I know that way back when, if a Coke can or something appeared in a film, the filmmaker would have to pay Coca Cola for it. But later on, the opposite effect started happening - comanies would sometimes pay filmmakers to include their products in their film.

I'm just not sure what the LEGAL issues with this are. Basically I want to film a scene in a coffee shop, and have the permission of a local Starbucks manager to do this. I'm wondering, though, is it illegal to show the Starbucks logo or anything? The manager approved of me filming, but would Starbucks corporate people have issues? Can I get sued or be forced to pay anything? I mean, I could get away with not showing the big logo on the outside of the coffee shop, but I mean every damn thing inside a Starbucks has their logo on it. Aprons, cups, products, tables, wallpaper... what kind of legal issues am I dealing with? Is it perfectly OK to show a logo of a business in a film? Do I have to pay? How do these things work?

Thank you.

The manager that gave you permission is a peon, and does not have legal permission to allow anything with a Starbucks trademark to be recorded. Yes, Starbucks could sue you. And they would be perfectly within their right to do so. But would they? It all depends on how big your movie becomes, whether or not you profit heavily from that Starbucks scene, or even worse, whether or not Starbucks feels that you are tainting their image somehow (got a murder scene in a Starbucks café? Well, then you’re in trouble.) Still, there is the possibility that Starbucks wont even notice your movie. But yeah, legally, what you are doing makes you very vulnerable to a lawsuit from them.

Try a local coffee shop where you can talk to the owner. If you do it right, you can get them to throw in free coffee and donuts for your crew as a "product placement" fee, and maybe even let you tape at night when they are closed.

This sort of touches on something I was wondering, What about the brand names and (TM)s and (R)s painting our landscapes, you cant turn your head outside and not see a slew of advertisements, billboards, signs, etc, do the copywrite holders have the right to say I can't videotape outdoors if they choose to place their logo in plain sight?

Good question! On one hand, anything taped outdoors will be considered 'no expectation of privacy', but on the other hand you ARE taping a registered trademark. FWIW, this is how the producer's of the Girls Gone Wild videos is getting bye. They tape everything outside and when the girls try to sue for using their 'likeness' the judge ends up throwing it out saying that there is no expectation of privacy in a public place.

Jeremy,

NO expectation of privacy... can sometimes conflict with ... "Right to publicity"

Trademarks and logos that appear in the normal world, and flit by in the background of your video are almost unavoidable. And the 'damge' that might be incurred by them happening to be in the background shot as your characters walk by the front of the shop can be argued to be 'minimal'.

And there in lies the key to the argument.

There are similarities and differences between trademark (tradedress) and copyright laws. In the world of copyright, there is an arguement called 'fair use' which is sometimes applied to editorial and educational uses. Using a small portion of a book or article for news or educational purposes is 'allowed'. But just how much of that can be done, is what is 'argued' when someone is infringed.

It is a subjective ammount. It's not codified into 'two minutes' or "tree lines" or "One chapter".

There was a case where a local news station, showed the circus act where the guy is shot out of the canon. THEY SHOWED the whole shot, from beginning to end. Only lasted a couple of seconds, but IT WAS THE MEAT OF THE SHOW. He sued for infringement and won, because his argument was that showing the 'best, most important part' caused people not to come, and not to buy tickets. He suffered financially from this 'news coverage'.

There are similar arguements to be made in displaying trademarks and logos. I AM NOT AN ATTORNEY, (just married to one) and Paul Tauger will certainly have a more difinitive definition of this issue... (if he's not too busy to weigh in on it..) But if showing the trademarks or logos 'harm' or 'diminish' the companies business in any way... or imply that the company endorses your film... expect to be sued.

A quick search yielded this thread full of information on "incidental reproduction:"

http://www.dvinfo.net/conf/showthread.php?s=&threadid=13341

But, of course, everything here is just opinion and nothing more, NOT legal advice -- even Paul Tauger's very learned words can only be taken that way, since he doesn't represent any of us. In addition to the wise words he just posted, Richard Alvarez also brought up an additional twist called "trade dress:"

http://www.dvinfo.net/conf/showthread.php?s=&threadid=40588

To stay safe and legal, you're really left with two options:

- Retain a lawyer versed in local law as well as federal statutes and case law to help you with all legal aspects of your production.

