Episode 25: Unauthorized Trademark Use in Artistic Mediums (Part II)
The podcast is a second discussion on Online Editor Anthony Zangrillo’s Note: The Split on the Rogers v. Grimaldi Gridiron: An Analysis of Unauthorized Trademark Use in Artistic Mediums.1 Special Guest Marc Misthal,2 a partner at Gottlieb, Rackman, & Reisman P.C., joins the podcast to speak about the unauthorized use of trademarks in films, TV and video games.
Marc Misthal specializes in all areas of trademark and copyright litigation and prosecution, and has extensive familiarity with domain name and Internet issues. Mr. Misthal has contributed to the Aspen Law & Business treatise, Trademark Counterfeiting, (George W. Abbott, Jr. and Lee S. Sporn, eds. 1999); and he is the author of Reigning in the Paparazzi (10 International Legal Perspectives 287, Northwestern School of Law ).
More recently Mr. Misthal, along with George Gottlieb, contributed an extensive chapter on intellectual property to the newly released book Fashion Law: A Guide for Designers, Fashion Executives and Attorneys. The book takes a practical approach to addressing legal issues. It is the first book to comprehensively examine, in one volume, those areas of the law implicated in the fashion business (including, in addition to intellectual property issues, franchising, distribution, rentals, leasing and import/export). Fashion Law, published by Fairchild Books, is available from Amazon.com, Barnes and Noble and other booksellers.
Movies, television programs, and video games often exploit trademarks within their content. For example, Louis Vuitton sued Warner Bros. over a knockoff bag used in a scene in the studio’s 2011 release “The Hangover: Part II.” In particular, various media often attempt to use the logos of professional sports teams within artistic works. Courts have utilized different methods to balance the constitutional protections of the First Amendment with the property interests granted to the owner of a trademark. Ultimately, many courts utilize the framework presented in the seminal Rogers v. Grimaldi decision. This test analyzes the artistic relevance of the trademark’s use in the allegedly infringing work, while also protecting against explicitly misleading uses. Currently, federal circuits apply the Rogers test inconsistently, particularly in the Second, Sixth, Seventh, and Ninth Circuits. This podcast focuses in on the control trademark holders wish to maintain over their marks. Specifically, the podcast explores the use of “The Sporting Times” mark in the R-rated critical failure film “Spaceman.” The podcast also discusses the de minimis use of trademarks in film and the gatekeeper role of movie studios.
Don’t forget to also subscribe to the podcast on iTunes (https://itunes.apple.com/us/podcast/fordham-intellectual-property/id1158550285?mt=2) and leave a review!