Whether you are an independent film-maker, a big-budget studio or a theatre production, careful consideration must be given to any content which may infringe the intellectual property rights of others. Since we live in a commercially orientated society, companies often go to great lengths to protect their brands, products and reputation. In particular, content in a film or performance featuring another party’s “trade mark” may result in a lawsuit unless the necessary clearances have been made.

The use of trade marks

A trade mark is the legal equivalent of a potter’s stamp and is what allows someone to distinguish the goods or services of one business from those of another. Trade marks may be protected by law when they are registered (and even when they are not, by virtue of the law of passing off).

The relationship between trade marks and the film industry has long been close. One famous example is the Aston Martin cars used in the James Bond movies.

Product placement is used as a source of funding in return for exposure; think Heineken for example in the latest Bond film. This use of trade marks comes about by agreement, but many film-makers are worried about being seen as a platform for the promotion of products.

Such is the pervasiveness of trade marks, in any given scene a film-maker or performer may have inadvertently used a number of different trade marks without even realising they are doing so.

The chequered Burberry design and more recently the Levi’s red tab have been protected as trade marks. This shows the extent and detail to which film-makers and theatre productions have to be aware when considering the use of products which bear trade marks.

Infringement of a registered trade mark

Such is the concern that a company has over its brand, Aston Martin had originally only reluctantly agreed for the use of the car in the Bond films. Without their permission the famous Bond car may have been a Jaguar instead.

A trade mark will not be infringed if you are showing the products for their intended purpose or are identifying the product as belonging to the owner. So, for example, you will be able to show a car logo when somebody is driving it because you are merely demonstrating its intended purpose i.e. to be driven.

One caveat to this is that use of the trade mark must conform to “honest commercial practices”. You cannot give the impression of a commercial relationship between the owner of the product and the film or performance where none exists, or unfairly tarnish a trade mark.  For example, if you featured a plotline where the villain was a famous company which was doing terrible things using a trade marked item, that may not be an honest commercial use.

Therefore it is possible for trade marks to appear in film and performance productions, but careful attention should be paid to how the trade mark is being portrayed.

“Passing Off”

Even if a prudent film-maker or theatre production is careful not to feature any registered trade marks you can still be liable for “passing off”. This is because unregistered (and even registered) trade marks attract protection for their reputation under the common law to prevent copycat products.  Passing off serves to protect the ‘goodwill’ i.e. the reputation attached to existing goods or services. Where a party uses a mark, get-up or trade dress similar to an existing product resulting in confusion as to origin amongst consumers then that party may be liable to a claim of passing off where this is likely to cause damage to the rights holder. The classic example of damage would be a loss of sales or loss of reputation.

Infringement in film and performance

This concept of “passing off’ can be extended to film and performance. For example, if it was too costly to pay for certain brands to appear in the production and you carefully made mock-ups of brands, logos or slogans which are very similar to an existing product you might be liable if it causes confusion and actual or potential damage to the rights holder. For example, if in your performance you featured a laptop with a mock up of the Apple logo that was very similar but clearly not the same, this could amount to passing off (and registered trade mark infringement). When making adaptations from someone else’s sketch, play or film, this can also amount to a passing off. Similar caution must also be made in choosing film/performance titles, and using celebrity-likeness or giving the impression of a celebrity endorsement when there is not one.

The Consequences of infringement

In both breach of a registered trade mark and passing off cases, the court is likely to order the infringer to remove trade marks used without permission from his works and account to the owner for any damage suffered or for any unfair benefit gained from using it.

There are even possible criminal sanctions of imprisonment with a fine for the unauthorised use of a trade mark. However, the most likely consequence would be that the film or performance in question is prevented from being released to the public and the infringer made to pay damages. Such a case would be disastrous to the film-makers or performance organiser.

Practical tips

The main way to avoid infringement would be to obtain content clearances from the owner of an unregistered or registered trade mark for everything which might constitute infringement. You should seek prior permission for the trade mark to appear in your film or performance. Trying to obtain permission after the film is finished could be a problem. If permission isn’t granted then you will not be able to use the scene and having to reshoot could prove very costly.

Although, for instance, in the big-budget film industry, such use of trade marks often leads to commercial benefit in the form of sponsorship and adverts, this will not always be the case for all film-makers. It may not be realistic or practical for those with smaller budgets to pursue big product placement deals. However, small film-makers could at least explore the possibility of securing sponsorship and should nevertheless go about obtaining the necessary clearances in the planning stages before considering whether or not trade marks should appear in the film and how they should appear.

For many, an alternative method of avoiding infringement would be not to refer explicitly to trade marks, and limit them to the background of the film or performance. Some may choose to create their own brands and products, but these should not be similar to any existing trade marks. Some film-makers and performers may choose to be cautious and try not to feature any trade marks at all.

If you do accidentally film something in the background, it is important that you are satisfied that you are only indicating the intended purpose of a product or service. The inclusion should not give rise to any adverse impression in relation to that trade mark. If there are any doubts as to whether the use of a trade mark could be infringing, you should seek independent legal advice. Obtaining legal advice early will undoubtedly save problems later on.

This article discusses the legal position in the UK but is not to be regarded as legal advice. You must take advice from a specialist lawyer in relation to your specific project. In particular, if the films or performances are intended to be distributed outside the UK it is advisable to seek local legal advice in the target country as the legal position may vary.

This article was written by Daniel Woodruff and Hyoung Lee, students at the University of Law.

Image: Hedvig Larsson: