WAIVERS
- The grantor must waive any right to inspect the film or approve of the matter in which the artwork is depicted.
- The grantor must waive any copyright claim to the film itself.
- The grantor must waive any and all moral rights, rights under the Visual Artists Rights Act, trademark rights, or other related rights with respect to the artwork’s use in the film.
Trademarks on the Set
When most people think of a trademark, they think of logos for products (Coke®, Nike®, McDonalds®) or services (Club Med®, SuperCuts®, Amazon.com®). This is fairly accurate, as trademarks and service marks are used: (1) to identify and distinguish a trademark owner’s goods and services from those sold by others; and (2) to identify for consumers the source of those goods and services.
Trademarks are found on product labels, billboards, and clothing insignias. But trademarks can also be sounds, like the NBC three-tone network chime.
Trademark rights can also protect a particular and distinctive way a store is decorated, called trade dress (think the design of every Starbucks® or McDonald’s® you’ve ever visited).
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.
Example:
If you sell a bag of nacho cheese chips and call it “Dolitos,” the Frito-Lay company, makers of Doritos® brand tortilla chips, will probably win if they sue you for trademark infringement. Your brand name is confusingly similar to theirs, and consumers may be confused as to just who is manufacturing the bag of chips in their powdered-cheese–stained hands.
Filmmakers get into trouble when it appears as if the trademark owner endorsed, approved, or sponsored the film.
Example:
The more prominently you feature the bag of Doritos® in a scene, the more it might appear that Frito-Lay sponsored the film. However, if you show a bag of Doritos® fleetingly in your film, you can argue that it is unlikely that a consumer will think that Frito-Lay produced, endorsed, approved, or sponsored the film, and thus there is no trademark infringement.
Informational Use of a Trademark Is Permitted
If you are using a trademark to describe or depict the goods or services of 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®,” as well as 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.
Courts understand that: “[T]he appearance of products bearing well-known trademarks in cinema and television is a common phenomenon.”7 However, note again that it is a court that will make this determination—after the trademark owner has sued you and brought you into court.
Tarnishment
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, the 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 cheerleader’s trademarked uniforms in the context of a pornographic movie.
However, not every negative reference to a trademarked good must be cleared by the good’s manufacturer. Trademark law must yield to the First Amendment, and thus using trademarks to convey information, news, or for comparative advertising, is usually permitted. For example, the makers of Caterpillar® brand bulldozers sued Disney when their 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.
