May 01, 2006
WSJ on Computers in the Movies (and Trademark Missteps)

The Wall Street Journal runs an amusing feature on computers in the movies: from the improbable email addresses of Mission: Impossible, to the appearance of real nmap screens in the Matrix. Clips, too.

Unfortunately, a good article is marred by a wrong turn on trademark law:

Sometimes, Hollywood depictions look different from reality on purpose. Filmmakers must sidestep delicate trademark issues when setting a scene. Prominently showing an AOL email screen or Google search page, for example, requires approval from the companies, so some production designers create a variation that avoids the red tape. Other times, filmmakers exaggerate the look of money transfers or Web searches with full-screen blinking graphics and sound effects, while removing extraneous details, so that viewers don't miss them in important scenes.

Wrong. Trademark law does not give companies veto power over the depiction of real products, either in documentary or in fiction. That's why when Disney's George of the Jungle 2 showed Caterpillar bulldozers battling George's jungle creatures, to unflattering effect, an Illinois district court denied Caterpillar Inc.'s bid to stop it.

The court found Cat unlikely to succeed on either infringement or dilution grounds ("[T]here is no apparent competition between Caterpillar bulldozers and George 2 videos and DVDs.... Part of what drives the Court's discomfort with Caterpillar's position is the fact that the appearance of products bearing well known trademarks in cinema and television is a common phenomenon. For example, action movies frequently feature automobiles in a variety of situations. Is the mere appearance of a Ford Taurus in a garden variety car chase scene sufficient by itself to constitute unfair competition?") (Example recalled by way of Duke Center for the Study of the Public Domain comics.)

Moviemakers can use the brand-name products their real-life audiences use. They can even insult those products. As Eugene Volokh said at the time of the Disney-Catfight, "So long as the moviemaker doesn't make false factual assertions about someone -- so long as the work is clearly fictional, and not intended to represent any real claims that Caterpillar is somehow committing some crime or misconduct -- the moviemaker's speech is constitutionally and statutorily protected. See, e.g., Mattel v. MCA Records (9th Cir.), the "Barbie Girl" case, speaking about the 'noncommercial use' exception to the Federal Trademark Dilution Act."

If moviemakers aren't using real computer services in their movies, it's either because they are getting bad legal advice, or because mutt and pine aren't so photogenic as animated folding envelopes. I hope it's the latter.

Posted by Wendy at May 01, 2006 09:56 PM | TrackBack

very interesting.

what, then, is the rationale when certain television shows blur the logo of, say, a pepsi can? are they misinformed? is that "precaution" not required?


Posted by: Jesse Fox on May 5, 2006 02:13 PM

If companies got freebie product placements in big ticket movies and TV shows all the time, then who would pay for them?

It's not about trademark dilution, it's about creating artificial market competition to be the logo on the protagonist's soda can.

Posted by: Rob Carlson on May 10, 2006 10:55 AM

I would respectfully suggest that we have a collision here between academia and daily law practice. You cite the Catepillar case, but the reality is that (like many cases) it's highly fact-specific. Consumers have come to expect authorized product placements in films. Such expectations would generally not extend to heavy earth-moving equipment, but probably would apply in the context of consumer products like food, soft drinks, and even computers or online services like AOL, Amazon, etc.

So, if you were counseling a film production on whether it can prominently feature an image of a well-known brand that might or might not be construed as an endorsement or authorized use of some kind, would your advice be "don't worry, we'll cite the Catepillar case and fend off the injunction"?

In my view, it's not the end of trademark fair use to say permission should be sought in such circumstances, especially if the usage in the film is truly in passing -- and thus not in a manner likely to be construed as an endorsement, and not really a "trademark use."

Posted by: on May 16, 2006 08:59 AM

Clarification on the last paragraph of my comment posted about an hour ago. It should read as follows:

"In my view, it's not the end of trademark fair use to say permission should be sought in such circumstances. Fair use would apply more in instances where a particular usage in a film is truly in passing -- and thus not in a manner likely to be construed as an endorsement, and not really a "trademark use."

Posted by: on May 16, 2006 09:47 AM

It seems to me the better argument for Caterpillar would have been based on defamation, not trademark law. Even a defamation claim would have been an extremely uphill battle.

Posted by: TheOnlineLawyer on May 18, 2006 03:21 PM
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