“Marketing experts estimate that the average American is exposed to thousands, if not tens of thousands, of brand logos and advertisements each day.”
Art imitates life, it’s said, but this creates interesting legal tensions when the life being imitated is crowded with commercials. Marketing experts estimate that the average American is exposed to thousands, if not tens of thousands, of brand logos and advertisements each day. It is not surprising, then, that film makers, artists, musicians, and authors often want to use trademarks in their works, including to bring realism to their fictional universes or to comment on modern society. But where does the Lanham Act’s trademark protection end and First Amendment free speech begin?
Generally speaking, the Lanham Act gives trademark holders the right to prevent the use of their trademarks by others in any context that “is likely to cause confusion” or “deceive as to the affiliation, connection, or association of [the trademark holder] with another.” 15 U.S.C. § 1125(a)(1)(A). This test works well in the context of most goods and services. A new frozen breakfast food company cannot legally name their new product “Eggo,” which keeps it from trading off the goodwill of Kellogg and allows consumers to rely on the Eggo name as an indicator of source and quality when selecting waffles.
In the context of art and entertainment, however, the traditional test is not so workable. Imagine a television show featuring a character who loves Eggo waffles. Many viewers may reasonably believe that Eggo paid for this product placement and that therefore there is an affiliation or association between the program and the brand. But in fact, as happened in the real-life Netflix original Stranger Things, the screenwriters and producers may have wanted to create an Eggo-eating character for artistic and cultural reasons, independent of any influence by the brand. Fortunately for both creators and consumers of entertainment the law has treated artistic works differently than other types of goods and services. Because of the First Amendment, the Lanham Act’s likelihood of confusion test does not ordinarily apply “unless the [trademark use] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the [use] explicitly misleads as to the source of the work.” Rogers v. Grimaldi 875 F.2d 994, 999 (2d Cir. 1989).
For example, in a recent case, Twentieth Century Fox Television sued for a declaratory judgment that its television program Empire (about a fictional music label named “Empire Enterprises”) and the associated merchandise did not infringe the trademarks of Empire Distribution, a real-life record label. Twentieth Century Fox Television v. Empire Distribution, Inc., 875 F.3d 1192 (9th Cir. 2017). Applying the Rogers test, the Ninth Circuit explained that, for the first prong, any artistic relevance is sufficient. “The bar is set low: the level of relevance merely must be above zero.” Id. at 1198. The court also held that even if consumers actually were confused and mistakenly believed there was some connection between the television program and the record label, there was nothing explicitly misleading about the use of the mark and, accord the Lanham A ingly, Act provided no protection. Id. at 1199. Accordingly, the Ninth Circuit entered summary judgment in Fox’s favor on its claim. Id. at 1195. Empire Distribution has fifiled a petition for certiorari with the Supreme Court, which remains pending at the time of press. Petition for a Writ of Certiorari, Empire Distribution Inc. v. Twentieth Century Fox Television, No. 17-1383 (U.S. Apr. 2, 2018)
Other trademark protections also function differently in the entertainment context. For instance, the Federal Trademark Dilution Act gives famous trademarks certain additional protections; others cannot use famous trademarks, even if there is no likelihood of confusion, in a context that dilutes or tarnishes the mark. 15 U.S.C. § 1125(c). A pop song about a “Barbie girl” dilutes Mattel’s trademark Barbie because “while a reference to Barbie would previously have brought to mind only Mattel’s doll, after the song’s poplar success, some consumers hearing Barbie’s name will think of both the doll and the song, or perhaps of the song only.” Mattel, Inc. v. MCA Records, Inc., 296 F.3d 894, 903-904 (9th Cir. 2002). However, dilutive references in artistic works are protected as non-commercial speech. While books, songs, video games, and movies may be commercial products, because these works do “more than propose a commercial transaction” they are exempted from the Federal Trademark Dilution Act. Id. at 906 citing 15 U.S.C. § 1125(c).
Of course, some caution by creators is still warranted. Defamatory speech is not protected by the First Amendment. Furthermore, many jurisdictions, including the Tenth Circuit, have never affirmatively adopted the Rogers test. And there is some uncertainty, even under Rogers, as to what constitutes an “explicitly” misleading use. Compare Empire Distribution, 875 F.3d at 1199 with Elec. Arts, Inc. v. Textron Inc., 2012 WL 3042668 (N.D. Cal. July 25, 2012). In general, however, under the current legal framework creators do have freedom to use other’s trademarks when creating works of artistic expression.