The Dark Knight, Black Panthers, Ghosts, and Ginger Rogers: Increasing Protection for Use of Trademarks in Promotions for Expressive Works

Content creators of all stripes strive for realism in their depictions of the world. This is for good reason – media is more effective, and more immersive, when viewers recognize it as a reflection of the real world.

Despite a desire for realism, most people can recall watching a favorite program or a movie, and seeing a nearly real, but somehow generic product – like the "Morley" cigarettes from the X-Files, or Coca-Cola cans disguised to just say "Cola." The experience can be jarring, pulling a viewer out of the carefully crafted suspension of disbelief that producers seek to create. Similarly, it is common to see unsightly blurs obscuring logos on the clothing of reality-show participants, or computer logos hastily covered up with sheets of post-it notes. Despite these efforts – sometimes made out of an abundance of caution over fears of trademark claims, and sometimes mandated by advertiser sensitivities, or product integration agreements – everyone knows what piece of fruit lurks, glowing on the back of the silver laptops ubiquitous in every office scene.

So, why not abandon the fake brands and blurs, and let real logos and trademarks bloom from every t-shirt, vending machine, and car-chase cupholder? Although the First Amendment ordinarily protects content creators from liability for the use of trademarks in expressive, editorial content, some producers or publishers are concerned that those protections would not apply if the trademark is shown in an ad or trailer for a television program or movie, or where it is shown on the cover of a book or magazine.

However, while the law on First Amendment protection for the use of trademarks in promotional materials for expressive content is still developing, a growing body of cases suggests that content creators should receive the same degree of protection for their use of trademarks in promotions of editorial works that they receive for the use of marks in the underlying works themselves. These courts have extended the holding from Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989), that "in general the [Lanham] Act should be construed to apply to artistic works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression," to apply to promotional materials for expressive works. Importantly, the Rogers Court made this determination even after explicitly acknowledging that artistic works have a commercial component, as they are bought and sold in the marketplace. Thus, a number of courts have applied a version of the test first laid out in Rogers, finding that use of trademarks in promotions for expressive works do not violate the Lanham Act if the use of the mark (1) has some artistic relevance, and (2) does not explicitly mislead as to the source or the content of the work.

For example, in Seale v. Grammercy Pictures, 949 F. Supp. 331 (E.D. Pa. 1996), Bobby Seale, a founding member of the Black Panther Party, sued producers for the use of his name and likeness in connection with the promotion of a movie, "Panther," and a related picture book and home video by putting a photo of an actor portraying him on the cover of a video. Granting summary judgment to the defendants, the court echoed the Rogers analysis holding that "the First Amendment guarantee of freedom of expression outweighs any potential risk that the Defendants' use of the Plaintiff's name and likeness, a photograph of the actor who portrayed the Plaintiff in the film, may implicitly suggest that the Plaintiff endorsed the film or the pictorial history book."

Although it did not explicitly apply the Rogers test to use of a trademark in a promotion, the 9th Circuit in Mattel Inc. v. Walking Mt. Prods., 353 F.3d 792, 796-797 (9th Cir. Cal. 2003) implied that the Rogers Test could offer First Amendment protection for the use of trademarks in promotions. In Mattel, the 9th Circuit held that a photographer's absurd portrayal of naked Barbie dolls (in blenders, for example, as baking enchiladas) was protected by the First Amendment.

Indeed, federal courts and the California Court of Appeal have explicitly applied the Rogers test to find that the use of trademarks on the cover of works, which some may view as promotional, was protected by the First Amendment, even as the courts did not adjudicate questions about separate promotions.

Interpreting Mattel and Rogers, a district court in the Central District of California held that featuring the plaintiff surfboard company's mark only on a surfboard printed on the back cover of a book Hannah Montana: Rock the Waves was protected First Amendment activity. Stewart Surfboards v. Disney Book Group, Case No. 10-cv-02982-GAF-SS (C.D. Cal., May 11, 2011). The Stewart court explicitly acknowledged that "Rogers recognized the need to establish a new test for trademark infringement claims where the use of a trademark has both expressive and commercial components, such as the use of a trademark in the title of an artistic work…" The district court rejected any argument that the use of the plaintiff's mark had to be "culturally significant," holding that "the level of [artistic] relevance merely must be above zero." Accordingly, because "the Stewart Surfboards mark, which appears on a depiction of a Stewart surfboard on the back cover of the book, evokes the surfing theme that is reflected in the plot line of the book," the book's use of the trademark met "the low threshold" imposed by Rogers. Additionally, even though the mark was located only on the back cover, the use was not "explicitly misleading" readers or consumers to believe that Steward Surfboards endorsed the book, Miley Cyrus and all. The book, the court noted, "does not say anything like 'Brought To You By Stewart Surfboards' or 'Presented By Stewart Surfboards,' nor does it indicate that it is a story about Stewart or his surfboards. To the contrary, the book jacket and spine include the Disney logo, the "Disney Press" logo, and the Disney channel logo, and the back and inside flaps of the jacket describe the book as a story about a girl's summer vacation."