- Make darn sure nothing appears in your work that someone else claims as their own...music, image, logos, etc.

Even the Big Guys rarely show other corporate logos in their TV commercials...just easier for them to make up a "Bag-o-Donuts Coffee Shop" sign, or a "The Other Brand" label for a container rather than risk ending up in court with bad press.

Richard,

The news coverage of the circus would have been inside the tent where folks would have to pay to get in...that would constitute an expectation of privacy unless the news crew had certain written authorization.

I've seen plenty of news reports where the reporter stands outside the BofA and reports on a holdup inside the bank, but since the shot was filmed outside the bank where there is no expectation of privacy, I have yet to see a bank sue the media because their report may have persuaded some to close their accounts. The entire argument may be moot considering the footage was done with 'editorial' or 'educational' intent.

In the case of Starbuck's, wouldn't the plaintiff have to prove some sort of damages? I can see how MGM does a shoot outside the Starbuck's and the two actors say how horrible the coffee is...and the film grosses $100m bucks. OTOH...if the two actors stood outside and said how marvelous the coffee was, I would think that there's a good chance that Starbuck's would look the other way, no?

>>In the case of Starbuck's, wouldn't the plaintiff have to prove some sort of damages? I can see how MGM does a shoot outside the Starbuck's and the two actors say how horrible the coffee is...and the film grosses $100m bucks. OTOH...if the two actors stood outside and said how marvelous the coffee was, I would think that there's a good chance that Starbuck's would look the other way, no?<<

Any which way you look at it, if you don't get permission from the big guys up stairs, then it's a legal gamble. Franchises like Starbucks don't want a flood of unauthorized movie recordings in their cafes. They want to control that type of stuff.

I'm with Glenn. The point is often made -- and I certainly take heed of it myself -- that no matter the outcome of the court action, the small guy is never going to be happy that he had to bankrupt himself defending against a suit filed by Big Studio, or Company X. To B.S. or Co. X, it's a pittance and just one of many suits their legal dep't may have going at any one time just to show that they are protecting their IP.

We really want to steer away from the "what might you get away with?" concept; helping people know what's right and proper should remain our focus.

There are lots of grey areas in all of this; that's why there are a lot of IP attorneys out there to choose from. ;-)

Right... The fact that we 'lay' people can argue on a forum, and make what appears to be mitigating cases both 'pro' and 'con', indicates just how difficult and drawn out a case like that can be. (And difficult-drawn out = EXPENSIVE)

"You can beat the rap, but you can't beat the ride," is the decision a small filmmaker doesn't want to have to make. Expending time and money, valuable recources to any filmmaker, on a case that could have been avoided with a little forethought and ingenuity... is not something you want to do.

"Right to privacy and Right to publicity" speak to using images shot in a 'public' setting for 'private' gain. I can shoot the topless girl walking down the public beach... but I cannot MAKE MONEY off of her image, without her permission. (This assumes it's not a news piece... which has it's own limitations) Posting it on the internet .... MIGHT be defended as "No expectations of privacy". Printing a couple of thousand disks and selling them for ten bucks a pop... opens up another can of worms.

The use of the Circus Canon Shot... speaks to 'fair use' of material for news and educational purposes. Fair use fails when the use of the material infringes or harms the copyright owner. Not even a news organization has the right to do that.

What makes this question so hard is that there don't seem to be a lot of precedents to go on. As much energy as independent filmmakers expend designing phantom brands and taping over trademarks, has the failure to do this ever resulted in a lawsuit? I'm talking about cases where a brand name, say a bag of Doritos, is in the background of a shot. Scenes where a trademark is a featured part of the scene, or gets disparaged in some way, are a different matter altogether and should be avoided. As far as Starbucks is concerned, so long as nothing in the scene can be taken as a reflection on them, they're not going to care. You've been offered a beautiful, and apparently free, location. Take advantage of it. Starbucks has better things to do than heaping bad publicity on themselves by persecuting you. If anybody stands a chance of getting burned on this, it's the manager who gave permission. If he's a friend, this is something you may want to consider.

<<<-- Originally posted by Marco Leavitt : As far as Starbucks is concerned, so long as nothing in the scene can be taken as a reflection on them, they're not going to care. -->>>

Really? I didn't know you represented Starbucks.

