Category Archives: Fair Use

Rogers Defense, Blockbuster or Flop?

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Australian motorcycle company (and film critics) Deus Ex Machina Motorcycles Pty. Ltd., has sued Warner Bros. and MGM Studios for trademark infringement for dressing the female lead in a jacket bearing their registered trademark “Deus ex Machina” in the “flop” “schmaltzy teen-style love story,” [Complaint, Para. 33] The Sun Is Also a Star.

The Sun Is Also a Star is a teen drama film directed by Ry Russo-Young and written by Tracy Oliver, based upon the young adult novel of the same name by Nicola Yoon. The phrase “deus ex machina” is essential to Yoon’s story, where its presence on the female protagonist Natasha’s backpack gets her noticed by Daniel and sets the love story in motion. The movie moved the phrase from the book’s backpack to a jacket. According to a 2019 article in MarieClaire.com, the jacket plays a critical role in the film. Costume designer Deirdra Govan,  created the jacket from scratch in three-and-a-half weeks with the help of her mighty team of assistants, tailors, set costumers, and costume supervisor, working on roughly 15 different styles before landing on the one.

The Complaint sets up another First Amendment battle between artists and brand owners. Yoon no-doubt selected the phrase for its well known literary meaning; a heavily merchandised motorcycle company with a curated tough-guy image was probably the last think on her mind. Still, the movie moved the phrase from a backpack to a jacket. It also does not help that Charles Melton, who played teenager Daniel Bae in the movie, posed for pictures posted to social media to help promote the movie in which he wore clothing actually sold by Deus Ex Machina [Complaint, Para. 31].

It seems that Warner Bros. and MGM Studios have a reasonable First Amendment Rogers defense, and unless tough-guy biker boys are sneaking into schmaltzy teen-style love stories, a reasonable argument that there is no likelihood of confusion. While the movie may have flopped, hopefully their defense will be a block buster.

Is the Reproduction of a Branded Product in a Depiction of Real Life an Infringement?

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AM General LLC maker of HUMVEE®-branded vehicles, has sued Activision Blizzard, Inc., Activision Publishing, Inc., and Major League Gaming Corp. in the Southern District of New York for using AM General’s trademarks and trade dress in advertising and promotion of their Call of Duty® video games, featuring AM General’s trademarks and vehicles bearing AM General’s trade dress prominently in their video games, and causing the manufacture and sale of collateral toys and books.

According to the Complaint, AM General has licensed a number of video game manufacturers,  including Infogrames Inc., Novalogic, Inc.,  Codemasters Software Company, Ltd., and THQ Inc. so AM General is not opposed to  their products appearing in video games, just in video games for which they do not get paid.

AM General alleges that the defendants’ use of its trade dress and marks in connection with the advertising, promotion, and sale of videogames has caused and is likely to cause purchasers and potential purchasers to falsely believe that these products are associated with, are approved, licensed, or sponsored by AM General.  With respect to toys, AM General might have a point,  However, with respect to the video games themselves, it is possible that purchasers and potential purchasers will simply think that the games are realistic depictions of the battlefield where AM General’s products are used.

In S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., the 9th Circuit found that the depiction of plaintiff’s L.A. “gentlemen club” PLAY PEN  as a virtual strip club called Pig Pen in GTA: San Andreas did not infringe plaintiff’s rights.  The Ninth Circuit found that the First Amendment protects an artistic works’ use of a trademark, unless the use has no artistic relevance whatsoever, or unless it explicitly misleads as to the source or content of the work.  The Ninth Circuit thought it was unlikely that the video game was produced by the plaintiff.  It would seem that AM General might have similar difficulties.

AM General made millions selling the government Humvees for use on the battlefield.  Does a videogame manufacturer need permission to reproduce these vehicles in a depiction of the battlefield? Trademarks are a part of daily life, and if some of these trademarks are caught up in a representation of daily life, is the trademark owner really harmed?

Studios Fire Back: Fictional Publication Depicted in a Movie is Privileged Expressive Use

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Following up a previous post about the February 2017 lawsuit filed by the Sporting Times against Orion Pictures for depicting a fictional magazine title Sporting Times of the same title in a movie about the life of Bill “Spaceman” Lee, MGM has responded with a Motion to Dismiss.  Defendants argue that the use in the movie was not a trademark use, and in any even any theory of a likelihood of confusion was “too implausible to support costly litigation.”  The defendants also affirmative asserted a First Amendment bar to the Sporting Times claims, and arguing that the test from Rogers v. Grimaldi applies and the Sporting Times claims should be dismissed unless the use of the mark has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.

The Motion pointed out the burden of getting permission from every brand potentially appearing in a expressive work, such as defendants movies, and concluded:

Happily for filmmakers and their audiences (and for the creators of other expressive works), the Lanham Act does not grant trademark owners such veto power over the content of expressive works.

To The Relief of Seargants Everywhere, Forever 21 Challenges Adidas’ Three Stripe Marks

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On March 3 Forever 21, Inc. sued Adidas American, Inc. in the Central District of California (2:17-cv-01752) asking for a declaration that its clothing decorated with stripes does not infringe Adidas’ trademarks, and suggesting that Adidas is a trademark bully:

Looking at the examples identified by Forever 21 (no doubt carefully chosen), one might sympathize with Forever 21’s frustration:

Forever 21 alleges that Adidas has sued clothing and footwear manufacturers who have used two stripes, four stripes, stripes with multiple widths and colors, and it has even sued over garments that Adidas is not known for making.  Feeling deprived of the ability to enjoy “an unfettered right to design and sell clothing with ornamental, decorative striped designs” and to the relief of seargants everyone, Forever 21 seeks a declaration that its striped clothing does not infringe any trademark rights owned by Adidas.

Trademark owners often feel compelled, if not required, to pursue any colorable infringement, lest third party uses interfere with the likelihood of confusion or likelihood of dilution analyses when there is a use of more serious concern.  Moreover, there is little protection from the victims of aggressive enforcement.  Sometimes an overly aggressive enforcer will catch the attention of the internet, and be shamed into behaving, but this is not typical.  The courts’ application of the Octane Fitness case to trademark cases offers some relief from frivolous claims, but only for those who have the resources to defend the litigation, and this doesn’t happy too often, for true bullies rarely pick on someone their own size.

While most infringement defendants probably regard the plaintiff as a bully, the majority of enforcement efforts are driven by a genuine concern about protecting the mark. However there are instances where trademark owners bullying third parties, asserting claims far beyond what their actual rights protect.  There are not many effective remedies when this occurs, but if certain trademark owners are not more careful, the problem may be addressed for example with more robust fair use defenses or other measures that could make enforcement more difficult or less certain.