Use of trademarks/copyrights without permission.

General Questions
#1

I have noticed that some authors will go out of their way to avoid mentioning real-world brand names (Cryptonomicon and Finux comes to mind). Other fictional worlds include them wholesale (Buffy for example). So, what rights do I, as a producer of misc. art, have to use various trademarked terms and/or company names? Would I be in any legal trouble if I mentioned that my fictional character used the windows XP operating system? If I mentioned that it was a 3-monkey OS?

Gah. Just realized something: 3-monkey refers to a Dilbert cartoon where Dilbert muses that if it would take 1,000,000 monkeys some odd number of years to write Hamlet, then the work he was reading could be produced by 3 monkeys in 10 minutes. I didn’t think it up.

Would I be in trouble if I didn’t include this disclaimer?

#2

This is a WAG, but I think that as long as you are using the brand named item as an object in your story (“he popped a coke because he was thirsty”), you are ok. It’s when you start to use the brand as part of a plot line that you get into trouble (“He popped a coke and found a human eye inside. But whose…”).

Of course, the real question is not what is/should be legal, it’s what you have the money to fight. If you piss off one of those companies enough, they can easily bury you in lawyers.

#3

Better capitalize a proprietary term: Xerox, Jacuzzi, Rollerblades, Kleenex, Coke, Styrofoam, Walkman, Band-Aid, Jell-O, Scotch Tape, Ping-Pong, Frisbee, etc.

#4

Use of trademarked products in television/movies is typically with compensation: they’re product placements where the trademark owner pays a great deal of money to have their mark appear in film. Novels don’t typically have the same marketing deals as TV/movies, so you’re unlikely to get paid to plug a product in a novel.

IANAL, but I believe you’re free to use trademarked names or images in a work of fiction as long as you don’t defame them. That is, you can have your character drink Coke, but if your plot revolves around a conspiracy to poison people using Coke, you might have a problem.

Aside about product placements: I noticed an incredibly blatant Ford trademark in a recent episode of “Alias”. The main characters are driving along in a dopey-looking car, and about the time I’m wondering whether that’s a Ford Focus, they zoom in for a >1 second shot of the emblem, full screen, no cinematic value whatsoever. I guess it was subtle because I had to rewind to point it out to ms. micco, but it seemed much higher profile than just showing a name-brand soda on a shelf in the background. I was left wondering if that’s what you have to do to afford Christian Slater on primetime. I guess I wasn’t absorbed enough in the quality entertainment…

#5

It also depends on whether your use of the name will sell your product or theirs. If a reference to Coca-cola sells more copies of your book, they’re gonna want some money for the product placement. If Willow pops open her i-book and starts hacking away, Apple is more than willing to look the other way because there are gonna be a whole bunch of blessed-wanna-be’s with a spice rack and a henna tattoo who’ll think, “cool, gotta buy me an i-book…”

#6

While we’re waiting for a trademark attorney to post - - -

It’s my understanding that companies are required to defend their trademarks. You can use the word Xerox, if you are refering to a brand of copy machines, but not for the general action of copying papers. Rollerblade is a brand of wheeled skates, not a generic term. Kleenex brand tissue; Jello brand gelatin; etc. Aspirin was once a trademark, now its a generic term.

#7

Here comes the trademark attorney.

However, I’m tired and cranky, so no guarantees on this post’s completeness or accuracy :slight_smile:

First, you have to be careful of libel. If you claim that everyone who drinks coke gets cancer, you better have facts to back that up (and a lot of money to get to the point where you can show a judge that you actually have the facts).

Second, you can’t use a term that impinges on someone else’s rights. Don’t name your new soft drink “Cokke.” Just don’t do it.

That’s it. No other concerns. The law doesn’t care whether you capitialize, put TM or ® or SM or do anything else with someone else’s trademark. The trademark owners have lots of rules that THEY have to follow, but that’s them. Anyone else can use trademarks like any other word. If you own an ice cream store and want to advertise that you sell “M&M sundaes”, then Mars can’t do a darn thing to stop you (unless you are really using some cheap knock-off instead of M&Ms).

Publishers, however, really, really like their advertising revenue, so they tend to respect their corporate master’s wishes when it comes to trademark concerns. If xerox says “please don’t use Xerox® as a verb, please always capitalize and please always use ®” Time-Warner will comply for purely business reasons.

#8

Yes. You can use trademarks all you want in your own works – the trademark owners love it if you mention them – but you must follow certain practices. The name must be capitalized and it can’t be used as a verb or as a noun.

But, you usually won’t get into trouble if you have your character xerox a letter or reach for a kleenex. You may get a letter from the company lawyers telling you not to do it; the letter is enough for their purposes, which is to show that they are defending their trademark, an important issue in these cases.

You lose trademark partly by not defending it, and Xerox can bring in a stack of letters they’ve written warning people about the proper usage (as well as their ads in Writer’s Digest) to show they have indeed been telling people the proper usage. The court cannot penalize Xerox because people don’t listen to them.

So you can use the trademarks as passing mentions and if they comply with the rules. You can also disobey the rules and expect nothing more than a polite chastizing letter.

The only thing to worry about is if you do something that is libelous – e.g., writing that Windows XP causes cancer (though that example is too far-fetched for it to be a problem). There is a small chance that the trademark holder will object to the characterization and file suit claiming you hurt the value of the trademark.

As far as the “3-monkey operating system” remark goes, it wouldn’t be worth Scott Adams’ effort to sue you over a remark like that. I doubt the phrase is trademarked, anyway.

#9

Can’t top the aforegoing remarks legally. Just dropping in for an additional question and an anecdote.

