For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Sunday, 3 April 2011

Use of iconic toys in videos

Now here's an interesting question, posed this weekend by one of our readers:
"I work for a company that hosts film competitions online. Our community of film-makers competes to create short, branded films for our corporate clients.  
We've had a couple instances in which film-makers have used iconic toys in their videos, such as Barbie dolls, Lego bricks and, most recently, a Brio train set:

I was reading in your blog about Lego's attempt to trade mark the shape of their blocks, which was ultimately unsuccessful - as it was deemed that the shape of the Lego blocks generates functionality. However, I wasn't able to resolve my question: can our film-makers legitimately make use of trade mark-protected iconic toys in their films? The films our community produces are commercial ventures, as licences for all of them are turned over to our clients, and a select few are awarded cash prizes".
Says the IPKat, there are some interesting issues here -- which he believes that our reader will have to determine on a jurisdiction-by-jurisdiction basis if the films are to be used or accessed in more than country.  For example, is the trade mark-protected iconic shape also protected by copyright and/or design rights? Does the principle of exhaustion of rights apply, or might a use which the trade mark owner regards as derogatory enable it to exert its rights?  Please post your comments below!

Merpel notes that Barbie is a popular target on account of her iconic status.  Unauthorised works which incorporate her include "Barbie's Audition" here, "Superstar: the Karen Carpenter Story" here"Food Chain Barbie" here and the song, "Barbie Girl" here. Is there any means of quantifying whether this use of the icon, aimed at an audience older than that of the doll itself, has any effect on the power of the brand, she wonders.

5 comments:

Filemot said...

If the use gives you an advantage, seek permission. Why create risks? There are lots of alternatives if you do get a refusal but toy makers like publicity too.

David said...

...but surely there is some exhaustion of rights? If I buy a Brio train set from Amazon, it doesn't come with a licence agreement restricting my use to just "playing with it in a domestic environment." If I use it in a short film I've not copied anything, I'm not using the Brio train as an indication of origin. Surely better this than the US obsession with blurring trade marks on t-shirts etc.

AndyJ said...

In contrast to Mattel, the makers of the Playmobil figures positively encourage people to use their products in videos: http://www.theregister.co.uk/2010/01/27/playmobil_challange/

Ron said...

Aardman Animations obtained a licence to use "Stinking Bishop" in their film "The curse of the were-rabbit", although it is not stated whether their trade mark was registered or unregistered: see

http://www.independent.co.uk/news/uk/this-britain/a-history-of-the-stinking-bishop-506729.html

According to the article, a free licence was agreed: evidently an equitable result, given the reported 500% increase in sales of the cheese!

Product exposure can benefit the owner of the rights in either direction: AA's mention of the [unregistered?] "Wensleydale" cheese in their earlier productions was reportedly the salvation of the company that made it, and the company subsequently obtained a licence from AA to use the Wallace & Grommet characters on their products.

Ruth Soetendorp said...

"Troubled by copyright moral rights issues involving tattoos? If so, you're not alone. Followers of the 1709 Blog have been advising one troubled reader here"

Is there a similar issue with copyright, or design right, in a haircut? I pondered this recently whilst being snipped at Vidal Sassoon hair school.
As the student's interpretation of the iconic cut emerged on my head, I asked the tutor-in-charge about iconic hair design protection at Vidal Sassoon. He wasn't sure what I was going on about, but brought over a beautifully produced volume of this seasons styles, lavishly photographed.
Each style was credited at the end of the volume with the name of its creator. But not a (c) in sight.

A haircut is different from a tattoo inasmuch as hair grows, and may never be presented again exactly as it looks on leaving the salon, once it has been re washed and dried. Any cut will be the result of application of method and technique developed over the ages. Nevertheless, there is originality in spades in the confections produced in the salon with scissors, comb and water.

Vidal Sassoon choice of IP protection was to focuss on trade mark, brand and reputation - and he hasn't done too badly! Could that be a way forward for tattooists? Register a trade/service mark, and incorporate it in the tattoo?

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