Who's the 'Permission Guy'?

[Paul Tauger]

Originally Posted by Scott Moore

Paul, how about a dry run...let me describe the scenes to you:
THE BANNER -
'hard cut to a child's bedroom at night...the back wall is in focus, with a Lakers
banner hung on the wall...dad enters frame, walks in front of Lakers banner, camera pans down to child - total screen time for Lakers banner: 2.5 seconds'
THE JERSEY - 'fade in on moving photo montage....old photo of dad & son...dad is wearing a replica dodgers jersey with shorts....total screen time for Dodgers jersey...less than 2 seconds.'
GENRE - G-rated family drama.

Well, first, I can't provide legal advice here and, in any event, this is still not enough information to provide an opinion, even if I was inclined to do so.

Trademark infringement is determined by an evaluation of 8 factors (called the "Polaroid Factors" after a case by the same name). These are the relevant factors:

1. Similarity of the marks
2. Proximity of the goods or services
3. Strength of the mark
4. Similarity of marketing channels
5. Degree of care and sophistication of purchasers
6. Defendant's intent in adopting the mark
7. Evidence of actual confusion
8. Likelihood of expansion of product lines

Without knowing the answers to all of these with respect to your film, I couldn't predict whether a specific use would infringe or not.

[Jay Gladwell]

Originally Posted by Paul Tauger

These reservations-of-rights statements are nice, but don't necessarily have legal effect. I can use the mark, "Major League Baseball" without permission provided that there is no likelihood of consumer confusion or dilution -- in fact, I just did. There is no such thing as ownership of words -- there are only the rights protected by law, i.e. copyright, trademark, patent and trade secret.

Paul, it's referring to the logo(s) of the MLB and the teams which comprise it.

Scott, just get on the phone and ask the respective organizations. They'll answer your question.

Jay

[Paul Tauger]

Originally Posted by Jay Gladwell

Paul, it's referring to the logo(s) of the MLB and the teams which comprise it.

Doesn't matter -- it's just another species of trademark, unless there's enough expressive content to contain copyright protection as well.

I can use anyone's trademark, including their logo, without their permission, as long as I don't dilute it or infringe it by causing a likelihood of consumer confusion as to source, sponsorship or affiliation. I could use someone's copyright-protected expression without permission as long my use comes within fair use doctrine, or is otherwise authorized by statute (or doesn't infringe one of the protected rights). Interestingly enough, merely possessing an unauthorized copy of protected expression, i.e. an infringing copy, is not illegal. I own unauthorized copies of protected expression, and there's nothing anyone can do about it, as long as I don't use them in such a way as to violate a protected right.

The point is, just because there's an onerous reservation of rights statement doesn't mean that it's a correct statement of law or enforceable in any way.

[Scott Moore]

Paul - you're killing me, man...I keep teetering both ways: 'we're in violation...
no wait, maybe we're not in violation...' And I had a rough time today, trying to
locate either an IP or an entertainment attorney anywhere near here (I live in
Kentucky)....so this evening I'm a little perplexed as to which way to pursue this.....but somehow I've got to get it settled -

[Paul Tauger]

Originally Posted by Scott Moore

Paul - you're killing me, man...I keep teetering both ways: 'we're in violation...
no wait, maybe we're not in violation...' And I had a rough time today, trying to
locate either an IP or an entertainment attorney anywhere near here (I live in
Kentucky)....so this evening I'm a little perplexed as to which way to pursue this.....but somehow I've got to get it settled -

Scott, I wish I could help you but, unfortunately, neither my firm nor our malpractice carrier permits me to advise non-clients. Remember one thing, though: you won't get sued for infringement if you don't use the trademarks.

[Jay Gladwell]

Originally Posted by Paul Tauger

I could use someone's copyright-protected expression without permission as long my use comes within fair use doctrine,...

We're not talking about "fair use" here, we're talking about someone who wants to use a trademark in a dramatic piece that he hopes to distribute publicly and, hopefully, make money from it.

The truth is, when (if) it he enters the film into festivals or distribution, he will be required to provide proof that he has clearance/licenses for any and all items that might even come close to copyright/trademark infringement. Without such proof of clearance/licenses, the project dies on the vine.

Here's an interesting link regarding clearance rights issues and how they affect filmmakers: http://www.centerforsocialmedia.org/rock/index.htm.

Jay

[James Connors]

Originally Posted by Keith Forman

I had asked Victonox, the makers of Swiss Army knives, about using their logo in a movie. They wanted a description of the scene, which I provided. They said they were absolutely horrified at the thought of my using their logo, and wanted written proof I would not use it. Ya win some, ya lose some ;)

Heh surely they can want all they "want", there's absolutely nothing they can do legally to demand this from you.. sounds like another typical lawyer trick in order to get you to do something you don't have to, but will screw you totally if you make an error. ie imagine another film you do has the logo on display at some point, and they have a vague document saying you won't use their logo....

[Paul Tauger]

Originally Posted by Jay Gladwell

We're not talking about "fair use" here, we're talking about someone who wants to use a trademark in a dramatic piece that he hopes to distribute publicly and, hopefully, make money from it.

Fair use is a copyright doctrine, and can apply even if the use is commercial.

As I've said a number of times, trademarks can be used in films as long as they don't result in a likelihood of consumer confusion as to source, sponsorship or affiliation, or cause dilution or tarnishment.

Without actually seeing the film in question, knowing how it's going to be exhibited, and knowing the trademarks, I can't say whether a specific use will result in either copyright or trademark infringement, or not.

[K. Forman]

"Heh surely they can want all they "want", there's absolutely nothing they can do legally to demand this from you.. "

I told them to buy the DVD when it came out. It hasn't happened yet, due to numerous issues, but some day...

[Scott Moore]

[QUOTE=Paul Tauger] Remember one thing, though: you won't get sued for infringement if you don't use the trademarks.

Good point, Counselor.

[Stephanie Wilson]

Originally Posted by Paul Tauger

Doesn't matter -- it's just another species of trademark, unless there's enough expressive content to contain copyright protection as well.

I can use anyone's trademark, including their logo, without their permission, as long as I don't dilute it or infringe it by causing a likelihood of consumer confusion as to source, sponsorship or affiliation. I could use someone's copyright-protected expression without permission as long my use comes within fair use doctrine, or is otherwise authorized by statute (or doesn't infringe one of the protected rights). Interestingly enough, merely possessing an unauthorized copy of protected expression, i.e. an infringing copy, is not illegal. I own unauthorized copies of protected expression, and there's nothing anyone can do about it, as long as I don't use them in such a way as to violate a protected right.

The point is, just because there's an onerous reservation of rights statement doesn't mean that it's a correct statement of law or enforceable in any way.

Dear Paul,

Considering my 22 years in the business, I THOUGHT I was right... But you qualified my opinion with real law. Thank you for your post.

Sincerely,

Stephanie