The Microfilmmaker Community

[GainesJohnson]

I just finished final post production on my first attempt at a microbudget comedy theatrical production. Now I'm concerned that I will not be able to get a distribution deal because, in the film, the main character (a stardom-struck magical cat) claims that she is up for the part of the "new MGM Lion." And the closing scene shows her auditioning for the part superimposed inside the actual MGM trademark graphic.

My gut tells me that the parody clause in the fairness doctine covers this use, because it is impossible to do a parody on an American Cinema icon without reference to the actual iconic symbol. And I know that MGM's lawyers would never willingly license their Trade Mark for a parody. I would like to get the opinion of other filmmakers who could view the use in-context and see if it is indeed a fair use. Here is a link to the movie: Cat! It runs 21 min. Thank you.
Gaines Johnson
(Currently working in Kuwait)

[JeremyHanke]

Gaines,

I'd certainly be inclined to agree with you but I'll see if I can't get some more expert advice on this matter!

Thanks,

Jeremy

P.S. Unfortunately, the lawyer I will be asking is out of his office until the 8th. I'll try to get back with you as soon as possible once I know more.
_________________
--

Jeremy Hanke
Editor
Microfilmmaker Magazine
"Improving no-budget filmmaking through technique and critique."
http://www.microfilmmaker.com
jhanke@microfilmmaker.com

[GainesJohnson]

Jeremy,
That would be greatly appreciated. BTW, I used to work in Lexington back in the 70s at WKYT-TV 27 as an engineer. My hometown is Ashland.
Warmest regards
Gaines

[JeremyHanke]

Gaines,

It really is a small world. I used to work at WDKY (Fox 56), which is practically joined at the hip with WKYT. I used to air a lot of news broadcasts for WDKY that were shot in the WKYT studios!

Where are you living now, Gaines?

-Jeremy
_________________
--

Jeremy Hanke
Editor
Microfilmmaker Magazine
"Improving no-budget filmmaking through technique and critique."
http://www.microfilmmaker.com
jhanke@microfilmmaker.com

[GainesJohnson]

Presently I am working in Kuwait, managing a major U.S. Government broadcasting and satellite telecommunications station. Previously I was working in Munich, Germany (where the "Cat!" movie was actually shot a couple of years ago).

Outdoor filmmaking here in Kuwait is a wee bit difficult, what with the extreme heat and dusty conditions. Since transferring here almost two years I've only made some short videos of ongoing constuction work at my station. The bulk of my filmmaking activity lately has been confined to editing and post projects in the comfort of my home studio.

[JeremyHanke]

Gaines,

Wow! I realized after I asked you where you are that you have your location in your signature! My brother's in the military and just spent some time in Iraq, but only for six months. I grew up in the deserts of Washington state, so I can only imagine how it must be in even starker desert conditions with the heat being what it is out there!

Keep the faith on the filmmaking and let us know if there are any things we can do to be of service!

-Jeremy
_________________
--

Jeremy Hanke
Editor
Microfilmmaker Magazine
"Improving no-budget filmmaking through technique and critique."
http://www.microfilmmaker.com
jhanke@microfilmmaker.com

[Thomas Crowell]

In the following answer I'll try to shed a little bit of light on the confusing topic of trademark infringement. But before I begin, since I’m an attorney, I must start with a disclaimer. Drum roll please….

I am prohibited from providing legal advice in this forum. Therefore, this answer is for educational purposes only, and is not legal advice. Only your attorney can advise you as to which laws are applicable to your particular situation.

Okay. Now that we’ve gotten that out of the way (but look for it again at the end of this post): the MGM logo is a protected trademark; unauthorized use may be infringement. Fortunately for filmmakers, there are a number of defenses, like parody, to trademark infringement claims. But before we get into defenses, let's talk a little bit about trademark law.

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.

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.” 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.

Parody is another defense to the claim of trademark infringement. A parody by its very nature must conjure up the appearance of the original trademark to be a successful parody. The key here is to avoid confusing that audience. Make the parody different enough so that an average person would know that it is not the trademark itself. Use the parody to poke fun of the original trademark rather than just using it for humorous effect.

