse a consumer, but in a way that the mark owner does not like. Fair use is a concept used in copyright law, but has been analogized in cases and finally codified in the federal trademark act, by excluding “nominative” or “descriptive” uses, and the defense is stronger with uses of the mark other than with the same goods, which do not serve as an identifier of the goods, as is usually the case with movies. The mere appearance of a famous mark in a film, not intended to associate the film with the famous mark’s goods or reputation, but used in its intended manner in identifying the product itself appearing in the film, is considered nominative or descriptive, and not a violation of the Act.

III. Recent Judicial Tolerance

In the past courts have taken a hard line stance in favor of the mark owners in finding infringement when a trademark is used without authorization as part of a film, reasoning that the use may lead the viewer to think there is some connection between the product and the film. In recent years however, many courts have shifted more in favor the defendant filmmakers in ruling that if the mark is not unreasonably displayed or highlighted, and is used incidentally in the film, there is no infringement. Barring unusual circumstances, such as unnecessary or abusive use of the mark, the appearance or mention of well known trademarks or products bearing them in expressive works does not give rise to a valid cause of action for infringement.[17]

Since the purpose of trademarks and service marks is to identify goods, there has been an ongoing debate whether the appearance of trademarks in a film constitutes infringement of the mark, since that type of use is not identifying any product. The Lanham Act[18] protects trademark owners from consumer confusion over the source of products or services. A test for application of the Lanham Act has been developed in the courts, balancing the public interest in avoiding consumer confusion against the public interest in free expression. More concerning to filmmakers is the second cause of action for trademark infringement, which involves anti-dilution statutes, protecting trademarks from tarnishment, using the mark in a negative light or on inferior or unwholesome products.

Courts have accepted the defense of “nominative use”, based on the recognition that it is virtually impossible to refer to certain entities without using their trademark names, as when referring to the Chicago Bulls or Volkswagens. Also, trademarks sometimes enter the language as descriptive words, where something is referred to as the “Rolls Royce of its class” or a “Band Aid quick fix”. These situations clearly do not cause consumer confusion about the source of goods under the Lanham Act. When a mark is not used in a trademark sense to identify goods, courts are reluctant to find infringement. So for filmmakers, some collateral use of trademarked products merely to identify the original product associated with the mark as part of an expressive work will be seen as fair use. However, such a nominative use becomes more problematic when used to “piggyback” onto the mark holder’s goodwill and reputation by highlighting the famous mark in advertising or trailers. In those cases the mark holder may sue to stop the perceived association or sponsorship of the film with the mark, and prevent the free ride by the unauthorized user. The filmmaker must keep the appearance of the mark in his or her film short and just enough to name the product as such, and avoid any disparagement of the product or mark. Also remember that the state and federal anti-dilution statutes apply to any use, even on unrelated goods. Filmmakers should remember the three requirements for nominative use as set out in the New Kids on the Block case: 1) the product is not readily identifiable without the use of the trademarked name; 2) only so much of the trademark is used as is reasonably necessary to identify the product; and 3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship by the trademark holder.[19] An example of a use of a trademark in a film that was deemed too prominent was the Slip ‘N Slide toy used in the film “Dickie Roberts: Former Child Star”.[20] Although the scene in which Dickie Roberts and his siblings play on the famous slide, without water, lasts roughly 70 seconds, it played a prominent role in the film’s advertising and promotion al campaign, appearing in the film’s publicly released trailers and television ads. The Wham-O company asked Paramount to insert a disclaimer regarding the slide’s trademark and proper use, and Paramount refused, prompting Wham-O’s lawsuit. The plaintiff claimed Paramount’s misuse of the slide in the film tarnished Wham-O’s trademarks, but the court disagreed, holding that the depiction of the slide in the film did not “inspire a degree of probably loss of the capability of the mark to serve as a distinctive identifier.” The absurd depiction of the trademarked slide did not “present a danger that consumers will form unfavorably associations with the mark.”[21] The court deemed Paramount’s use of the slide a nominative use, as there was no other way for the movie company to identify the toy in question, and there was no need for Paramount to “use absurd turns of phrase” simply to avoid using the name Slip ‘N Slide. It was sensible and necessary to refer to the slide by its popular name.[22]