Starbucks might not sue, but they might care. All it takes to ruin Daniel's show is for them to decide that they don't want their logo shown and he is back to square one.

I don't even want to think what it would cost to defend yourself in court against Starbucks.

Paul covers a lot of this in the other thread currently running about background people. worth a read.

You chose Starbucks. My friends and I were in one a while back. We were taking snapshots (because one of the guys was moving away) and an employee of Starbucks came over and told us we couldn't take pictures there. Said something about it being a Starbucks policy, and something about not wanting people copying their layout and product line.

John Galt's suggestion makes the most sense to me--and sounds like more fun!

Pretty much every chain has official policies against taking pictures in their stores. There's a big difference between chasing people off with cameras and suing after the fact. Like I said, the one who's really at risk here is the manager who gave permission. When I say Starbucks isn't going to care, it's because so far as I know nobody has ever been sued over a situation like this. Sure, you never know when a corporation is going to make an example of somebody, but how realistic is that? You're way more likely to be sued by one of your own cast or crew members no matter how many forms you have people sign, and yet that doesn't keep people from shooting. I would add that if I were making a feature film that I had serious aspirations of actually trying to market, I'd be a hell of a lot more careful. But come on, most of us are working on shorts and features that are destined, at best, to limited release in obscure film festivals. Most of them will only be seen by family members and friends. Shorts, no matter how good they are, have almost zero commercial potential unless you were commissioned to shoot them in the first place, and if that were the case you wouldn't have to deal with issues like this because you'd have a genuine budget. We're so far below the radar a seismograph couldn't detect us. Sometimes I think the only reason a lot of filmmakers even debate topics like this is because it makes us feel like we're a genuine part of the film industry, which sadly, many of us aren't, myself included. The fact is, nobody really cares what we're up to.

To put this another way, I think the risks are minimal, and so are the stakes. Starbucks isn't going to try and bankrupt you. They aren't. Maybe they could kill your movie, but unless you spent your life savings on this thing, is that really worth worrying about, given the miniscule risk? I just think there's more to gain here than lose.

<<<-- Originally posted by Marco Leavitt :
To put this another way, I think the risks are minimal, and so are the stakes. Starbucks isn't going to try and bankrupt you. They aren't. Maybe they could kill your movie, but unless you spent your life savings on this thing, is that really worth worrying about, given the miniscule risk? I just think there's more to gain here than lose. -->>>

Ah, now we are getting somewhere interesting... Risk vs. Reward! One of my favorite.

Reward:
-A free coffee shop to shoot in. Realiticaly, you could get this from any Mom 'n Pop coffee shop though. The fact that it is or isn't a Starbucks isn't part of your plot/story (I assume).
-Shooting in a Starbucks may lend credibility to your film, as people will think "Oohh, he got permission to shoot in a Starbucks, he must be bigger than we thought he was."

Risks:
-Starbucks sues you. Regardless of the amount, you have to declare bankrupcy because you lose all your money just fielding a lawyer to defend yourself. I think the chances of this are pretty small.
-Starbucks can shut your film down without sueing with a "show it and we sue". A little more likely, but possibly a long shot if you never go outside small festivals. You don't lose any money, but you lose all your time and the cash you put into the film. All the cast/crew hate you because they put all this effort in and have nothing they can show for it.
-The manager gets fired. Well, unless he is your friend, you may not care.

SO here is our choice... The risks are small, but significant. On the other hand, the rewards IMHO are basically nothing you couldn't have with a little footwork to find a different free coffee shop.

At least we're agreed that if any response from Starbucks is going to come, it will most likely be in the form of a mean letter from some law firm. Even in that scenario, which I still say is so unlikely as to not be worth worrying about, odds are you could still just recut the movie or reshoot the scene.

Marco.

The mean letter is the first thing that comes from a law firm. It's fast, efficient, and usually works. It's the 'shot across the bow' before the suit is filed. It's pretty much standard procedure to show that the corporation or firm was not 'unreasonable' by sending you a nastygram first, before starting the legal process.

So you can run the risk of getting the nastygram, and hope that all they request is a 'cease and desist'. That they don't ask for your 'negative' or original tapes and that they don't file some sort of injunction against further activity on your part.