Example: Jim Henson Productions successfully asserted a parody defense when they were sued for trademark infringement by Hormel Foods over the character from “Muppet Treasure Island.” Henson created a wild boar character named “Spa’am,” and was promptly sued by Hormel, makers of SPAM® brand luncheon meat. The court pointed out that a successful parody must evoke the original to be effective: “A parody must convey two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody. To the extent that it does only the former but not the latter, it is not only a poor parody but also vulnerable under the trademark law.” As the court stated: “No one likes to be the butt of a joke, not even a trademark. But the requirement of trademark law is that a likely confusion of source, sponsorship or affiliation must be proven, which is not the same thing as a `right’ not to be made fun of.”

So how does all of this plug-in to your use of the MGM logo? Well, assuming that you are parodying MGM, are not using its logo in a “trademark sense,” and are not confusing the audience into thinking that MGM actually sponsors, approves of, is affiliated with, or is connected with your film, you may have a defense under trademark law.

Will this stop you from being sued by MGM? Only MGM could answer that. Remember, a strong defense is not absolute protection against a lawsuit.

A personal war story may be illustrative here: one of my first legal assignments was to figure out whether or not a client’s trademark was being infringed upon. My boss at the time, an attorney many years my senior, handed me a list of potential infringers, to whom I was to send “cease and desist letters.” After reviewing the list, I pointed out that one of the potential infringers had a very good defense against our claim. My boss said: “Your analysis is a good one. That defendant does have very good defense… let him pay to make it.”

Trying to figure out whether or not fair use protects a filmmaker can be a daunting task: you have to conduct an analysis under both copyright and trademark laws (we’ve only discussed trademark in this post, although the logo may also be protected by copyright). To make matters worse, the only entity that can give you a definitive answer as to whether or not your use is fair use is a court. Of course, most filmmakers don't want to wait to be sued to figure out whether or not their film is infringing, so they tend to err on the side of caution and take out potentially infringing material.

Incidentally, if you found the information above helpful, parts of it are taken from my new book: “The Pocket Lawyer for Filmmakers.” You can purchase a copy at Barnes & Noble, Borders, Amazon.com, and, strangely enough, Wal-Mart.

THIS POST HAS BEEN PREPARED FOR EDUCATIONAL AND INFORMATION PURPOSES ONLY AND IS NOT LEGAL ADVICE OR A LEGAL OPINION. ONLY YOUR ATTORNEY CAN ADVISE YOU WHICH LAWS ARE APPLICABLE TO YOUR SPECIFIC CASE AND SITUATION.

Mr. Crowell concentrates his law practice in the areas of entertainment and intellectual property law. Portions of this post were taken from Mr. Crowell’s new book “The Pocket Lawyer for Filmmakers,” published by Focal Press. Mr. Crowell can be reached at www.thomascrowell.com.
_________________
Thomas A. Crowell, Esq.
The Law Office of Thomas A. Crowell, LLC

[GainesJohnson]

Dear Mr Crowell,
Thank you so much for this enlightening discourse on trademark law. I fully accept that this was NOT LEGAL ADVICE, but was for educational purposes only. Having said that, suffer me to apply a self analysis to my particular case.

It would appear that there are two key considerations here based on your statement, "A parody must convey two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody. To the extent that it does only the former but not the latter, it is not only a poor parody but also vulnerable under the trademark law.”

I have reviewed my scene, which uses the actual MGM trademark logo with the original lion edited out and replaced by the character "Cat" in costume, and examined how it stood in the light of this statement:

"The essence of trademark infringement is that the consumer might be confused as to the source of the goods or service being marked. Filmmakers get into trouble when it appears as if the trademark owner endorsed, approved, or sponsored the film."

Upon viewing the scene, most reasonable people would immediately know that the logo was used in a parody context. But there could be others who might wrongly assume that MGM actually endorsed (or made) the film, because the name "MGM Lion" was spoken by one of the actors and the original logo appeared towards the end. (I have actually met people with this depth of discernment). Therefore, there may be a real (but extremely low) risk of giving that perception, and I am sure that an MGM lawyer would/could make that argument.

I think my real problem is more with copyright law in connection with the use of the original graphic. So, what I will need to do is parody the graphic image into a form that resembles the original (or at least makes that initial impression). Ways to do that would include removing the words "TRADE MARK" from the image and replace the words bannered above the lion "Metro Goldwyn Mayer" with the words "Movies Generate Money" and a few other changes:



This would effectively be a parody of the MGM trade mark and meet the contradictory message test previously cited.

Well, what think ye?

All kidding aside, thank you, Sir for posting this information which greatly helped me better understand the doctrines involved.
Warmest regards.
Gaines