There are many case examples where courts found that the unauthorized use of a mark in different contexts and on different goods caused or could cause tarnishment of the mark and its owner’s reputation. An example of a famous mark being used in a film and causing tarnishment is the case of Dallas Cowboys Cheerleaders v. Pussycat Cinema, Ltd.,[23] where similar uniforms to the Dallas Cowboy Cheerleaders and the phrase “Dallas Cheerleaders” were used in a pornographic film, “Debby Does Dallas”, The court found that the cheerleaders had established a trademark in their uniform style, as well as a reputation for family entertainment, and that the reputation of the cheerleading squad were tarnished by the perceived association with the “depraved” film, and ordered that the film be enjoined. The film was put forth as a parody, the First Amendment defense failed probably because of the ”unwholesomeness” sexual nature of the film, even though the defendant claimed it was a commentary on “sexuality in athletics”. The court said that there were alternate avenues for such a comment so that the film was not protected under free speech.[24] Filmmakers should not assume that labeling the unauthorized use of a trademarked product in his or her film a “parody” will inoculate it from infringement; In the landmark 2 Live Crew Case,[25] The Supreme Court set out requirements for a parody under copyright law. The Court said that in cases of parody there should be a case-by-case analysis, but using the copyrighted work, the second work must comment upon or criticize the original work, and should use only so much as is necessary to “conjure up” the original to make its point. The commercial nature of the second work was not dispositive of the issue.[26]   Other cases of association of a famous mark with “unwholesome” products include Coca Cola v. Gemini Rising, Inc.[27], in which a poster company’s use of the familiar and trademarked Coca-Cola bottle outline with the words “Enjoy Cocaine” written in Coca-Cola’s distinctive script.[28] The court enjoined the company from manufacturing the posters, saying the defendants associated as “noxious substance” with the plaintiff’s “wholesome beverage” and caused actual confusion in the marketplace.[29] The defendant’s First Amendment defense was not accepted by the court, saying that the damage to the mark and to the mark owner’s goodwill and business reputation was a special circumstance in which the court may enjoin or restrain expressive material.[30]

Some writers are of the opinion that the opinion strikes the wrong balance between public and private interests[31], and artists and other creators of expressive works should be able to include trademarks and trademarked products as part of their works, especially where the line between commercial and non-commercial speech has been blurred.[32] This issue may not be finally resolved by the courts for all situations, so filmmakers should approach the use of trademarks in filmmaking with caution. As shown in the Dallas Cheerleaders and Coca-Cola cases, trademark owners are still acutely concerned with the use of their marks in “unwholesome” ways, and still aggressively police their marks when they are used in such a manner. George Lucas is a filmmaker who regularly sues for unauthorized uses of his trademarks from his films. There have been a number of cases in which he sued for unauthorized use of trademarks from his “Star Wars” movie. In Lucasfilms Ltd. v. High Frontier[33], the term “Star Wars” was used by a think tank to describe the Reagan administration’s Strategic Defense Initiative idea to shoot down missiles with space-based lasers. Critics, newspapers and the public began referring to the initiative a “Star Wars”. The court ruled that the trademark was not infringed, since it was not used on a product or service, but was used descriptively.[34] In another Lucas lawsuit however, Lucasfilm, Ltd. v. Media Mkt. Group, Ltd.,[35] George Lucas objected to an animated, X-rated film called “Star Ballz”. The movie, though crude and shoddily made, used elements from the original “Star Wars” movie and “’parodied” them.  Lucas objected not only to the “unwholesome” use of his trademarked characters and “light saber”, but argued that since it was animated and other children’s cartoon characters were also used, that it may be marketed to children. (In fact the trailer for the film was G-rated.)  The court sided with the filmmaker and against Lucas, saying that reasonable consumers would not be confused about the source of the X-rated film, and that “Star Wars” and “Star Ballz” would not be sold in the same outlets so the market for “Star Wars” would not be harmed.[36]