The sort of thing that is absolutely routine for a large corporation or law firm. The sort of thing they do ten times a day every day of the week, the sort of thing that is so routine and so practiced, that they have forms they fill in to make it quicker and easier to push stuff through the courts. Hey, it's nothing personal, writing letters to stop infringements is necessary to protect the client. They won't lose any sleep over it.... That's what their IP attorneys do. They scour the internet, they look at film festivals, they hunt out infractions, they hire investigators to buy products, and photograph their packaging.... because if they don't - then the mark will slip into 'common usage'. It's why XEROX takes out big ads in trade magazines informing writers "You can't use the term XEROX as a verb... you must use the term 'photocopy'"

You keep speaking from the 'likelihood' of getting a letter or having someone file suit, and you suggest to them that they should take the risk.

I am speaking from the KNOWLEDGE that this is what IP lawyers do for their clients. I know, I've seen it. Paul will probably attest to much the same. I have sued someone for theft of IP. And there wasn't a lot of money involved.

But perhaps I am speaking out of turn. Perhaps you have first hand knowledge of utilizing trademarks, or trade dress in a film that achieved some sort of notoriety. And you were able to stare the corporation in the face and say "Go ahead and sue me, I'm stone broke and therefore judgement proof".


Of course the safest thing to do, is to make such a film and hope beyond hope that it is so bad that nobody will want to see it or show it in a festival, and you can't afford the server space to post it on the internet. In other words, your safe if you feel you have no talent or abilities, drive or ambition.

I said earlier that if you were working on a feature that you felt had real prospects for a distribution deal, you'd probably want to be extremely careful. It would be foolhardy to take a risk that could jeopardize your project's future. But most of the movies people are working on are shorts, and are never intended for that kind of wide release. I'm just saying people should keep things in perspective. It's unclear that anyone has ever run into legal trouble for the scenario that we've described. I'm not saying that it has never happened. I'd be very interested in reading about cases where it has. The few cases I can think of where a corporation has swooped down with the full weight of their legal armada, it's been in response to pretty obnoxious behavior, not unauthorized footage in a coffee shop for a 20 minute movie intended for the festival circuit. It would be useful to compile as many horror stories as we could find. That would probably be the most useful barometer for what you can or can't get away with. The rest is just speculation.

Richard, you seem to have the most first-hand experience with this stuff. Can you think of any intellectual property lawsuits that would be relevant for us? I say that out of a genuine desire to know, and I hope this debate is staying friendly. I certainly don't mean to be confrontational. This is an issue that comes up all the time, and I think it's worth looking at both sides. I'm especially curious about accidental product placements. For example, we've got a shoot coming up in a bar and there are probably 200 bottles on display. If we had to tape over every Beefeater and Johnny Walker label, the location just wouldn't be feasible. These are the type of low-level incidents that I'm talking about. I certainly wouldn't advise anyone to go around picking fights with major corporations over trademark infringements.

Marco,

Not meaning to be confrontational at all, (hope it didn't sound like that) and really it's about a persons comfort of 'exposure'. As a matter of fact, I know a group in a film school situation that did, in reality, shoot in a Starbucks. The film was shown in the classroom and critiqued. That was the extent of the film ... an excercise in the classroom. The potential exposure to the students? Aproaching nil. Of course, the students also used copyrighted music they had no rights to. The film, as good as it was, was a dead end as it existed.

In that sense, your question about 'how likely are they to sue?" becomes relevant. The better you are at what you do... the more likely they are to sue! (Again, in broad terms.) If all youre doing is showing your film to your family and friends, it's probably a non-issue.

But in this day and age, with the power of the internet... distribution of a three minute film to , well -potentially millions of viewers, changes the game a wee bit.

I think that Paul would probably say the best thing to do, is spend a bit of money on an IP attorney, who will look over your idea and give you an idea of your 'exposure'. From there, you make your decision about how comfortable you are with the level of exposure, but at least you're informed. Admittedly, I have an advantage, I can just ask my wife!

(Okay, I could start a whole different thread on being married to an IP attorney.)

And belive me. I do ask her. I am dealing with cutting a documentary I recently shot "American Jouster". I have legacy footage that I may or may not be able to use, musical performances that float in and out of scenes shot at a renaissance festival, live action shows produced in closed venues... It's a can of worms. I'd hate to have to pay her what she's worth.