I’m more up to European than U.S. IP-law. Over here us lawyers tend to look longingly to the flexible concept of ‘fair use’ which, as I’ve been given to understand, covers the various ways of use that were described. (European Directives and older national laws worked with a cumbersome set of explicit exceptions to trademark protection) However, from various sources I got the impression that companies are actually starting to get more itchy about use of trademarks than they used to do. Is there some merit in this impression? (I may be partly confused with the not-exactly-equal case of copyright law being used to ban negative reviews)

Next the anecdote.

There has been an actual case in the Netherlands where a movie director had the artistic idea of having an actress use a coke bottle for, shall we say, a purpose other than quenching her thirst. Suffice to say the folks at Coca Cola didn’t like it (at least, that is what they said in court). They won the case on the ground that this would harm the value of the trademark. Their lawyer actually said: “Whoever has seen this scene will get a dirty taste in his mouth and will be less likely to use a soda in the future. That is detrimental to the sparkling and practically sexless reputation of Coca-Cola and for sales” (link in Dutch).

The movie was later reshot with a generic bottle (link).

By the way, the news item cited first also mentions a case in Britain in 2000 about Ben & Jerry (or rather, Unilever) going to sue for the use of their ice cream for erotic purposes. According to the article, the movie was called Chunky Monkey. Unfortunately I can’t find it in IMDB, but you can Google in combination with the producer’s name, Phil Hunt.

#10

I told you I was tired.

Yeah, there are two similar U.S. concepts: Dilution and Tarnishment. Dilution comes from over-using the “distinctive quality” of a mark and tarnishment comes from casting a mark in an unpleasant light. I’m pretty sure the remedies are limited to instances of “commercial use.”

Traditionally the federal government did not deal in such issues, and left such things to individual state law. I must admit, I am not up on the current state of the law with dilution and tarnishment. About the time they added those two concept to federal trademark law is about the time I did my last trademark case (I deal almost exclusively in patents now).

[soapbox]
Its just another instance of corporate interests stomping out the rights of the individual. Trademark law is SUPPOSED to be about consumers. Trademark infringement used to be all about whether CONSUMERS were confused as to whether two products were related. Do consumers think McSleep Inns are affiliated with McDonalds restaurants? It has only been in the past 5-10 years that trademarks became about property, about giving corporations the right to monopolize words, phrases, colors, or anything else that can serve as a “source identifier.” No longer is consumer protection paramount – its all about protecting corporate intersts.
[/soapbox]

#11

The issue of product placement was handled up there, but there is a flipside to that portion of the concept. If you shoot a scene for a movie say, in Times Square, you are NOT on the hook for a fee to every damned advertiser whose signage you happen to photograph. The use of those signs in that space is protected. You cannot, OTOH, make a movie in Times Square where the NASDAQ huge video wall/side of building is in actuality a plasma/quantum portal to an alternative universe filled with drug dealers, prostitutes, art critics and other sundry n’er do wells.

It is as much an issue of context as it is an issue of use and exposure. If 14 minutes of my 90 minute movie happen to take place in the island between 7th ave and Broadway at 45th Street then boy, the ABC TV Studios will play a large role in many shots. IT is there, a publicly viewed space for all to see and enjoy ( or, not ).

Product placement usually but not always comes with a deal, and fees. The coincidental placement of a trademark or logo is another matter entirely, and for the most part protected by law.

Cartooniverse

#12

What PencilPusher said.

In response to TTT’s Q - “from various sources I got the impression that companies are actually starting to get more itchy about use of trademarks than they used to do. Is there some merit in this impression?”

I concur. While the number of TM applications in the last 12 months has dropped off a little, I believe this is simply a cyclical phenomenon and is probably related to the general economic downturn. In contrast though, the last few years has seen a significant increase in the volume and complexity of general enforcement /strategy/infringement questions from my clients, which shows no signs of abating. My conclusion is that it is partly the result of legal developments in IP concerning the internet - not only use via the internet on web sites but also use in domain names, and as this law develops we can expect to see more net-related litigation. Also, IMHO, I believe that the courts are paying more attention to the value of brands and as a consequence have been awarding record breaking damages awards ( I speak of some jurisdictions outside the US where damages awards have traditionally been relatively low) in infringement cases. As you would expect, wherever there is a lot of money at stake, people (both infringers and owners) are eager to make sure they keep up to date concerning their rights and obligations.

#13

I always thought it was weird that Tom Clancy could go ahead and have the Minnesota Vikings and San Diego Chargers specifically named and suffer a horrible fate in the book “Sum of All Fears”, but when it was made into a movie they couldn’t say “Super Bowl” or use the real NFL team names.

#14

3-monkey OS isn’t trademarked. It can’t be. To be trademarked it has to be part of a product and that product has to have been sold. It’s a term for a non-existent product and thus cannot have any protection

There might be a dispute over whether that phrase has been copyrighted, however. I really couldn’t answer that one.

#15

Not to nitpick Enderw24, but what you’ve said just isn’t correct. In fact quite the opposite is true. 3-monkey could be a registered trademark even if its not used on goods. It could be used for services. It might not even be used with respect to any goods or services but still be trademarked. This might not jibe with what you know about US trademark law, but you have to remember that every country has its own trademark laws that often depart from the US system. Some countries allow registration of a trademark that just isn’t used, and infringement is still infringement whichever country you’re talking about.

Additionally, 3-monkey can not be the subject of copyright as copyright does not protect names, titles, slogans, or short phrases. Coming up with the name “3-monkey” just doesn’t require the requisite degree of skill, labour or judgment to warrant protection.

Where have you been getting your info?