Sometimes merely the title of a film is claimed to have infringed on a famous mark, causing confusion as to the origin or the film. Such was the case in Rogers v. Grimaldi, MGM/UA,[37] a movie title case in which Ginger Rogers sued the filmmaker of “Ginger and Fred” for the use of her name. The court held that she could not sue for infringement because the title of the film was not likely to confuse consumers that Ginger Rogers was involved in or sponsored the production in any way.[38] The film was about two dancers who imitated Ginger Rogers and Fred Astaire, and the court felt that the title had artistic significance to the film. However, the court also cautioned that had the subject matter of the film not been relevant to the title, Ms. Rogers might have been successful in her infringement claim.[39] The filmmaker used the recognizable name of a famous dancer to evoke the subject matter of dancing in a nominative way, evoking the idea of the famous dance scenes of Ginger Rogers and Fred Astaire to put forth their artistic vision of the film. The use of the name was reverential, not disparaging, which may have swayed the court in its decision.

IV. Famous Buildings and Facades

The appearance of famous or landmark buildings and facades in a filmmaker’s shot has caused much consternation and discussion, not to mention the creation of myths in the filmmaking community. As with the use of copyrighted music, there is no time limit associated with an automatic finding of fair use of the famous building or trademarked product. It comes down to the same type of guidelines in copyright law, as set out above in the New Kids case. The use cannot be overly highlighted so as to suggest association or sponsorship of the work by the trademark holder, should be only enough to identify the authentic product, or in the case of a building, the location; and it should be in a situation where there is no other way to refer to the building or landmark other than by its proper name. The appearance of a famous building in a larger work such as a film, as opposed to a poster created that used the trademarked façade to sell posters of that building as such, should be deemed nominative and not an infringement of the mark. The most well-known example of this difference is in the case of Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Products[40], in which an injunction was issued against a photographer who was selling posters bearing photographs of the Rock and Roll Hall of Fame. The district court found that due to the “extensive advertising and promotional activities of the Museum and building design trademarks, the public had come to recognize these trademarks as being connected with or sold by the Museum, its official licensees and/or official sponsors.”[41] The Rock ‘N Roll Hall of Fame case did involve the sale of a poster of the building alone, in the exact positioning of the logo used by the museum, from the front of the building. It was seen as cutting into and harming the market for similar posters of the museum, in the same position, sold by the museum. The building was used to sell a picture of the actual museum, not as just a part of the Cleveland skyline, as in a movie. However, the Sixth Circuit Court of Appeals did not see it the way the museum did. The court remarked that the building, though distinctive, was not used as a trademark at that time by the museum, and its existence as a public landmark further undermined its `fancifulness’ as a trademark.[42] The court did not see the design of the building as an indicator of source or sponsorship, but rather the defendant took a photograph of an accessible, well-known public landmark.[43] It then held the museum failed to project a consistent image of itself to the public, further undermining the premise that the museum used the building as a trademark, and remanded the case back to the district court, where the injunction was dissolved.[44]