Similarly, addressing the use of a mark the title and promotion of a horror film, the California Court of Appeal explicitly held that "where marks have historical significance and similar marks are used in the title of an artistic work or advertising, the Rogers test adequately ensures protection of both the public interest in avoiding consumer confusion and the public interest in free expression." Winchester Mystery House, LLC v. Global Asylum, Inc., 210 Cal. App. 4th 579, 590 (2012). Working off the Rogers court's observation that "like the artistic works they identify, are of a hybrid nature, combining artistic expression and commercial promotion," the California Court of Appeal rejected claims from holders of a trademark in the "Winchester Mystery House," despite the fact that the horror film, which was loosely based on events that allegedly took place in the Winchester house, was called "Haunting of Winchester House" and featured images of a Victorian style mansion. The court rejected the plaintiff's argument that "defendant decided to use plaintiff's marks in the title and in packaging its film as 'merely a crass marketing tool, not an artistic decision based upon the subject matter' of the film," holding that the fact that "defendant based its film on a true story to generate interest does not mean that the title and the cover of the DVD were not artistically relevant to the underlying film." Because "defendant's use of plaintiff's marks refers to the meaning associated with plaintiff's marks, that is, the house built by Sarah Winchester to fend off the ghosts of those killed by Winchester weapons," it met the burden of artistic relevance. Indeed, the Court noted that "both the title 'Haunting of Winchester House' and the Victorian-style mansion are related to the content of the film." Finally, noting that the cover of the DVD explicitly identified the filmmaker, it held that the second prong of the Rogers test, that the use must not explicitly mislead the reader, was satisfied.

Finally, in two recent cases, Fortres Grand Corp. v. Warner Bros. Entm't, Inc., 947 F. Supp. 2d 922, 924-925 (N.D. Ind. 2013) affirmed on other grounds by Fortres Grand Corp. v. Warner Bros. Entm't, Inc., 947 F. Supp. 2d 922 (7th Cir. 2014), and Mil-Spec Monkey, Inc. v. Activision Blizzard, Inc., 2014 U.S. Dist. LEXIS 165943, 22-24 (N.D. Cal. Nov. 24, 2014), district courts have applied the Rogers test to promotions of expressive works that were separate from the underlying works.

In Fortres Grand, a district court in the Northern District of Indiana focused on the use of a the trademarked name of a computer-security program in the film The Dark Knight. The filmmakers named a fictional software program "Clean Slate," even though a real program existed with the same name. The film's marketing team also created two websites to market the film, which used the "Clean Slate" name in connection with their content. The court, noting that "the websites are essentially a creative outgrowth of the fictional world of the film," described them as "what a (fictional) citizen of Gotham might find if they were looking for information on the (fictional) Rykin Data company," which sold the equally fictional "Clean Slate" software. One of the pages on the website was titled "PROGRAM: 'CLEAN SLATE'" and explained that "'Clean Slate' is the informal name for Rykin Data's primary service, in which the corporation will amass personal histories (specifically off the Internet) and destroy it permanently." Both websites also contained a fictitious patent for the software, stating that the invention could grant a customer "a clean slate within the digital world." So, the Dark Knight clearly used the mark in promotions that were separate from the film itself. Nonetheless, the court found that the promotions were protected speech under the Rogers test even as the plaintiff argued that it was inapplicable to the websites because they were commercial speech. The court found that the "websites at issue here do far more than simply propose a commercial transaction — in fact, it is hard to see that they really propose any commercial transaction, other than obliquely convincing consumers to buy a ticket to the film. Instead, they are creative, fictional extensions of the film — artistic works in and of themselves — and are thus entitled to First Amendment protection. The Rogers test therefore applies, and the analysis is the same as with respect to the film."

A district court in the Central District of California reached a similar conclusion in Mil-Spec Monkey about an advertisement for the Call of Duty: Ghosts video game that incorporated the plaintiff's trademarked "angry monkey" logo. The plaintiff is a company that sells "morale patches" that soldiers and others sew onto tactical clothing as a means of self-expression. The "angry monkey" patch served both as a product but also as the logo of the company. The video game, which allows players to participate in single and multiplayer virtual military exercises, allowed players to put the patch on their avatars in multi-player mode. The patch also showed up in the pre-release promotional trailer for the game. Acknowledging that the game was an expressive work, the court found the Rogers test protected the use of plaintiff's mark both in the game and in the trailer. It stated explicitly that the fact that "the Ghosts 'angry monkey' design briefly appears in the pre-release trailer for the game's multi-player mode . . . does not diminish its artistic relevance within the game." Accordingly, there was no genuine issue of material fact as to whether the use of the "angry monkey" design in Ghosts meets the "artistic relevance" prong of the Rogers test. Additionally, because the game itself and promotional materials prominently and clearly identified Activision as the producer of the game, the inclusion of the "angry monkey" design in promotional materials was not explicitly misleading, the court found.

In the cases discussed above, courts found that use of marks in promotional context, on books and DVD covers, on promotional websites, and in trailers, were protected as extensions of the expressive works themselves. Although content producers may seek to minimize the incidental use of trademarks in promotional materials for their expressive works, it is likely that the First Amendment offers a degree of protection in the event that trademarks are used in promotional materials, especially when the use of the mark has some artistic relevance and where it is not explicitly misleading, where the producer of the expressive work is clearly identified.