Greeking the Way to go with logos/trademarks?

[Matthew Kaplan]

If you have to use a trademark item in your film, is greeking it, as they say, a good idea and legally safe?

For instanct, if you take a basketball and cover up the name with a piece of white tape does that work?

I mean can you take nike shoes, put a pice of tape over them and write something fun like SUPER SHOES... or is that even worse if you never touched it at all?

Is it better to leave the logos and names alone or greek them?

Also I have a scene where a character sorts through CD's.... not closeups... but I guess if you tried you might be able to make out some of the artists names and cover art.

Should I try to avoid that as well?

thanks for all te great help.

[Paul Tauger]

I've written about this quite a bit. Do a search on the board on my name and "trademark" and you should find some posts.

[Matthew Kaplan]

I did do some searching, before and after, and still didn't find what I was looking for.

I looked at 25 film books, searched all over the internet, and still no real answer.

As with most books they give you the general.

That is why I'm asking fellow filmmakers to chime in.

Ones who have been there and already figured it out ,either by talking to lawyers themselves or learning what they did wrong.

So, if you have make a short film, and faced these problems, what did you do and is greeking it, the way to go?

Thank you.

[Paul Tauger]

One of the threads is here:

http://www.dvinfo.net/conf/showthrea...threadid=14588

To save you the trouble, here is what I wrote:

There are two concerns with using identifiable trademarks in a film. The first is that audiences will believe that the owner of the mark sponsored, endorsed, or is in some way affiliated with, the film maker. This results in a violation of Section 42(a) of the Lanham Act (false designation of origin), and can result in liability for trademark infringement. Clearly, someone who shoots in Times Square in New York and includes a glimpse of the Sony Jumbotron in the background of a shot is not likely to be liable for causing consumer confusion (the touchstone for trademark infringement). Someone who features the Sony Jumbotron as the centerpiece of a shot is taking a bigger risk. At the other end of the spectrum is a film like E.T. -- Reeses Pieces where such a central part of the story, that using them without permission would almost certainly result in liability for trademark infringement.

The second concern is another section of the Lanham Act (Section 42(d)), which addresses trademark dilution. Even if there is no likelihood of consumer confusion, using a "famous mark" in such a way as either tarnish the mark, or dilute it's source-identifying characteristics, will result in liability (if the use was intentional) and could get the "diluter" enjoined. The classic example of tarnishment is the use of the distinctive "Coke" script in a 1970s poster that duplicated the mark, but spelled out "Cocaine." I can't, at the moment and off the top of my head, think of a good example of a dilution case.

Getting back to the original poster's question, the U2 poster is problematic, both because of trademark infringement, the possibility of liability of misappropriation of likeness, and copyright infringement of the poster, itself (do a search on "incidental reproduction" in this newsgroup -- the discussion about using background music played by a DJ or band applies to this instance as well). Merely having an Apple computer in a shot may or may not result in liability, depending on how it appears, and how identifiable it is as an Apple product (Apple has protectable rights in the appearance of their computers, called product configuration trademark or trade dress, as well as the Apple logo and trade name).

Whether there could be an additional problem with dilution depends on what the film is like. As a rule, porno, or something perceived by a conservative judge as porno, will almost certainly constitute tarnishment dilution (there's a famous case brought by the Dallas Cowboy Cheerleaders against the producers of the movie, "Debbie Does Dallas.") As Mike pointed out, using Gerber jars in a child porno film would clearly present a problem. A serious work with undisputed artistic quality, on the other hand, probably would be not run the risk of tarnishment (though may otherwise constitute non-tarnishment dilution).

Of course, without seeing your film, it is impossible for me to say whether or not you're skating too close to the line. The best advice I can give is, if you're going to be entering this into festivals and the like, pay an attorney a couple of hundred bucks to review it (or even offer the attorney a screen credit in exchange for offering production advice). This is a judgment call that shouldn't be made by a non-lawyer.

There's another thread here:

http://www.dvinfo.net/conf/showthrea...threadid=11085

With respect to showing products and/or brand names, the concern is the Lanham Act, which is the federal trademark law which prohibits use of a trademark so as to cause likelihood of consumer confusion as to origin, sponsorship or endorsement. It is this latter that causes concern -- would the audience think that the mark owner endorsed or sponsored the film? In most cases the answer is, "no," and there is no liability for trademark infringement created (which doesn't mean that you wouldn't get sued anyway).

