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Friday, 31 October 2008

Companies object to use of trade marks in films

The IPKat read with bemusement a piece in today's Times describing how Mercedez Benz and the makers of a popular unnamed fizzy drink 'meant to unite the world' insisted that their trade marks be removed from scenes in the film Slumdog Millionaire. The film, the latest by British director Danny Boyle (who sounded off about the issue at the film's premier last night), tells the story of a boy from Bombay's slums who reaches the final of the Indian version of Who Wants to be a Millionaire. The companies are alleged to have thought that their brands would be sullied in shown in the setting of the slums. The film makers were forced to spend thousands of pounds blanking out the logos in scenes were the stars were shown drinking fizzy drinks on a rubbish dump and where a Mercedez car, driven by a gangster, was shown in the slum. According to Boyle:

“We wanted to use a Mercedes because . . . this guy, this gangster would drive a Mercedes . . . but if you use Mercedes then clearly you have to get permission, and we asked for their permission and they refused it.”

Could Boyle have just gone ahead and used the trade marks, the IPKat wonders? The use might lead to unsavoury associations, bringing with it a risk of tarnishment, but is it trade mark use, and is trade mark use even needed? (We've had lots of cases about this, but the answer still isn't clear, and perhaps the answer is different for Art.5(2) anyway). This underlines the accute need for clear guidance from the ECJ on the issue for once and for all. Life would be rather difficult if trade mark owners can use their marks to stop real products being shown in films, or even just in films which are not to their liking. Actually, the outcome in this situation could have been worse - at least the companies don't seem to have argued that their product shapes are trade marks, the use of which they can control. Merpel notes with a degree of regret that it wasn't the association with a gangster that annoyed Mercedez, but rather the association with a slum.

9 comments:

Wolfgang Sakulin said...

As for the 'trademark use' question, under Article 5(2) of the Directive 'use'seems to imply little more than an association (Adidas/Fitnessworld & AG Sharpston in Intel). Thus, that is easily satisfied. Tranishment? Well, with the current evidentiary standards that is easily satisfied too (talk about expanding trademark rights). So really, it depends on due cause, i.e. freedom of expression. IMO the use in the film must definitely count as freedom of expression. Under Article 10.2 ECHR is definitely not 'necessary in a democratic society' to prohibit the depiction of a Mercedes in a slum, if in real life that would be the car of choice for a gangster. The protection of an image can't set aside reality! IMO the line might be drawn somewhere here http://modiya.nyu.edu/handle/1964/256 (scroll down) but not before.
That being said, I do understand the filmmakers. Facing substantial legal costs to get your artistic freedom protected? Its a sensible choice to pay now and get this off your back.
IMO trademark law is overstepping its constitutional boundaries here (creating unwarranted chilling effects). This means that law-makers are obliged (ECHR) to intervene and to make in trademark law room for adequate protection of freedom of expression.

Michael Lesk said...

You might be interested in the Duke University Law School comic book, "Bound by Law", which discusses the problem of U. S. documentary films that happen to include a bit of copyrighted material in the background. (Yes, Slumdog Millionaire is fiction, a different set of problems). The Duke item is very amusing - see
http://www.law.duke.edu/cspd/comics/.

John Halton said...

The first thought that sprang to my mind was a passing off argument.

If I remember correctly, the basis for Eddie Irvine's eventual victory in the Talksport case was that the public were aware that sportspeople frequently license their name and likeness for commercial purposes. As a consequence, the public might infer a commercial connection between Irvine and Talksport.

In the same way, perhaps Mercedes could argue the widespread use of product placement - not least involving Mercedes itself - would lead people to assume that there is a commercial connection whenever a brand appears prominently on screen.

Just a thought.

Anonymous said...

The use of Mercedes cars by gangsters is well known; visit South London. Mercedes did not object to the scenes showing a gangster's Mercedes outside a slum. However inside a slum area the device bearing symbol on the vehicle would probably be stolen so that showing its absence adds to the film's realism.

Anonymous said...

RE: to John Hutton's comment...

The harm in talk sport was Irvine was deprived of potential sponsorship fee.

What is the harm suffered by Mercedes? You could say, they saved some money they would have otherwise paid for any product placement.

Merc's best argument would be to claim harmful association and tarnshment as Ilanah pointed out.

Anonymous said...

Why is this use not non-infringing under Section 10(6)? The film makers are using the trademark "Mercedes" to indicate that a Mercedes is a Mercedes. (If they can be said to be using the mark at all.)

Ilanah said...

Thanks for all your comments.

Wolfgang - I'm not sure about the due cause argument. I agree, potentially important ECHR questions here, but certainly the UK approach has been to treat due cause as very limited in scope, so that it can't be raised every time there's a good reason for allowing use.

Anonymous I - in the badlands of North West London, Mercs are also favoured by dodgy minicab drivers.

Anonymous III - in principle s.10(6) might apply, but it has seriously fallen out of favour. Also, the second para might be read as excluding use which causes tarnishment from its scope.

Anonymous said...

Ilanah

Thanks for your comments. I'm not an expert on trade mark law. I had a feeling that Section 10(6) had been re-written as a result of the Comparative Advertising directive, but checking on the UKIPO's website seems to show the section intact.

The second paragraph seems to have far too many words in it, as if the author is trying to hedge their bets. However, it seems to me that use "in accordance with honest practices" is not infringing, whether or not it is tarnishing. Even if the use is not in accordance with honest practices, you can tarnish the mark without infringing it if you have "due cause", whatever that might mean.

Ilanah said...

The section is intact in that in remains in the 'live' version of the TMA 1994. However, the prevailing mood amongst the judges is that it should be ignored.

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