Mon, 03/01/2010 - 12:00am
The scenario is simple: background music, either live or recorded, is playing while you are videotaping a scene. Now you have sounds protected by copyright in your video clip.
According to the United States Patent and Trademark Office (USPTO), a trademark is "a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others." A trademark can be either unregistered or registered, denoted by either a TM or ®, respectively. The main difference is that registered marks have been officially recognized by a national trademark office, such as the USPTO. In general, though, you should treat them the same: as indicators of some person's or organization's property.
This article follows up our previous article on sound copyright infringement by discussing the potential for trademark infringement in videography. Whether your instance of recording a trademark is incidental, such as capturing a McDonald's logo in the background, or purposeful, such as having an actor sip from a Coca-Cola can, the basic legal principles remain the same. This presumes your video does not blur or tarnish ("dilute") the trademark.
The Trademark Dilution Revision Act of 2006 (TDRA) overturned a Supreme Court case that established the legal guidelines for determining dilution. According to this Act, "dilution by blurring is association arising from the similarity between a mark or trade name and a famous mark that impairs the distinctiveness of the famous mark." Just like any legal issue, the particular details of each case are unique, which means that precisely defining what is or is not trademark infringement should be performed on a case-by-case basis. That said, the Act lists six factors in determining whether your use of a mark or trade name is likely to cause dilution: "the degree of similarity; the degree of inherent or acquired distinctiveness; the extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark; the degree of recognition of the famous mark; whether the user of the mark or trade name intended to create an association with the famous mark; and any actual association between the mark and the famous mark." This infringement may be unlikely for videographers, but be aware of the potential to dilute a trademark by blurring.
More applicable to videographers is the likelihood of tarnishment, which, as its name suggests, is "association arising from the similarity between a mark or trade name and a famous mark that harms the reputation of the famous mark." An example of this comes from a 1996 court case in which www.candyland.com, an adult entertainment website, was determined to tarnish the popular board game Candy Land.
Most applicable is a U.S. District Court case in which the Walt Disney Company's George of the Jungle 2 film used Caterpillar bulldozers and trademark without permission. Using the actual, genuine trademark is different from blurring or tarnishing a trademark, and it falls under a different section of law: 15 U.S.C. §1125, unfair competition, which is "using in commerce any mark that is likely to cause confusion, mistake, or deceive as to the affiliation, connection, or association... or... the origin, sponsorship, or approval of [one person's] goods, services or commercial activities by another person." Ultimately, the court approved Disney's use of Caterpillar bulldozers based on the particular facts of the case, but a discussion of determining trademark infringement is in order.
As previously noted, there are at minimum six factors in determining whether your use of a mark or trade name is likely to cause confusion. This is one step in proving trademark infringement. In fact, the TDRA changed the language of the law from requiring actual confusion to simply showing a likelihood of confusion. The other step in proving trademark infringement is demonstrating ownership of the mark. Non-registered trademarks (TM) are still verifiable, which is why you should regard them as the same as registered marks (®).
The fair use doctrine also comes into play, which permits using trademarks under certain circumstances. According to the TDRA, "any fair use, including a nominative or descriptive fair use, or facilitation of such fair use, of a famous mark by another person other than as a designation of source for the person's own goods or services" shall not be actionable as dilution by blurring or tarnishment. This includes advertising or promotion as well as identifying and parodying, criticizing, or commenting upon the famous mark. You are not liable for the infringement if another person's trademark appears in your news reporting and commentary (e.g., documentaries) or any noncommercial use of a mark, as that constitutes fair use.
As long as you are not appropriating a trademark to identify your goods, but merely including the image of the mark -either incidentally or purposefully - you can do so without liability. This time, the law makes sense.
Attorney Mark Levy specializes in intellectual property law. He has won many amateur moviemaking awards. Mike Szydlo is a recent graduate of Binghamton University with B.A. in philosophy and politics.