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Friday, 28 November 2014

Never mind the Oreos and Black Friday: here's a reader's cry for trade mark help

On the whole, this Kat enjoys all that is best about US culture and has few problems with it. Yes, there are exceptions. He sees no basis for importing Black Friday into a country that has no tradition for it and no Thanksgiving immediately preceding it, and he is definitely not enthusiastic about Oreos -- a biscuit (cookie, if you prefer -- he doesn't mind) that is a grey squirrel, displacing many of the more subtle domestic biscuit species and diminishing their markets. The receipt of an email mentioning Oreos on Black Friday was not therefore likely to please him overmuch. That said, the reference to Oreos was quite a respectable one since it provided the context for a reader's query which is in need of a crowd-sourced response from readers of this weblog. She writes:
Thinking about advertising and the horrifying discovery that YouTubers don’t make videos of themselves eating Oreos just for our light entertainment, do any IPKat readers know of any recent cases where trade mark owners have challenged unauthorised use or inclusion of their signs in an artistic or literary work (particularly television/film), either on the basis of trade mark legislation or passing off/false endorsement? 
Or do they perhaps know of any cases that might shed some light on whether unauthorised placement in such works can, in and of itself, constitute use for the purpose of keeping a trade mark registration alive?
This Kat sees some exhaustion of rights issues looming large, not to mention malicious falsehood actions where the portrayal of the trade marked product is effectively defamatory of it. However, he isn't going to leap in at this stage since he is curious to know whether there has been much in the way of litigation.  He recalls the skirmish between Unilever and the far-right British National Party over the inclusion of an IP-protected Marmite jar in one of the latter's political broadcasts but is pretty certain that it never reached court.

Readers, it's up to you! Please post your answers below or email to the IPKat here.

The eating of Oreos on YouTube here, here, here and here
Deep-fried Oreos: competition for deep-fried Mars bars?
Oreos: addictive to rats here
The Oreo Cat here

18 comments:

xxxxxxxx said...

The album cover when referring to the song Kodachrome by Paul Simon contains a statement to the effect that Kodachrome is a registered trade mark. The lyrics also refer to "a Nikon Camera", which I imagine is less of a problem because the word Nikon is used directly as an adjective describing the word "Camera". The Sex Pistols produced a song (if that be the right term) called EMI after they were stripped of their contract by that organisation. Whether EMI took any action, I do not know.

Chris Torrero

Anonymous said...

The term Black Friday has a different meaning in Glasgow - used by bartenders for quite some years to describe the fear of serving in the city the Friday before Christmas.

Michael Factor said...

It has been said that Americans are the first nation to go from primitive to decadent without passing through the civilized stage on the way.

Oreo's do, however, take the biscuit.

Andrew Clemson said...

In response to the cry for help, the Darfurnica litigation springs to mind – in which a representation of a Louis Vuitton bag was included as part of a painting.

Unauthorised third party use/inclusion of a signs in an artistic or literary work would not constitute use for the purpose of keeping a CTM/UK trade mark registration alive. The use of a CTM/UK trade mark must be by the proprietor or with his consent.

Anonymous said...

A case that comes to mind is this one, highly criticized, where Louis Vuitton won against Hyundai for the use of its trademark on a basketball during a commercial : http://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?article=1035&context=historical

Anonymous said...

In 1975 Coca Cola Company sued Dutch filmaker Wim Verstappen because in his film “Alicia” (see poster below) a woman was seen “performing stylishly but prominently a masturbation with the use of an empty Coca Cola bottle on which the word “Coke” was clearly readable” (wording from the judgement of the Court of Appeal Amsterdam 18 December 1975 Scorpio Films/ The Coca Cola Company). Coca Cola acted after the scene was described in a newspaper and the commentator had wondered why Coca Cola didn’t oppose the use. Coca Cola won under the then current trademark law. The scene was redone, using an empty wine bottle.

Anonymous said...

The IPKat, 2008: Companies object to use of trade marks in films.

Sally Cooper said...

Can't help remembering Irvine v Talksport http://www.bailii.org/ew/cases/EWHC/Ch/2002/367.html but can't put my finger on why !

Sally Cooper said...

And on the (minority-interest ?) matter of grey squirrels v red squirrels : http://www.thewestmorlandgazette.co.uk/news/cumbria/11375095.Red_squirrels_are_back_in_Troutbeck/ Is this what happens when politicians back off (I ask myself) ?

Anonymous said...

Looking for cases...?

Search under tarnishment or genericide.

Charles said...

Being out of my field, I was fascinated with the reputation nightmares of the London riots.
I learned the advertising slogan, 'Adidas: The Official Sponsor of the London Riots' and further that 'Adidas' stood for 'All Day I Dream About Stealing'.

These set some of the background for me:

"Out-of-place: How brands respond to unauthorized product placements", The Globe and Mail,31/12/2012
(http://tinyurl.com/ojd6yu9)

'Uniform for the riots' from the Design Bridge Blog
http://tinyurl.com/ne44y8g

More rigorously, I am indebted to Leonard Glickman and Brie Lastman, 'When bad things happen to good brands'. Variously World Trademark Review, February/March 2012 and
20 December 2011. (my best starter source).
"Negative associations through media use of your trademarks can prove difficult to counter, and action can lead to more headlines."
http://tinyurl.com/pqdt49s (needs free trial subscription) or a scanned version at http://tinyurl.com/mkh6cur

(From which last paper, these may be of interest:
Caterpillar Inc v The Walt Disney Company 68 USPQ 2d (BNA) 1461 (CC Ill 2003)
Gottlieb Development LLC v Paramount Pictures Corporation (590 F Supp 2d 625, SDNY 2008)
Clairol International Corporation v Thomas Supply Equipment Co Ltd (1968), 55 CPR 176 (Ex Ct
BCAA v Office and Professional Employees Union, 2001. BCSC 156
Ringgold v BET (126 F3d 70 (2d Cir 1997)))

I believe there was a problem with what appears as an authorised placement, from a different direction, with Smeg and the BBC (British Bake-Off Corporation.)

Ron said...

I remember the 1960's American cartoon series "Top Cat" was renamed "The Boss Cat" by the BBC and that they used a static title showing that name to start each programme, although the sound track signature tune still referred to "Top Cat". I always assumed that this was to avoid the BBC giving free advertising to the British tinned cat food of the same name rather than heading off any issues of unauthorized use of trade mark.

Mark Owen said...

Jeremy the BNP case did indeed reach court, fascinating Arnold J judgment EWHC [2010] 899 (but not on Bailii as far as I can see).

Anonymous said...

I am reminded of the Louboutin case in Belgium, where the successfully stopped a far-right party from using it's shoes in and anti-Islam poster. Perhaps this is more akin to tarnishment than unauthorised use.

http://www.dailymail.co.uk/news/article-2435418/Far-right-Vlaams-Belang-campaigner-wears-Louboutins-court-fight-case-shoe-designer.html

Belinda Isaac said...

In response to your request for help on the above topic the case of Trebor v Football Association [1997] FSR 211 sprang to mind (though the citation didn’t and it took me a while to find the reference!). You may remember that the case concerned childrens’ sweet cigarette packets which included cards with a picture of a footballer in his England kit and the Football Association took issue with the (incidental) inclusion of their 3 lions registered trade mark on the England kit. As I recall Trebor were successful in defending the action arguing that the sweets were not sold under or by reference to the mark thus there was no trade mark use.

Belinda Isaac said...

Futher to my earlier comment:

In contrast to the Trebor Bassett decision, the Football Association was successful in its claim against Panini Ltd in which it relied on copyright infringement and Panini failed in its attempt to argue that the inclusion of football badges on the kit of footballers pictured in its collectable stickers was ‘incidental’ (see the Court of Appeal decision here: http://www.bailii.org/ew/cases/EWCA/Civ/2003/995.html). It was held that the badges could not be regarded as incidental bearing in mind that the purpose of the stickers was to collect players of different clubs to complete teams in a sticker book. The case has an interesting discussion of what might be regarded as incidental.

A copy of the decision concerning the reference to Marmite on the BNP website (referred to by other commentators) can be found on Bailii here: http://www.bailii.org/ew/cases/EWHC/Ch/2010/899.html Once again, the claim of trade mark infringement was unsuccessful due to the thorny issue of trade mark ‘use’ but copyright again saves the day, for the brand owner.

Diane Hamer said...

There was the recent very interesting US case involving Louis Vuitton and Warner Bros re the Hangover film franchise (Hangover II, from memory), where the film briefly featured a LV suitcase onscreen and in a line of script. Apparently the LV suitcase was a counterfeit and LV sued Warner Bros on this basis amongst others. LV lost.

As it happens, I am giving a Table Topic on this very subject at INTA next year, so I am curious as to your interest in the subject. Would be interested to discuss.

Anonymous said...

I was interested to read your 28th November blog about use of trade marks in films. You asked whether readers were aware of litigation involving such use. The only cases that come to my mind involve Louis Vuitton and also Mattel. These are detailed in the attached: http://www.trendingtrademarks.com/2012/08/28/trademark-infringement-versus-first-amendment-right-to-freedom-of-expression/ and involve use of a fake Louis Vuitton handbag (Warner Bros), a Louis Vuitton monogrammed basketball (Hyundai ad) and use of the name BARBIE in a song. There’s some other useful case references in that article too. Perhaps AmeriKats could comment on these.

Similar to the Unilever/Marmite issue I expect you are aware of the dispute the Royal British Legion had with a far right group and their use of the POPPY logo.

I hope these are useful. I agree with your assessment of Oreos.

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