A different twist on the use of famous buildings and facades came in the case of Sherwood 48 Associates v. Sony Corporation of America,[45] which was filed by the owners of Times Square buildings and the lessee of advertising space on those billboards in 2002 against Sony. The defendants, makers of the first Spider Man movie, digitally altered the images of the buildings and billboards to take out their advertisements and replace them with others for which the moviemakers solicited and received payment. The plaintiffs claimed that Sony had violated their trademark and trade dress rights, and that they had been harmed by the loss of advertising revenues. The suit said that advertisers contract for advertising space at Two Times Square not only as a result of the prestige ad favorable connotations associated with the building, but because the images of the building and their sign will be seen by billions of television viewers, internet users, movie goers, magazine and book readers, and others during the course of their contract with Sherwood.[46] Sherwood’s complaints included state law claims for trademark infringement as well as federal counts for trademark infringement and trespass, and alleged trademark rights in the image of the building, citing its “unique configuration and ornamentation of Two Times Square and (its) advertising and signage display”.[47] They claimed that the superimposition of the new advertisements over the contracted signs is likely to cause confusion, deception, and mistake as to the origin or source of the altered building and/or the advertising and signage display. The plaintiffs also raised a claim for trademark dilution under the New York anti-dilution statute.[48] The District Judge dismissed both federal and state claims, and Times Square’s owners appealed; the federal appeals court affirmed the dismissal of the federal trademark claims, but said they could file their trespass claims in state court since it was an “unsettled question of state law”. The case was dismissed before Sony could show that its digital alterations had “artistic relevance” to the movie and were therefore protected under the First Amendment.[49] I have doubts that this defense would have worked for Sony, since they used the altered signage in a very commercial way, the same way the plaintiffs who sold advertising space used their famous building. The use by the moviemaker was not a nominative one, since they sold their own ads to be seen by millions watching the movie, and took away the exposure of the existing ads that had already been paid for to be seen on that building. If Sony was allowed to continue replacing paid ads, the plaintiff owners were likely to lose revenue since major corporations would not want to contract with Two Times Square if their ads were not going to get the amount of exposure that they had contracted for. The claimed “artistic relevance” to the movie was diminished by the fact that these ads were NOT actually part of the famous building and could not be seen there from a public access point, as is the case with nominative uses of famous marks. The case shows the possible harm to mark holders in a kind of backwards way, since the moviemakers were taking out the marks and replacing them with their own paid advertisements. It also teaches that filmmakers will not help themselves to avoid trademark violations by digitally replacing famous marks on a building, due to the commercial purpose of trademarks of identifying the source of goods.

A filmmaker may want to do a parody involving a famous building to avoid infringement claims, but courts have weighed in on that defense as well. In the case of New York Stock Exchange v. New York, New York Hotel, LLC,[50] the Stock Exchange sued the hotel and casino for trademark infringement and trademark dilution when the casino used a replica façade of the New York Stock Exchange’s building with its logo, but changed the wording in the logo to “New York $lot Exchange” and “NY$E” for its frequent gambler’s club. The “parody” logo was also used on t-shirts and caps and other souvenirs given out by the club. The court found the actual registered logo of the New York Stock Exchange and its “NYSE” abbreviation to be distinctive and eligible for the Lanham Act’s anti-dilution protection. The District Court did not find the building itself, a historical landmark, to be inherently distinctive, but the Circuit Court of Appeals disagreed, finding that the building that housed the stock exchange, which consists of “a triangular pediment, displaying eleven bas-relief figures, that is supported by six Corinthian columns and topped by an attic, (and) also contains the words “New York Stock Exchange” on the frieze,[51] was neither generic nor descriptive of a stock market. The court’s discussion described the layout of the New York, New York Hotel and casino in Las Vegas, and how it used other famous New York images were used in a playful way to set the stage for its New York theme. The court said that it was obvious that the casino was engaged in a parody or humorous play on words that consumers would not mistake the modified marks for the real thing.[52] The casino actually modified some of the NYSE marks after this case was filed to “New York $lot Exchange” and “NY$E” instead of the actual marks. The Exchange’s New York state claims for dilution and tarnishment of their trademark, even with the defendant’s argument that casinos are actually listed on the stock exchange, were sent back to district court for further proceedings, since the Exchange wanted to preserve a reputation for integrity and transparency in the trading conducted on its floor.[53] The court’s reasoning points out to filmmakers that tarnishment need not be a seamy or unwholesome use of the mark, and arguments can be made by the mark owners for the reasons they do not wish to be associated with a particular use of their mark, ands why such uses may hurt their reputation.

