Ask Greg: Yes Trademark Fair Use Exists!

Q: I’m writing a pilot for a TV workplace comedy and my characters work for a low-rent competitor of a real fast food chain. Can I mention the real chain without getting sued?

Okay everyone, say it with me now: “It depends!”

How you reference an existing brand will dictate whether you become liable for trademark infringement or public disparagement of the brand. but there are carve-outs in trademark law that allow you to fairly reference an existing trademark without getting into trouble. Yes you heard me right; trademark fair use exists!

Section 1115(b)(4) of the Lanham Act states:

That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin….

Typical legal gobbledygook. What this is really saying is that you can mention another party’s trademark if you’re doing it in good faith and in a way that isn’t intended to piggyback on the commercial success of the mark. How? Glad you asked. There are three main ways. You can…

Reference The Mark In A Descriptive Way

Some trademarks are known as "descriptive marks" because they use existing words and phrases to describe a characteristic of the product or service. For example, Best Buy is a descriptive mark because it describes the quality of their pricing:“You will literally get the best buy in our stores.”

A hallmark of descriptive marks is that the words used in the mark have a primary meaning. Those words are then refashioned to have a secondary meaning, thus creating the mark (i.e. “best” and “buy” had meanings before Best Buy appropriated them to mean something else). The Lanham Act allows you to reference a trademark if you’re using the primary meaning rather than the secondary, commercially-protected meaning. Just because Apple is a registered trademark doesn’t mean you can’t still use the word “apple” to sell apples and other apple-related products. And you can fairly state that your apples are a "best buy" in the marketplace without infringing the corporate name. And just because Donald Trump registered the phrase “You’re Fired!” for his erstwhile NBC reality-show, doesn’t mean you can't say “you’re fired” to under-performing employees of your apple company. 

Apple, Best Buy, and “You’re Fired!” took on secondary meanings because of the way they were used in the marketplace. But as long as you stick with the primary meaning of the words, you’re protected by fair use. You can also…

Reference The Mark In A Comparative Way

In advertising, comparisons between brands is a key factor in showing what your product or service can do. The Lanham Act permits advertisers to reference a brand by name for the sake of comparing one brand, service, or product, against a competing one, as long as the ad isn’t deceptive. There are certain First Amendment implications to preventing this type of use and it also promotes healthy competition, allowing consumers to make informed choices. 

This exception is pretty useful, but it applies mostly to advertisers (which isn’t to say you can’t utilize it when the time comes). In my experience though, both as an attorney and as a TV producer, this last one is by far the most useful for artists and filmmakers alike…

Reference The Mark In A Nominative Way

Back in 2006, I was on a shoot for a Court TV show in Louisville. Our camera guy filmed b-roll out the window of a moving car. Later, when the show was edited and the shot was used, our general counsel instructed us to blur the shot into oblivion because half a dozen famous logos were seen passing in the background - KFC, Starbucks, Kohls, Target, Chilis, you name it. The request struck me as nonsensical but we did it anyway because he seemed scared of getting sued.  Even today, if you watch a reality show (especially if it’s on the E! Network) pay close attention to all the logos that get blurred out. That’s a producer who is afraid of being sued and who doesn’t know about trademark fair use.

When you refer to the owner of a mark or their goods/services without attempting to use the actual mark for its commercial appeal, that’s considered a nominative use. Simply referring to the existence of Burger King doesn’t mean you’re trying to appropriate the mark or convince others that Burger King has endorsed you. Likewise, having a character drink a Coke on camera doesn’t imply sponsorship or endorsement by The Coca-Cola Company. With branding and content staring at us from every angle, to prevent all uses or mentions of any simply because permission wasn’t given creates a dangerous slippery slope. As this blog succinctly points out:

[A] great deal of useful social and commercial dialogue would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademarks.

If this exemption didn’t exist, many content creators would be locked in perpetual litigation. Back in the 70’s and 80’s, you saw this fear play out first hand if you ever watched a sitcom. How often did you see a character take swig from a generic can of “Cola” or eat from a box of “Cereal O’s?” Product placement didn’t exist at the time and the networks didn’t want to anger any current or potential sponsors. Things have certainly changed in the last ten years. Yeah, if Leonard on The Big Bang Theory drinks a can of Diet Coke, there’s probably a product placement deal in place between Coca-Cola and CBS, but even if you’re making a small indie movie where you can’t get that permission, it’s okay. You can still use it. And that makes sense, doesn’t it? This is the world we live in now. Branding is everywhere; it’s inescapable. It doesn’t make sense to force artists and filmmakers to constantly shell out huge licensing fees to simply acknowledge the existence of a brand. 

In a recent case, a federal court in Kentucky dismissed a lawsuit by several horse racing track owners and jockey clubs against Encore Racing Based Games, a video game company that identified those race tracks by name to describe where actual historical horse races took place. According to the court, Encore was “fully within their rights to describe where an event took place in their wagering system without implying the owners of the racetrack are sponsoring the game…even when the location described is most commonly conveyed using a registered trademark….”

This is the way it should be. 

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As with everything I write here, there are always exceptions upon exceptions upon exceptions. All cases are fact-specific and even if your situation seems close to something I’ve mentioned above, you should always talk to an intellectual property lawyer in person. But rest assured, trademark fair use exists and you can use it.

Greg Kanaan

The [Legal] Artist, Boston, MA, USA