The Do's and Don’ts of TM Use and Product Placement in Productions

Buy a can of Coca-Cola® and it might cost you a dollar or two. But put that can in the hands of the leading man in your production and he’s wielding something that’s worth billions of dollars: the Coca-Cola® brand. It's all about product placement.

In Part 1, From James Bond to Superman: Is Product Placement the Next Wave of Advertising?, I discussed the growth of product placement into a multi-billion dollar business. We will now focus on potential legal issues if branded products appear in productions without permission of the brand owners.

While trademarks and brands can be used in films and other productions, be careful how you portray the trademark. An incidental display of a branded product in your production may not violate trademark rights. But tread lightly and consider some of these dos and don’ts before your leading man (or woman) takes a swig of that tasty beverage on screen.

Use product placement for its intended purpose.

You can generally show a car logo in a production when someone is driving the car since it is used for its intended purpose. But use of a car for another purpose can result in a marketing nightmare for the car brand and potentially dangerous legal territory for the content producer. This was the case for Jaguar U.S. when a major character on the Mad Menseries attempted suicide by asphyxiation in one of its luxury-brand cars. Although Jaguar opted to forego legal action, you may not be so lucky.

Negative portrayal and false or misleading comments are a no-no.

Disparaging or harmful use of a brand can damage its reputation and goodwill and subject you to liability. Let’s say you are making a film about a celebrity with a legendary drug problem who is shown guzzling a case of Budweiser® before he gets behind the wheel of a car resulting in a bad ending. Anheuser–Busch isn’t going to like this portrayal of its popular libation. But other rights owners may have no qualms with their brands being associated with what some may consider unsavory or negative topics or behavior (think Seinfeldand Junior Mints, and Harold & Kumar Go to White Castle…in both cases, other brands turned down the opportunity to be attached to the production).

And even if you use a “knock-off” product in your production, you could still be pulled into a legal feud. Just ask Warner Bros. In The Hangover Part II, Alan refers to his LVM-marked knock-off bag as a “Lewis Vuitton.” The judge ultimately dismissed the case on First Amendment grounds but not before Warner Bros. expended time and effort in defending itself against the fashion house’s claim of infringement.

Avoid likelihood of confusion in product placement.

If the use of a trademark may lead consumers to mistakenly believe that the use was approved or sponsored by the trademark owner, legal trouble could ensue. So use branded products in a manner to avoid any suggestion or implication of sponsorship by the brand owner.

Fair use is good.

The legal doctrine of fair use permits limited use of a trademark without permission from the owner and includes nominative use and parody. This is why Saturday Night Livecan get away with a fake commercial for Preparation H. The incidental or de minimususe of a trademark in the background of a scene for a few seconds has also been deemed fair. But a word of caution - the line between fair use and not-so-fair use is not always clear.

Consider the brand at issue.

The more famous and valuable the brand, the more likely you could be asking for trouble. Some brand owners fiercely police and protect their valuable trademarks and have legal teams ready to pounce on the slightest infraction- even when they are on dubious legal grounds- and you may find yourself on the other side of the table from a brand owner with much deeper pockets than yours.

Include acknowledgment of ownership of displayed trademarks.

It may not be enough to avoid potential legal issues entirely but it definitely can’t hurt. Including a notice of ownership of any brands or trademarks used in a production (e.g., during the credits) can go a long way in a dispute.

Get permission for product placing showing brand names.

When using another party’s brand in your production, the best and safest course of action is to get permission from the brand owner. Alternatively, blur or mask the branded product- or remove it- to avoid venturing into dangerous legal waters.

It is now norm for characters in films and television to drink, eat, drive, purchase, and wear branded products. If you aren’t lucky enough to be paid the big bucks to have brand owners’ products featured in your production, don’t despair. You may still use trademarks and branded product placements in your productions with little or no legal risks provided you follow these (and other) guidelines. And when in doubt, consult legal counsel or just don’t do it. Otherwise, you may be forced into a battle against one of the brand giants.

For more information on this topic, please visit our Trademark Management service page, which is part of our Trademarks practice.

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX. The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights. The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. Additional information about the trademark law firm and its trademark attorneys may be found at www.klemchuk.com.

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