Some moviemakers have successfully used the defense of fair use of copyrighted or trademarked images, as in the case that came out of the movie “Batman Forever”, in which copyrighted sculptures on a building were part of the backdrop for the film. Warner Brothers had obtained permission from the owners of the building before including it in their film, but the sculptor, who had designed four sculpted towers on the building, Andrew Leicester, sued the producers of “Batman Forever” claiming copyright infringement. Since the sculpture became a part of the building itself, the photographing of the building did not constitute infringement. The section, “Scope of exclusive rights in architectural works” provides that the copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of the pictures, paintings, photographs or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.[54]

Sometimes a filmmaker’s use buildings with sculptures for backgrounds is not favored by the courts, as in the case of the bas-relief sculpture by Frederick E. Hart that adorns the National Cathedral in Washington D.C. The use by Warner Brothers of a sculpture that substantially resembled his in the movie “The Devil’s Advocate” was seen as infringement. The movie showed the similar sculpture for twenty minutes of the feature length film, and this substantial amount of time combined with a part in the film in which the sculpture seem to move erotically swayed the court toward a finding of infringement. The case settled out of court and Warner Brothers was able to distribute the film in the home video market.[55] Some states also have Artist’s Moral Rights laws, which protect the artist from altered reproductions of their work which may negatively affect the reputation of the artist. This is the European tradition and has now been incorporated into United States law under the Visual Artists Rights Act of 1990 and various state moral rights statutes. The laws of this country stop short of the European versions and only protect the artist’s original works, except in New York, under the New York Authorship Rights Act, which purports to include a prohibition against altering, mutilating, defacing or modifying a work of art or reproduction of thereof.[56] However, this law may not be as useful in films, since the copyrighted work being used as a backdrop is not directly being “displayed, published, or reproduced as being the work of the artist.” These cases illustrate the delicate balance between filmmakers and other artists in the use of their work. The same guidelines for use should be kept in mind when using buildings, whether they include sculptures or not, as a background for your film, as with other trademarks. The type of use, whether it is disparaging or negative; the substantiality of the use, including the amount of time the image is shown; and whether the use is highlighted as in advertisements or trailers, which may lead to a presumed association or sponsorship of the film with the famous trademarked building, makes a difference in whether the use is seen as expressive and nominative, and thus allowed by the mark holder.

V. Set Dressing and Product Placement

Filmmakers have not only the macro-considerations of famous buildings and facades in their movies, but also the micro-considerations of copyrighted or trademarked items or images in their shots. Each frame must be scrutinized to make sure all clearances are completed for parts of the set dressing that may be the subject of a copyright or trademark. Even scenes or items visible on a television in a room are possible infringements if the rights holder sees or is made aware of the appearance in a film of his or her intellectual property. Although the quality of the shot makes a difference, whether the item is out of full focus in the background or is shown for a very limited time, there is still the chance of liability for the filmmaker. Several infringement cases have been decided against the filmmakers in instances of set dressing, some filed only because the rights holder was not consulted nor given credit in the movie for the creations used. In Ringgold v. Black Entertainment Television, Inc., Home Box Office, Inc.[57], an artist created a work of art entitled “Church Picnic Story Quilt” which depicted aspects of the Africa-American experience in the 1900s. Ms. Ringgold had sold the original quilt to a church in Georgia, but retained the copyright to the work. The church put it on display and created posters of the quilt which were sold in its gift shop for $20.00 each under a non-exclusive license; thousands of copies of the poster have been sold since 1988. The artist was watching the ROC television show on the BET network and saw a poster of her creation in the background of a church. The show was originally aired on a broadcast television network in 1992, and in October 1994 BET aired the show for the first time on cable television. Ms. Ringgold happened to watch a repeat showing of the episode and at that time became aware of the defendants’ use of the poster as part of the set decoration.[58] Ms. Ringgold sued the defendants for the unauthorized use of the poster as part of the set decoration for the episode of “ROC” under federal copyright law[59], and also alleged common law unfair competition and a violation of New York’s statute protecting artistic authorship rights.[60] The lower court in the Southern District of New York found for the producers of the show, saying that the use was “incidental and reasonable” and fell within fair use. The plaintiff’s claims for unfair competition were dismissed as being preempted by the Copyright Act, and declined to exercise jurisdiction over her state law claims. On appeal, the Second Circuit reversed the lower court, holding that the producer’s use of the poster did not fall within the fair use standard under federal copyright laws. Although the poster is never referred to by the actors and is in the background of the main action, and is only shown for a total of twenty-seven seconds in nine shots, the use was not “de minimis” or insignificant. The poster was not in perfect focus, but is plainly observable by the audience. The Second Circuit court refers to a regulation issued by the Librarian of Congress providing for royalties to be paid by public broadcasting entities for the use of published pictorial and visual works.[61] The Librarian distinguishes between a “featured” and a “background” display, setting a higher royalty rate for the former.[62] The court then remarks:

