Using Brand Names in Films: Is Permission Required?

      Aditya Ezhuthachan is an attorney specializing in entertainment law with the Pessah Law Group in Beverly Hills. In this column, he discusses the permissions filmmakers may require when incorporating brand names or depicting real businesses in their films. —M.M.

      Filmmakers often encounter inquiries regarding the inclusion of real-world products, company names, or various brands in their work. For example, are they permitted to display products or mention brand names? Does it matter if the brand or logo is not visible or recognizable?

      What if the filmmaker plans to feature the product as part of the narrative? What if including it is crucial? Conversely, what if the brand or logo appears accidentally but is unavoidable due to the filming location?

      This series of questions ultimately leads to a pressing inquiry: Is permission necessary when utilizing brand names in a film?

      As with most legal matters, the answer is frustratingly ambiguous: It depends.

      Attorney Aditya Ezhuthachan on the Need for Permission when Utilizing Brand Names in Film

      Aditya Ezhuthachan. Image courtesy of Pessah Law Group

      Narrowing down these important questions to those that are most relevant to filmmakers and their legal advisors isn't straightforward or intuitive. A good starting point involves asking two fundamental questions: First, is the product or brand displayed in a manner consistent with its ordinary use in reality? Second, could the film's depiction be perceived negatively by the brand or the product's manufacturer?

      In a recent HBO series, The White Lotus, a character faces arrest due to a financial scheme while wearing a sweatshirt from his alma mater, Duke University; he contemplates suicide and fantasizes about violence against family members. In response, a Duke official stated that the show did not receive permission to use the school's registered trademark and claimed it "creates confusion and mistakenly suggests an endorsement or affiliation where none exists."

      This example from The White Lotus highlights the underlying issue at play: trademark. The United States Patent and Trademark Office (USPTO) defines a trademark as "any word, phrase, symbol, design, or a combination thereof that identifies… goods and services.”

      Trademarks inform the public (i.e., potential consumers) that the owner is the source of said goods or services, thereby protecting the goodwill the owner has developed over time in the public's perception. Legally, a trademark safeguards the public (as holders of that goodwill) from third-party infringements that might cause confusion regarding the source of the goods or services or undermine that goodwill.

      However, films and television shows do not create competing goods or services — so does that mean trademark infringement is not a concern? It can be, if the depiction leads to confusion regarding the source or sponsorship of the film or the illustrated product.

      In a notable case, Hormel Foods sued Jim Henson Productions, which produced Muppet Treasure Island, over a character named Spa’am, a wild boar who leads a group of pigs. Hormel produces Spam, a canned product primarily made from pork shoulder and ham. Ultimately, the court ruled that The Muppets were recognized for parody, meaning audiences would not confuse the source of goods or mistakenly think there was an endorsement or sponsorship involved.

      Additionally, two associated protections under trademark law may arise: trade libel and trademark dilution via tarnishment. Trade libel concerns a false statement of fact made to a third party that damages someone’s reputation. In the Duke University example, it would be challenging for them to prove a false statement: The sweatshirt merely serves as clothing, and the product's quality isn't questioned.

      Trademark tarnishment, on the other hand, has a lower threshold of proof, as the plaintiff doesn't need to demonstrate a false statement, only harm to the trademark's reputation. Hormel also asserted a claim of trademark tarnishment, but the court determined that parody alone could not constitute tarnishment. Instead, tarnishment occurs when a trademark is portrayed "in an unwholesome or unsavory context..."

      A landmark case that established the concept of tarnishment involved the Dallas Cowboys Cheerleaders winning a lawsuit against theatre owners for showing the pornographic film, Debbie Does Dallas, in which the lead actor performed sexual acts while wearing an outfit strikingly similar to that of the famous cheerleaders. The court found both tarnishment and trademark infringement due to the professional cheer team’s association with adult content.

      So, if a product is depicted, or a brand shown, in the same manner it exists in reality and in a way that cannot be construed as negative, can a filmmaker feel secure from potential lawsuits? Not necessarily. As former column writer David A. Pierce noted, "All someone needs to initiate a lawsuit is the filing fee and directions to the courthouse."

      Further Insights on Using Brand Names in Films — and Opportunities for Product Placement

      Some litigants may challenge trademark use regardless of their likelihood of success. Consequently, an entertainment lawyer might recommend steering clear of a product or contacting the trademark owner for permission to use it.

      In my practice,