November 21, 2012 10:00am PT by Eriq Gardner
Hollywood's IP Wars: Inside the Fight Over Trademarks
This story first appeared in the Nov. 30 issue of The Hollywood Reporter magazine.
When the Mayans foretold of a 2012 disaster, were they referring to a Hollywood "trademarklawpocalypse"? Consider these recent legal fights: The owner of William Faulkner's intellectual property rights sued Sony Pictures Classics on Oct. 25 over two lines used in Woody Allen's Midnight in Paris. Anheuser-Busch, maker of Budweiser, objected on legal grounds to Denzel Washington's overconsumption of its beer in Paramount's Flight. And publishing house Rizzoli demanded in October that NBC stop using "Rizzoli" as Ray Romano's character name on Parenthood.
All these spats concern one of the hottest legal issues in Hollywood: who gets to use trademarked intellectual property in films and TV. If copyright law protects creative works from being ripped off, then trademarks (think James Bond or Hobbits) might best be described as safeguarding a signature mark of identity from being exploited by others. Brand owners typically can't stop a movie or TV show from mentioning a trademarked phrase or showing a logo, but they can prevent a "likelihood of confusion," meaning the average consumer can't discern affiliations, connections or associations between one product and another.
So when Anheuser-Busch complains to Paramount, it argues that consumers -- so accustomed to seeing product placements in films -- might think Budweiser endorsed its appearance as Washington's preferred bender booze in Flight. Many people assumed Jaguar paid for its cars to be featured on Mad Men this season -- until a major character was thwarted in his attempted suicide by a defective roadster. Studios often seek to avoid potential problems by simply using fake names when brands don't pay to be included.
After all, there's big money in licensing trademarks: Almost $6 billion globally each year, according to Ibis World. For this reason, there's been a gold rush to register marks at the U.S. Patent and Trademark Office. When Beyonce and Jay-Z had a child in January, their first order of business was to register her name, Blue Ivy. "Tebowing" and "Linsanity" were gobbled up during their respective sports frenzies. Charlie Sheen registered "Duh, Winning" during his infamous meltdown. And from the trademarking spree has grown increased enforcement.
"Trademark law is the quietest sibling of the intellectual property family but capable of lots of damage," says Charles Colman, an attorney who recently coined "trademarklawpocalypse" (and, of course, he has trademarked the word).
In a sign of just how trendy trademarks have become, Christian Louboutin in September convinced an appellate court to recognize that women's shoes with red soles and different-color tops were sufficiently distinctive to merit trademark protection.
If "red soles" are in bounds, what's next? Might an auteur like Quentin Tarantino be able to claim ownership of his style of filmmaking? In May, JibJab, the producer of viral videos, sued the White Castle burger chain for releasing an ad campaign that "copies the look and feel of JibJab's well-known cutout animation style" and "reaped the benefit of JibJab's goodwill associated with its trademarks." Andrew Price, a trademark specialist at the Venable law firm, imagines a similar claim from a Hollywood director: "It would be interesting to pursue something like that."
Lawyers are quick to caution that there are First Amendment defenses against trademark suits alleging a likelihood of confusion. In June, Warner Bros. defeated a claim made by Louis Vuitton over a knockoff handbag used in The Hangover: Part II by pointing out that it was artistically relevant to the film. (Now the studio is on the other side, suing the makers of the cheapo movie Age of the Hobbits for allegedly violating its trademark in The Hobbit.)
Nevertheless, for a number of technical legal reasons, some attorneys say that trademarks now serve as better weapons in court than more traditional copyrights, harder to defeat at the early stages of a lawsuit. And although Hollywood studios are defending claims ranging from beer to handbags, the truth is that they too have reasons to get behind increased trademark enforcement.
The copyright term is lengthy but finite, and some works overlap with what's in the public domain. Hence, Warner Bros. has been assertive over its trademarks from The Wizard of Oz because the copyright in the underlying book is public, allowing similar movies (see Disney's upcoming Oz: The Great and Powerful). In addition, as studios are under threat by authors attempting to terminate copyrights, trademarks represent a backup plan. When Victor Willis of The Village People snatched back his songs, his publisher scored revenge when a court ruled it still owned trademarks on the band's name and logo.
As Christian Louboutin's "red sole" victory shows, the scope of protection can be expansive. For instance, Relativity Media now owns a "motion mark" over its animated logo sequence. And TV companies aren't afraid to fight with their stars for right to exploit catchphrases on T-shirts, hats and other merchandise -- see Viacom's recent spat with Jersey Shore's "The Situation" over "GTL" and A&E Television's battle with Storage Wars' Dave Hester over "Storage Warrior."
"It used to be very hard to get Hollywood to pursue trademarks," notes Price. "Now they are waking up to the power of registration and claims. It's an overcorrection. They now want to file everything under the sun."
The Mayans did, after all, base their doomsday prophesies on celestial events.