Can you sell merchandise depicting untrademarked fictional brands from tv or movies?

August 22, 2006 7:50 AM

If a fictional brand from an American movie or tv show does not show up as trademarked in a search at the USPTO, is there any legal barrier to making and selling products displaying that brand (or an original image depicting the brand in cases where no image of it has ever been shown)?

I feel like the answer has to be no, you can't profit off of someone else's idea, but if it isn't specifically trademarked it seems less clear (legally anyway), especially since it isn't a real product and isn't being sold or marketed by its creators, and they haven't made any attempt to protect it. Do the work's creators have some sort of de facto legal protection just by virtue of the idea being part of a work that is otherwise legally protected?

Also, same question but for fictional products that were trademarked but the trademark is listed as "abandoned" on USPTO with an abandoned date. And this question may shed light on the original question, because it demonstrates that sometimes people do take the step to trademark fictional brands and products, which might suggest that they aren't automatically protected as part of the larger work.

I've seen things like this around and am wondering how legal they are. I imagine anything I'd do would be so smalltime as to never register on any radar, but if it's specifically illegal I don't want to risk it. Know of any specific prohibitions against it? Specific laws? Cases that demonstrate it? Looking for facts not guesses.

posted by kookoobirdz to law & government (16 comments total)

Well, borrowing the actual image of the brand would be copyright infringement.
posted by smackfu at 8:17 AM on August 22, 2006

Trademark is a common-law right. Registration with the PTO is a way of preserving certain of a mark-holder's remedies, of heading off trouble, and of creating a record re: a mark, but a mark does not have to be registered with the PTO to be valid and protectable. I don't have time to add back-up right now, as I'm rushing out the door, but I'll check back in later today, and if no one's given you specific sources by then, I'll get something for you.
posted by palmcorder_yajna at 8:33 AM on August 22, 2006

In brief, the idea of the fake brand isn't protectable under any branch of IP law, but (a) the artwork used for the brand may be copyrighted (as smackfu notes) and (b) if the makers of the movie/show are using the fake brand as a trademark, then it may be protected even if it's not federally registered (as palmcorder_yajna). There are subtleties with both of these theories, but the short answer is that no, the absence of a registration is not a green light.

The most significant copyright subtlety is that the new use might be considered fair use. There are factors going both ways, here. It's not an especially innovative use, but on the other hand, it's not likely to affect the market for the original much. My gut sense is that it's not generally a fair use, but the facts may vary on a case-by-case basis.

The most significant trademark subtlety is that the movie/TV show people may not have been using the fake brand as a trademark. They're not selling anything by using it; it's just a piece of decoration, to them. This theory might have something to it, but we're talking about a you-have-to-hire-a-lawyer-and-pay-huge-sums-of-money-to -find-out type of somethitng. Check out this article (PDF) for a bit more on the difference beween federal and state trademark rights.
posted by grimmelm at 8:53 AM on August 22, 2006

I was just reading about some interesting cases along these lines:
Duff Beer
Big Kahuna Burger
Fictional Brands
posted by mattbucher at 8:59 AM on August 22, 2006

You did notice that all the locations listed for Big Kahuna Burger are fictional towns? The Duff case was interesting however... I have to wonder what Fox really gained by prosecuting the case, tho.
posted by nanojath at 9:06 AM on August 22, 2006

Maybe you should contact the good folks at the Bubba Gump Shrimp Co.
posted by MrZero at 9:29 AM on August 22, 2006

Yeah, I noticed that. Still, Tarantino's obviously not sending out C&D letters to the domain holder. As palmcorder_yajna says, something can be protected without necessarily being registered by the PTO. Interestingly enough, Fox did own a trademark for Duff Beer, but abandonded it in 2004.
posted by mattbucher at 9:30 AM on August 22, 2006

Or these folks selling Blue Sun gear (from Firefly/Serenity).
posted by schoolgirl report at 9:31 AM on August 22, 2006

To defend a trademark, as I understand it, you must be using the mark in commerce.

I suppose an argument could be made that the appearance of a mark in a film to which people are being sold admission constitutes commerce, and I do not know the precise language of the statute, but experience tells me you're pretty safe: Paramount specifically *registered* the names of the ships and crew in the Star Trek universe to prevent this sort of thing... and there's a legal doctrine that says, roughly, that if you do that, you're admitting that it *has* to be done to protect such rights...

and as they say, are the Bubba Gump shrimp people paying royalties?
posted by baylink at 1:18 PM on August 22, 2006

Bubba Gump is a special case because the trademark is still owned by Paramount Pictures. Paramount Pictures and Bubba Gump restaurants are both owned by Viacom, Inc. so they actually did not have to license the trademark.
posted by mattbucher at 1:37 PM on August 22, 2006

Ah.

Actually, I suspect they really *did* have to license the trademark, it's just that they're paying in funny money.

I didn't realize Viacom owned Bubba's parent. Thanks.
posted by baylink at 2:33 PM on August 22, 2006

And you know, another important thought just occurred to me.

Even if you could make a case that the appearance of a mark in a movie "was commerce", the field it's in is *entertainment; movies and TV*, not, say, retail food.

So it would, as all legal fights do, come down to "does the movie company have more lawyers than you?
posted by baylink at 2:34 PM on August 22, 2006

Well, remember that there would be an actual human judge determining this case and as it would be patently obvious that you are looking for a loophole to capitalize on someone else's intellectual property, the judge might ask if a reasonable person would conclude that there is no infringement.
posted by mattbucher at 2:42 PM on August 22, 2006

Thank you everyone. Sounds like a bit of a toss-up. Surely the safest thing is to go with the gut and not do it. But maybe what I'll do is just give it a shot and be ready to quit if ye olde cease and desist letter shows up. I imagine if I complied with that, that'd be the end of it, legal hassles being the hassles they are for everyone and me being enough of a minnow not to bother with further.
posted by kookoobirdz at 4:53 PM on August 22, 2006

How would it not be a derivative work? I can't make a movie about Sherlock Holmes even if I create my own plot. I don't see how that is different from selling watermelon flavored gum under the brand name Bonzai Labs.
posted by willnot at 4:55 PM on August 22, 2006

willnot: "derivative work" is a term of art concerning *copyright* law.

We're discussing trademark law, which is almost, but not entirely, different, and in which "derivative work" is not an issue. Copyrights explicitly do not apply to tradenames.

The concepts are dilution, confusion, disparagement, passing off, and things like that; see this, this, and ^ for more.
posted by baylink at 6:20 AM on August 23, 2006