An additional concern, with respect to marks, is trademark dilution, defined in the Lanham as causing a famous mark (only famous marks are protected against dilution) to either be tarnished, i.e. brought into disrepute, or to have it's source-designating character diminished. Having a character in a porno film drink from a Coke can is a good example of tarnishment.

[John Heskett]

I don’t know the answer to your question and I have not seen it addressed here before.
I do feel people should at least understand your question.
The question is NOT “Can I use trademarks and logos in my short?”
The question is “Can I REMOVE the trademark and logo from an item and then use it in my short?”

[Matthew Kaplan]

Yes that is what I am saying. Actually Paul, the first thing you posted was from my other thread. I"m the U2 poster guy.

I read copyright and clearences last night and it said you are allowed to use trademark and logos in your film. that you have a right to make a realitstic film, but he says if the camera hangs on an object too long to get permission.

He said, if the product is not portrayed in a negative way, that it should be fine.

But at the same time he said dont' create a KNOCK OFF of an item, but to create something original. That was a bit confusing.

I have a nerf ball in my script that talks. IN reality it is never referred to as a nerf ball, it's just a mini-basketball.

I was going to make my own puppet. I aassume that is an original item, not a knock off.

In reality it is just a ball. But if I make it orange and my character uses a mini-hoop lots of people who thnk, o it's a nerf ball, but I don't know if that is a violation.

You're heads spins, especially when you are making a short film that you thought the hard part was getting the actors and the camera.

[Paul Tauger]

John said:

The question is NOT “Can I use trademarks and logos in my short?”
The question is “Can I REMOVE the trademark and logo from an item and then use it in my short?”

Read carefully -- if there's no risk of consumer confusion, then there is no infringement, i.e. removing the logo is fine. However, also note that the appearance of a product may be protected as well, i.e. removing the logo would not be fine. There's no black-and-white answer to this question. There is, however, an understanding of the underlying legal principles, which offers some guidance.

Matthew said:

read copyright and clearences last night and it said you are allowed to use trademark and logos in your film. that you have a right to make a realitstic film, but he says if the camera hangs on an object too long to get permission.

That's right -- sort of. From a trademark perspective, the risk is creating the impression that the trademark owner sponsored or endorsed the film. The problem is, there's no magic amount of time sufficient to ensure that doesn't happen.

However, from a copyright perspective, it's dead wrong. If you include someone else's copyright-protected expression in your video, you've infringed.

He said, if the product is not portrayed in a negative way, that it should be fine.

Also not quite right. If the presentation of the product doesn't result in a likelihood of consumer confusion AND it is not presented in a negative way, you'll avoid liability for tarnishment. However, you may still be liable for dilution.

But at the same time he said dont' create a KNOCK OFF of an item, but to create something original. That was a bit confusing.

To me, as well. I suspect that what he meant was, don't create a copy of a mark (or protected trade dress) such that consumers might mistake it for the original. In other words, if you're going to use something that looks like a Coke bottle, merely creating a copy, minus the logo, won't do it (the appearance of the classic Coke bottle is protected trade dress).

I have a nerf ball in my script that talks. IN reality it is never referred to as a nerf ball, it's just a mini-basketball.

I was going to make my own puppet. I aassume that is an original item, not a knock off.

You understand that I can't give you legal advice -- you're not my client, and my malpractice carrier won't allow it.

The question is whether the Nerf company (or whoever makes the thing) has protectable rights in the product configuration, i.e. the way the thing looks. I doubt whether there are assertable rights in a sponge ball -- even one that looks like a basketball. Aren't there similar products on the market made by other manufacturers? There are certainly protectable rights in the mark "NERF" that would preclude using anything close ("NURF," "SURF," etc.). The backboard may be a separate concern. I used to have one of these things in my office. As I recall, it was rather stylized. However, if it's just a miniature of an NBA hoop AND the NBA doesn't have protectable rights in its appearance, than it's probably okay.

You're heads spins, especially when you are making a short film that you thought the hard part was getting the actors and the camera.