“… the Librarian has defined a “featured” display as “a full-screen or substantially full screen display

for more than three seconds,” id. § 253.8(b)(2), and a “background” display as “[a]ny display less

than full-screen or substantially full-screen, or full-screen for three seconds or less,” id. If defendants’ program were to be shown on public television, plaintiff would appear to be entitled to a “background” license fee for a “less than full-screen” display.”[63]

The poster was visible several times for four to five seconds, both in focus and out of focus, and the court held that such repetitive effect of the multiple views of the image reinforces the visibly significant aspect of decoration that the poster contributed to the set. The de minimis threshold for actionable copying had been crossed, and the Court remanded the case to the District Court for assessment by the fact finder of the four fair use factors in section 107 of the federal Copyright Act.[64] The court also said that the lower court should give consideration to the plaintiff’s claim under the New York Artists’ Authorship Rights Act[65], which stated that the defendants violated her statutory rights because they did not credit her as the creator of the story quilt.

In light of Ms. Ringgold’s state claim, one has to wonder whether she would have sued at all if she had been given proper credit by the producers of the television show. The case is very instructive for filmmakers because it sets out the boundaries of non-actionable use of a copyrighted item in set decoration, and also provides a strong incentive to ask permission of a rights holder and give credit for the use of his or her creation in a film.

The amount and substantiality of use of copyrighted photographs as a set decoration figured in a different result in the case of Sandoval v. New Line Cinema Corp.[66] New Line Cinema used reproductions of ten copyrighted but never published photographs taken by Jorge Antonio Sandoval in background shots for the film “Seven”. The photographs only appeared in the film for short lengths of time ranging from one to six seconds per shot, in a scene that lasted only one and a half minutes and was an hour and sixteen minutes into the film that was 123 minutes in total length.[67] The photographs were often obstructed from view by the actors and props in the scene.

The lower court dismissed Sandoval’s copyright infringement action and relied heavily on the analysis employed in the Ringgold v. Black Entertainment Television, Inc.[68], examining the four factors used in determining fair use: 10 the purpose and character of the use; 2) the nature of the copyrighted work; 3) the amount and substantiality of the portion used; and 4) the effect upon the potential market for the copyrighted photographs.[69] The District Court decided to dismiss the case without first deciding whether the use was “de minimis”, but the Circuit Court held that the use of the photographs in the movie was de minimis as a matter of law and affirmed the lower court’s judgment. Unlike in Ringgold, the court found that the copying of the photographs “fell below the quantitative threshold of substantial similarity”, because the photos were not “clearly visible” as the artwork was in Ringgold. The reproductions of Mr. Sandoval’s photographs as used in the movie were not displayed with sufficient detail for the average lay observer to identify even the subject matter of the photographs, much less the style used in creating them.[70] Although the plaintiff Sandoval claimed that the defendant film company violated his right to publicly display his photographs under the Copyright Act, but the lower court said that the photographs could not constitute a “public display” because they are not recognizable to the public.[71] Under the requirements of the fourth factor in determining fair use, the court stated that “ …the value of and market potential for his work is in no way usurped, since the public is not even aware after viewing Seven that they have had a glimpse of Sandoval’s work.”[72] As the use was deemed de minimis, no action for copyright infringement can be brought, and the issue of fair use was not necessary to determine. The Sandoval case was described as the first to establish the de minimis doctrine as a full defense to the unauthorized use of graphic works in motion pictures and television.[73] In an earlier case in which a movie company used a copyrighted artwork fashioned into a mobile for a baby’s crib in a film, the District Court in New York found that the limited view given in the movie to the mobile did not constitute a “copy” for purposes of a copyright infringement action.[74]

