Today it is almost impossible to shoot video without capturing a trademark. The legal landscape surrounding trademarks in videos is fraught with exceptions and legalese that make it difficult for video producers to determine when there is a legal issue to be considered. This article is a first in a series devoted to the legal issues of trademarks in videos. Like any legal topic there are a ton of exceptions, below is a good road map for media producers.
WHY IS TRADEMARKS IN VIDEOS A CONCERN?
For some companies, a trademark is their most valuable asset. For instance, Coca-Cola’s trademark is valued at $78 billion. Hence, many companies protect their trademark with a vengeance.
WHAT ARE CURRENT VIDEO PRODUCERS DOING?
Some video producers spend money to clear rights to every product that appear in their production. They do this because they believe it is cheaper to clear the rights to the product than it is to fight a future trademark infringement lawsuit. Other video producers simply remove trademarks appearing in their production because they can’t afford to clear the rights to the products. And others let the trademarks remain in the video. So what’s the correct thing to do?
WHAT SHOULD YOU DO? -> STEP ONE: DEFINE YOUR PROJECT
You just shot some amazing video footage but you captured a host of trademarks in the video. What do you do? The first step is to ask how your video footage will be used?
Is the video footage for a film, documentary, or television show? Or is the video footage going to be used in a commercial to advertise a product or company? There is a different analysis depending on how your video footage is used. Let’s start the analysis first with (i) films, documentaries, and television views; then move onto (ii) commercial advertisements.
1. FILMS, DOCUMENTARIES, AND TELEVISION SHOWS
If your video footage will be used for a film, documentary, or television show, you have more leeway when it comes to trademarks. Films, documentaries and television shows are works of art. They are protected by the first amendment’s ideals of free speech. The goal of free speech is to create open social, artistic, political and commercial expression. This line of reasoning has created a first amendment argument for film producers. Most courts have adopted the Roger’s Test for analysis under the first amendment fair use argument. Of course, in many instances, a film producer can also claim a nominative fair use defense. Given these two defenses, case law usually favors a finding of non-infringement for films containing trademarked goods. See James Gibson, Risk Aversion and Rights Accretion in Intellectual Property Law, 116 Yale L.J. 882, 917 (2007); Rogers v. Grimaldi, 875 F.2d 994, 999, 16 Media L. Rep. 1648, 10 U.S.P.Q.2d 1825 (2d Cir. 1989); Caterpillar Inc. v. Walt Disney Co., 287 F. Supp. 2d 913, 916-18 (C.D. Ill. 2003); Wham-O, Inc. v. Paramount Pictures Corp., 2003 WL 2300526 (N.D. Cal. 9/29/03); Twin Peaks Productions, Inc. v. Publications Intern., Ltd., 996 F.2d 1366, 21 Media L. Rep. 1545, 27 U.S.P.Q.2d 1001, 1010 (2d Cir. 1993). For more detailed information on the Roger’s Test and Nominative Fair Use, please read the attached legal memorandum.
2. COMMERCIAL ADVERTISEMENTS
If the video footage is going to be used for a commercial advertisement there are two legal issues to watch out for: (a) are you creating confusion as to the source of the product; or (b) are you creating confusion as to the sponsorship of the product.
(a) If the trademark captured in your video is of a competing product you may have a problem. Trademarks of competing products should only be used to compare the relative qualities of the two products or some other fair use defense. If the trademark in the advertisement is not being used to compare the relative qualities of the two products, you could be in trouble. Please note that it’s OK to have both products and trademarks in the commercial if you are comparing the two, ie. you are showing how awesome your client’s product is compared to how bad the competitor’s product is.
(b) If the trademark captured in your video is used to show endorsement of the product you may have a problem, but let’s use some examples to see how this pans out.
If you create a commercial spot for your local snowboard shop, can you have the Burton trademark in the commercial? If the shop actually sells Burton Snowboards and you are trying to convey to the consumer that the local shop sells Burton Snowboards, and not that the shop is a Burton Owned Shop, the answer is probably yes. For more info see Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (1969); Patmont Motor Werks, Inc. v. Gateway Marine, Inc., 1997 WL 811770 (N.D. Cal. 1997); Playboy Enterprises, Inc. v. Terri Welles, Inc., 78 F. Supp. 2d 1066, 1089 (S.D. Cal. 1999), 61 U.S.P.Q.2d 1508, 197 A.L.R. Fed. 601 (9th Cir. 2002); Patmont Motor Werks, Inc. v. Gateway Marine, Inc., 1997 WL 811770 (N.D. Cal. 1997).
If you create a commercial spot for a car polish company can you use a Porsche 911 with its infamous trademark in the advertisement? This will depend on how it is used. If the focus is squarely on the car polish you may be legally ok, but if the Porsche trademark is right next to the car polish’s name, you probably have a problem. The reason being is that you are incorrectly communicating to consumers that Porsche is sponsoring or endorsing this particular car polish when in fact Porsche is not sponsoring the car polish. For more info see Liquid Glass Enterprises, Inc. v. Dr. Ing. h.c.F. Porsche AG, 8 F. Supp. 2d 398, 1998; New Kids on the Block v. News America Pub., Inc., 971 F.2d 302, 308, 20 Media L. Rep. 1468, 23 U.S.P.Q.2d 1534, 1539 (9th Cir. 1992).
Trademarks in a commercial advertisement represent a difficult issue. Remember these two things (a) if you are creating confusion as to the source of the product (eg. using the competitor’s trademark in a non-comparative manner) remove the competitor’s trademark from your video; or (b) if you are creating confusion as to the sponsorship of a product (eg. a car polish with focus on Porsche’s trademark) remove the famous trademark from your video.
Trademark law wants to protect two things: (i) protect consumers from deception and confusion over trademarks, called likelihood of confusion; and (ii) protect the owner’s trademark as if it was property, called likelihood of dilution. If you want to get nerdy and learn more, read the attached legal memo.
Finally, just because you are legally correct doesn’t mean people will not bring a lawsuit against you. If you want to prevent someone from bringing a lawsuit against you, ask permission in writing from the trademark owner.
 Top 100 Most Valuable Brands, http://www.millwardbrown.com/brandz/2013/Top100/Docs/2013_BrandZ_Top100_Chart.pdf
 The Supreme Court has observed that: “Entertainment, as well as political and ideological speech, is protected: motion pictures, programs broadcast by radio and television, and live entertainment, such as musical and dramatic works, fall within First Amendment guarantee.” Schad v. Borough of Mount Ephraim, 452 U.S. 61, 65, 101 S. Ct. 2176, 7 Media L. Rep. (BNA) 1426 (1981).