I agree. That's why, John notwithstanding, lawyers have to get involved in these kind of determinations.

I may have asked you this before, in which case I apologize: are you a student/member of a non-profit arts group/otherwise deserving entity? Most lawyers, including myself, do work on a pro bono (free) basis.

[Ken Tanaka]

Matthew,
As a matter of contextual consideration what is the production and distribution nature of the work we're talking about? Is is basically a home movie? Is it something you expect to sell/distribute widely? Something you'll place on a Web site?

To some degree, your answer may determine the real degree of legal hazard you face.

[Rob Belics]

OT -- I'm sure many of us would like to thank Paul for his notes and answering these posts.

[Ken Tanaka]

Indeed, Paul has had the patience of a saint in answering legal questions here at DVInfo for quite some time. Searching for his posts produces a veritable Nolo Press reference for videographers and filmmakers. I think we ought to take up a collection and send him some sticks!

[K. Forman]

Pro Bono? My ears perked up on that one, and did it ever hurt! You never mentioned Pro Bone in our discussions Paul, just your rate. If you have a chance, shoot me a line, and let me know if this is something we could work with in my case. That is, if you have finished moving, partner issues, trial issues, back issues... ;)

[Paul Tauger]

At my old firm, this kind of pro bono stuff was more difficult. I suspect my new firm may take a more generous view, not to mention the fact that I'm now a partner which gives me a little (though just a little) more control over how I spend my time. I'm actually thinking about proposing dvnet as a pro bono outlet to my firm, i.e. I could actually give advice in my posts, rather than restrict myself to discussions of general principles of law. Don't know if they'll go for it, though.

In the interim, email me at:

ptauger@schnader.com

[John Heskett]

Now, this is good.
My main interest was to get something going that would actually address Matthew’s question.

Yes Paul has given much time and energy into answering questions on this forum. Thank you Paul.

[Matthew Kaplan]

Paul is being very generous and I know he wants to help. but as he said, he can't give advice.

Is this true? Is it forbidden for you to give legal advice over the forum?

Maybe I'll read between the lines and e-mail you.

anyway, to the other non lawyers or those pretending to be, any answer to my question.

Like I said I've read many books and I now know some of the laws and terms, but as usually, that is why you need lawyers to translate them into real life.

Basically the law says, here is a general statement that can protect you or hurt you.

I wish more things were black and white. I know in this country we can't agree on much, but how about a law at least tells filmmakers what they can and can't do.

I making short Mini-DV film that I just hope turns out well. But I might, if it is good enough, put it on the web, film festivals, send it along with a feature length script to producing comapnies to market myself as a writer/director.

So that is why I"m asking legal questions.

Figured since I'm learning so much about the DVX-100, might as well learn everything I could about all aspects so when I try to make a feature I'm not in the dark.

My girlfriend tells me to stop making excuses and stop being afraid. I agree.

But at the same time, even though it seems very slight since this is a short film (which has to be less of a target than feature films) and I dont' have no actors... I have 2000 to my name.... and my friend Carl is in the piece....

It just seems that why would coke sue me, unless my film did well... which would probably mean someone picked it up, but it's a short film so that wont' happen....

My advice to myself is do the best I can, but dont' stress about it.

I can't wiat till i try to do a feature, then I will go insane.

[Paul Tauger]

The reason I can't give legal advice to non-clients is that my firm's malpractice carrier won't allow it. In order to become a client, we run a thorough conflicts check, among other things. If I start giving out legal advice, by definition, under California law, that person becomes my client, whether or not I've accepted a fee. This exposes my firm to liability for malpractice which isn't covered by insurance and is something the partnership simply won't permit.

Non-profits, students, etc. are pretty easy to get through our pro bono committee, I think. Small business folks are another story. One possibility is to get my activities posting here accepted as a pro bono effort. It wouldn't mean any obligation for dvinfo.net. It would just mean I could answer questions directly, and I'd be able to sign my firm's name, as well as my own.

I'd really like to find a way to do this pro bono. My usual client is a medium-sized corporation with a sufficiently large legal budget that my fees aren't an issue. The biggest problem with the US legal system is that the average small-business owner/individual can't afford access.

I'll ask the powers-that-be this week.