Digital Video - November 2007 - (Page 65) > WHAT’S FAIR? the trademark owner, generally your use is informational, and you don’t need permission from the trademark owner. Example: Max Mogul is shooting a documentary about soft drinks and wants to feature a montage of the changing shape of the Coca-Cola bottle throughout the 20th century. Even though both the name “Coca-Cola” and the shape of the bottle itself are registered trademarks of the Coca-Cola Company, it is unlikely that Max needs to seek the company’s permission, as his use is informational. However, note again that it is a court that will make such a determination— after the trademark owner has sued you and brought you into court. Unlicensed use of famous trademarks can get filmmakers into trouble when the trademark is depicted in a vulgar or disparaging context. In such an instance, trademark owners can sue for tarnishment. To be tarnished, a trademark must be both famous and cast in an unflattering or unseemly light. One such case arose when the Dallas Cowboys Cheerleaders successfully sued the makers of the adult film Debbie Does Dallas for using the cheerleaders’ trademarked uniforms in the context of a pornographic movie. However, not every negative reference The more the following factors are present, the more likely it will be for a court to find copyright “fair use”: The unlicensed work that you’re using is only shown briefly on camera. The unlicensed work is not the focus of a scene. Only a portion of the unlicensed work is shown. The unlicensed work is being commented upon, criticized, or parodied. Your film is educational or informational. Your use of the unlicensed work will not hurt the market for that unlicensed work. The unlicensed work is a faithful reproduction of another work in the public domain. You are a teacher using a small part of the unlicensed work as part of a classroom exercise. You are creating a news report in the unlicensed work appears incidentally in the scene of an event being reported. Your use of the unlicensed work is transformative. of a Starbucks or McDonald’s franchise). In general, there are broader fair use and free speech rights concerning trademarks than there are for copyrights. The essence of trademark infringement is that the consumer might be confused as to the source of the goods or service being marked. Typically, filmmakers get into trouble when it appears as if the trademark owner endorsed, approved, or sponsored the film. If you are using a trademark to describe or depict the goods or services of > CLEARANCE CHECKLIST Clearance is a three part process: 1. Determining what materials on set are protected by IP law. 2. Analyzing whether or not the filmmaker needs to seek permission for IP protected materials. 3. Seeking and obtaining permission from rights holders where necessary. The following items can cause problems if featured in a scene without first clearing their copyrights and/or trademarks: Paintings Posters Sculptures and sculptural reproductions Books and magazines Product labels T-shirt logos and designs Dolls, action figures, and other toys Location background music Live musical performances Dance choreography Halloween masks Television or video clips which play over an on-screen television Video games Street performances Billboards Storefront signs Trademarks used in a manner that tarnishes or slanders their image to a trademarked good must be cleared by the good’s manufacturer. Trademark law must yield to the First Amendment, and thus the use of trademarks to convey information or news, or for comparative advertising, is usually permitted. For example, the makers of Caterpillar bulldozers sued Disney when Caterpillar machines appeared in the film George of the Jungle 2 and were described as “deleterious dozers” and “maniacal machinery.” The court sided with Disney, and the case settled. The point here for independent filmmakers to remember is not just that Disney won, but that they got sued in the first place. Remember, when in doubt, seek permission! DV Thomas Crowell (www.thomascrowell. com) concentrates his law practice in the areas of entertainment and intellectual property law. Portions of this article were taken from Mr. Crowell’s new book, The Pocket Lawyer for Filmmakers, published by Focal Press. www.dv.com dv november 2007 65 http://www.thomascrowell.com http://www.thomascrowell.com http://www.dv.com
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