Brand names - is this illegal?

[Daniel Hollister]

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.

[Glenn Gipson]

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.

[Bob Costa]

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.

[Josh Hibbard]

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?

[Jeremy Rank]

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.

[Richard Alvarez]

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.

[Pete Bauer]

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

http://www.dvinfo.net/conf/showthrea...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/showthrea...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.

[Jeremy Rank]

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?

[Glenn Gipson]

>>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.

[Pete Bauer]

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. ;-)

[Richard Alvarez]

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.

[Marco Leavitt]

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.

[Dylan Couper]

<<<-- 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.

[Richard Alvarez]

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

[Lorinda Norton]

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!