Although these three cases involved using copyrighted artworks to dress a movie set, filmmakers would do well to examine their facts in deciding on props to be used in their own movies. It is not unheard of in the annals of filmmaking to see a prop or part of a set being elevated to a symbol for the movie itself. This could elevate the prop into trademark status, as merchandising of objects from the film ensues. If the prop turns into a trademark identifying the film itself, a Lanham Act[75] suit could be brought by the creator of the prop if it is a copyrighted work such as a sculpture or photograph. Remember, the Lanham Act is intended to prevent consumer confusion as to the source of goods, and the artist could be using or intending to use the artwork as a trademark for his or her goods. Lanham Act also governs unfair competition and trademark dilution or tarnishment[76], and a prop used in a film in a certain way could leave the filmmaker open to a lawsuit.[77] Copyright and trademark rights are often overlapping and often both causes of action, in addition to doctrines of privacy and publicity and state laws protecting artist’s rights, should be considered in the context of clearing rights for items used in your film.

Product placement is sometimes seen as a panacea for filmmakers, a way to make extra money from their film or to raise funds for the production. Conceivably you can charge a trademark holder for the privilege of being selected for use in your film, but often the company holding the rights to the product does not desire an association with a smaller film. There have been films financed by a non-film company so that their products are featured prominently. This has already happened – Adidas bankrolled a movie entitled Goal! The Dream Begins which was about a Mexican-American boy who follows his dream to play professional soccer in Europe. Of course, all the products in the film were made by Adidas, and the real soccer teams featured in the film were sponsored by Adidas in real life.[78] The movie did not do that well at the Box Office, but a large company like Adidas probably used the film as a part of its advertising campaign, not expecting to recoup the money spent. The goal of Adidas was not to advance or support the creativity of the film, but just to sell its products. Filmmakers and the creative people who work with them on a movie may not want to turn their vision of a film into a mere commercial for a company who is willing to fund it. The issue of artistic control of such a commercialized movie may cause a filmmaker to think twice about giving up its creative ideas in favor of showing the product paying for the film. With a big budget movie, there are usually specific requirements for product placement such as use of the product and screen time, which are negotiated in advance. Ten seconds of screen time is a common minimum requirement, and the value received by the filmmaker is directly related to the screen time. Favorable lines from a lead actor are also valuable. A large studio will probably have as staff person to help obtain product placements. There are also companies who help independent filmmakers obtain product placement deals. Good Unit Production Managers maintain a list of product placement companies, such as International Promotions (www.productplacements.com) and Hollywood Product Placement (www.hollywoodproductplacement.com).[79] However, the owners of a famous mark or product probably would not be as receptive to allowing its use in a small independent film, much less pay for prominent placement. More likely a trademark holder would not want to share its goodwill and reputation by allowing the indie film to “piggyback” onto it with product placement, especially in the advertising or trailers for the film. There has been special concern recently with the YouTube appearance of trademarks; large media companies routinely demand the removal of clips from shows, and there is double trouble if the material uploaded to YouTube contains copyrights or trademarks that a holder may object to. For independent films, product placement could take the form of the company supplying food or drinks for the cast and crew, if the actors drink the brand on screen, or the filming takes place in their establishment. Some entrepreneurs may want to have their product featured in a film, no matter how small the audience; a local filmmaker may want to help out a local concern by featuring its product, which may be a good deal for all involved. Realistic expectations and achievable goals are the best bet for an independent filmmaker contemplating the use of product placement. Matching the size and reach of your film to a similarly situated product will be the key to a good relationship. Perhaps a fledgling firm just launching its product would like to help out a smaller film that has a subject matter that fits its target audience. In turn, a filmmaker may want to associate its film with that target audience by featuring or placing the firm’s product or service in its film. The larger film may not reach the target audience of a product as well as a smaller film more focused on a certain niche audience. 

© 2011 Mary Ellen Tomazic