Trademarks are valuable intellectual property assets with unique considerations for entertainment businesses, particularly with respect to content creation. That is, companies are either looking to establish and protect trademark assets they create, or avoid litigation related to use of third-party trademarks.
The following are a few important concepts for trademarks in entertainment:
1. Trademarks are essentially source identifiers of goods and services.
While common to trademarks in all industries, the concept of “source identification” of goods and services is essential to understanding trademark protection and infringement in the entertainment context. One of the fundamental goals of trademark law is to protect consumers from confusion as to source or affiliation of goods and services.
A trademark is any symbol, word, or phrase used to identify the source of a product or service. Proper establishment of trademarks enables consumers to identify goods or services as being of a certain quality by reliably associating the product or service to a particular source.
For example, the Marvel logo is a trademark. When the logo is placed in the opening credits of a film or on the back of Captain America toy box, consumers know (or assume) that film and toy to be from a specific source- Marvel Entertainment, Inc., and thus, of a specific level of quality. Accordingly, third party film makers and toy manufacturers cannot use the Marvel logo (or a confusingly similar logo) in connection with their films or toys if such use would create consumer confusion as to the source. If there is a potential for consumer confusion, best practice is to obtain the consent of the trademark owner.
2. You do not always need consent to use a trademark.
Do you need the consent of Uber to show a character getting an Uber ride? Do you need the consent of Pepsi to show a character drinking a Pepsi soft drink? There are many scenarios where use of third-party trademarks arises in entertainment content and storytelling. Creators of entertainment content (e.g., film, TV, video games, etc.) do not always need consent to use third-party trademarks. Whether or not consent is required depends on the concepts above, i.e., the nature of use and potential for consumer confusion as to the source or affiliation.
As a general rule, (i) if you are using a trademark for the intended purpose, i.e., the use of the mark is “artistically relevant” to the context of the story, and (ii) the viewer is not confused as to the source, sponsorship or affiliation of the mark, then you do not need consent from the brand owner. However, the line for potential confusion can be blurry and the resulting potential for litigation uncertain. This is because consumer confusion (and consequently trademark infringement) is determined by a multi-factor legal analysis, and the subjective and uncertain nature of the analysis makes it difficult to predict getting hit with a lawsuit, let alone the potential outcome of the lawsuit.
For example, why did producers of the film Any Given Sunday use fictional football team names and the producers of the HBO show Ballers use real NFL team names, when the NFL did not consent to either? While the depictions of Any Given Sunday and Ballers were likely within the scope of “artistically relevant” use, the producers of the respective projects may have differed as to potential for consumer confusion. Often it comes down to risk tolerance for potential litigation. While some may feel confident their usage does not create consumer confusion, others may not want to deal with the potential disruption and cost of litigation.
3. Dilution claims only apply to famous marks.
Even if there is no potential for consumer confusion, improper use of the trademark may arguably diminish the value of (or weaken) a trademark. However, dilution claims are only available for “famous marks.” Dilution can occur if there is blurring or tarnishment by the third-party use. Going back to the example of NFL teams above, it is possible the producers of Any Given Sunday were also concerned about potential dilution claims given the generally negative depiction of the professional football league in the film.
4. Do not misuse the good or service.
If you believe there is no potential for consumer confusion and intend to use a trademark in your film, show, videogame, etc., without consent from the brand owner, make sure the depiction of the use of that product or service is not negative. For example, do not depict the product or service as defective or dangerous. Such depiction, even if there is no potential for confusion or dilution, can still negatively impact the value of the brand and open you up to potential claims for trade libel or product disparagement.
5. Apply for trademarks early and secure related properties.
If you are creating a brand, such as a production company, talent agency, podcast series, etc., and you want to protect consumer association of your brand name (or logo) with that particular service or product, you will want to obtain federal trademark protection as well as secure related properties under that brand name.
Federal trademark protection provides substantial rights and remedies against third party infringers. It can also provide an effective deterrent against infringement from the outset. When you protect and obtain federal trademark protection for your brand, you further establish it as intellectual property and resultingly increase its asset value.
However, securement of federal trademark registration can be complicated and involves a long application process. There is no way to expedite the federal application, and normal processing times can take anywhere from 8 months to 5 years depending on the issues raised by the examiner. Therefore, if you intend to build a brand and want to protect against third party interference, its essential to evaluate potential conflicts and apply for federal registration early. Filing applications before actual use and for the anticipated goods and services will help avoid potential opposition and litigation costs down the road.
In addition, you will want to secure all applicable and relevant exploitation properties under that brand name. For example, secure the domain name URL as well as social media handles for the name. Secure these properties for the identical name and reasonable variations. These will help provide specimens of use for the trademark certification process and prevent against cybercasters and undesirable fan sites.
Shahrokh Sheik is a Partner at the Los Angeles office of Weinberg Gonser LLP. He provides trademark transactional and litigation consultation for clients in all industries, including entertainment.