(Start punch-line here.)

Richard,
Thanks for trying to keep this thread on a more factual level. Seems these Intellectual Property discussions are prone to devolve into personal opinions on how far someone else could go without getting sued.

All,
I'd like to reiterate and comment further on two related points that have already been made in this thread:

1. Daniel specifically asked about legal issues, NOT what he can get away with. And although nobody here is going to go so far as to provide formal legal advice via internet, I'm sure there are lots of anecdotes and info to share that don't involve IP rights violations, or at least portray them for what they are. I applaud him for caring enough to ask about how he can do things properly/legally. Heck, if we don't care about doing things honestly, we don't really have much to write about here...just go do it and cross your fingers!

2. DVinfo is a friendly, honest place (if I'm deluded about that, fill me in so I can scram!). Yup, there are plenty of grey areas worth discussing. But advocating willful violation of intellectual property rights is not appreciated, whether or not one can "get away with it." A lot of people on this board make their living by creating IP, so that kind of discussion is sorta like bringing a six pack of beer into your AA meeting.

Thanks for reading.

<<<-- Originally posted by Pete Bauer :

2. DVinfo is a friendly, honest place (if I'm deluded about that, fill me in so I can scram!). Yup, there are plenty of grey areas worth discussing. But advocating willful violation of intellectual property rights is not appreciated, whether or not one can "get away with it." A lot of people on this board make their living by creating IP, so that kind of discussion is sorta like bringing a six pack of beer into your AA meeting.
-->>>
mmmmmmm beer.....
err, anyway...

One of the problems is that 90% of the people out there either know nothing about IP law, or are completely misinformed about IP law.

The other problem is that the offenders don't consider it wrong, or illegal, like downloading music or software. And those that do really just don't care, or are too lazy to take the proper steps to do it legit. (I think that's the case for most offenders).

Okay, I'm feeling chastened. I hereby repent my evil ways. Any Starbucks executives out there who may be reading, please take note. :)

<<<-- Originally posted by Marco Leavitt : I'm especially curious about accidental product placements. For example, we've got a shoot coming up in a bar and there are probably 200 bottles on display. If we had to tape over every Beefeater and Johnny Walker label, the location just wouldn't be feasible. -->>>

The reality is that you just do the best you can to minimize aggravation in your life. Sure you can't tape over every liquor bottle, but you could have a couple of assistants spend five minutes and turn all the labels towards the wall (or away from the camera). You turn off TVs and radios, paste up a piece of chroma over the TV screen if you need it to be turned "on", so you can add some public domain or fake footage in post. You keep your eyes open as best you can while scouting and shooting. You will get good eventually at spotting logos in a room in 1.3 seconds. Its always a matter of degrees. If you make every effort, you will probably be okay. If you have to ask us, you should probably ask the trademark owner. WIth Starbucks, if you had asked the store manager to SIGN a location release (verbal permission to shoot means nothing later on), you would have found out that he/she was not going to sign anything and you had to talk to someone higher up the corporate chain. If you think you can "get by" you may get surprised later when you make this great movie and film festivals reject it for lack of clearances.

There are more lawyers than filmmakers in this country. Just keep your life simple so you can make movies instead of feed lawyers. When in doubt, leave it out.

As Pete said, we are all friendly. :)
Let's carry on.

btw, what most of you are discussing is why you should get errors and omissions insurance, in fact if you don't have it, you probably won't get distribution. And if you have any corporate logos or visible trademarks in your film, you will be expected to have release forms or contracts permitting them or you probably won't get distribution. Distribution companies do not want to get pulled into a lawsuit that you caused.

And even with all that, someone might sue you anyway. Apparently it's gauranteed if you make a bunch of money.

Joe,

That's something I wonder about, having never had occasion to buy one of these kind of policies. The insurance must provide SOME reasonable amount of protection for "stupid mistakes" or hardly anyone would buy a policy. But, putting myself in the insurance company's place, I'd probably write my policies so I wouldn't end up paying through the nose for every idiot who decides to use an entire Beatles album for their soundtrack because they figure the big ol' insurance company will protect 'em ... the policies must have some pretty significant limits and exclusions? Anyone with experience with these policies have any stories to share?