In the entertainment industry trademark law offers performers some degree of protection for artistic credits and moral rights. It can serve to supplement copyright law in affording protection against the use in other entertainment works of certain features of a product (for example titles and character names) that cannot be directly copyrighted.
In this article we explore how trademark law is applied in the entertainment industry and how a court will determine if a trademark infringement has occurred. In particular, we look at how this test was applied in the case of Hormel Foods Corporation v Jim Henson Productions. Whilst it is a US decision the law is relevant in Australia (it’s also not very often that we get to write on the law with references to Miss Piggy and processed meat).
The decision in Hormel Foods Corporation v Jim Henson Productions gives a detailed look at how the court applies this test to entertainment trademark cases. This dispute involved the character Spa’am in the movie, Muppet Treasure Island, and whether it had infringed upon Hormel Food’s trademark for SPAM luncheon meat.
What is a trademark?
A trademark is any word, name, symbol or device used to distinguish goods or services dealt with in the course of trade. Trademark protects consumers in their choices and use of goods by providing easy recognition of the product whose features consumers prefer.
This kind of brand name recognition gives producers an incentive to preserve or enhance the attractive quality of their product, but it also gives imitators an incentive to use the name without matching the product quality. The role of trademark law is to bar any use of a name or symbol that is identified with a product where such use may confuse consumers about the product they are seeking to buy and use.
Trademark infringement test
If your trademark is being used by someone else you have a right to bring a trademark infringement claim. When examining a claim for infringement, the court will address the question as to ‘whether an ordinary prudent purchaser would be likely to be misled or simply confused as to the source of the goods or as to the sponsorship or endorsement of the mark.’
Hormel Foods Corporation v Jim Henson ProductionsIn the Muppet movies Spa’am was the ‘high priest of a tribe of wild boars that worshiped Miss Piggy’. Hormel, makers of the well-known luncheon meat SPAM, felt that the use of the name Spa’am on Muppet Treasure merchandise such as clothes and toys may cause confusion to consumers and dilute the famous SPAM name. The court examined the following eight factors to determine if a trademark infringement had occurred:
1. Strength of the mark
Usually if the mark is strong the court will conclude that a consumer would be confused by another weaker mark. However, in this case SPAM and the Muppet brand of humour are both widely recognised household names in their own right. Due to the familiarity with both the brands, the court found it would be unlikely for consumers to be confused about the identity of the products and consumers would be likely to see the name Spa’am as the joke it was intended to be, namely to parody the luncheon meat.
2. Degree of similarity between the marks
The court examines the similarity of marks visually (side by side) and in the context they are being used. In this case, the court found a passing resemblance with the two names. Spa’am is divided in two by an apostrophe and has two ‘As’. But contextually, the two marks appear in strikingly different contexts and visual displays. Spa’am is depicted as a wild boar puppet and all products have the Muppet Treasure Island branding on them. Even though there are some similarities in the name, the court ruled there would be no confusion and that consumers would realise that the Muppets were parodying the SPAM name.
3. Proximity of the product
The next step is to look at whether the products are competing in the same market. In this case, the two products operate in two distinct merchandising markets. The consumers of merchandise in the SPAM market would generally consume luncheon meat and the other product is operating in the puppet entertainment market. For this reason, the court found it would be unlikely that consumers would be confused as the products are not in the same market.
4. Expanding into other markets
This test preserves the interests of trademark owners to expand into other avenues or related fields. As Hormel had no intention of entering any SPAM products into the puppet entertainment market, the court found that Henson’s Spa’am did not infringe on any future market opportunities.
5. Actual confusion
The court examines any actual evidence of consumer confusion*. In this case, there was no evidence presented and therefore the court dismissed this part of the test.
6. Bad faith
The court examines whether the mark has been used in bad faith. In this scenario, Henson’s parody of the SPAM name was not intended to be done deceitfully. Henson had nothing to gain from creating confusion among SPAM consumers nor wished to create a business relationship with them. For this reason, the court ruled that the mark was not created in bad faith.
7. Quality of the mark
The court examines whether an inferior product may cause injury to another’s trademark. Hormel was concerned that the Spa’am character would call into question the quality of SPAM luncheon meat. However, the court ruled that Spa’am was a positive character who was not unhygienic and that a simple comic reference to the fact that SPAM is made from pork would not damage the SPAM image, especially in light of the numerous other humorous references to SPAM in the community.
8. Consumer sophistication
In this test, the court examines the target audience to see if they would be likely to be misled. The court found that a child or adult would be likely to buy merchandise featuring Spa’am because they like the Muppets, not because they mistakenly think that it is a SPAM product.
Weighing all of these factors up, the court found that consumers were not confused about the marks and therefore no trademark infringement was found.
Artists have a right to protect the goodwill and reputation they have built up in their brand of work and consumers also have a right not to be misled. Trademark law can be used as an additional source of protection other than copyright law to protect and progress the rights of artists in the entertainment industry.
*McNote: It might be difficult to confuse a can of ham with an animated pig?
Authors of creative works such as visual art, films, books and songs naturally want the right to claim (or disclaim) credit for their efforts when their work appears before the public. Even more important to many artists is the right to protect the integrity of their work by preventing any significant alterations to its original form. In the world of copyright, this right is known as a ‘moral right’ and artists are protected under the law.
What are moral rights?
Under section 195 of the Copyright Act, artists have a moral right to the integrity of their work and right of attribution of authorship. This includes the right to “prevent a distortion, mutilation or other modification of or other derogative action in relation to the work which would be prejudicial to the author’s honour or reputation.” Under this moral right, artists have the right to have their work attributed to them in the form in which the artist created it.
Moral rights are different to copyright in that they cannot be assigned, transferred or sold without consent. Artists are entitled to terminate their agreement or sue for infringement if a licensee or purchaser of their work has affected its integrity.
Examples of moral right infringement
Any artist can claim that their moral rights have been infringed if their work has been changed in some way.
At present, the most hotly debated and controversial infringement of moral rights is in film colourisation and movie alternation techniques. Black and white movie favourites, such as Casablanca, are being altered and changed into colour. Recently, actress Angelica Huston, on behalf of her father Jon Huston, sued the Ted Turner Entertainment Company for non-consensual film colourisation of his film The Asphalt Jungle. The French Court returned a favourable verdict concluding that the colourisation of Huston’s film violated his moral rights. The court ruled that the colourisation of the film could not be shown without the consent of the creator and damages were ordered.
The publishing industry is also rife with moral rights claims by authors. For example, a publisher due to a limited budget may decide to abridge or condense an author’s book and delete certain photographs from its contents. This abridgement may affect the quality, style and literary finish of the book, amounting to a breach of the author’s moral rights.
Another example which we have seen recently was where a visual artist had licensed an artwork to an organisation that used his design on stickers, without identifying the author’s name. The organisation’s failure to attribute the author amounted to a breach of our client’s moral right.
Monty Python’s claim
Perhaps the most famous case that debated the moral rights of artists was Gilliam v American Broadcasting Company.
Television studios often try to fit the length of a movie into a standard schedule of network television. This process is called ‘Lexiconning’. Due to the extensive commercial breaks, scenes and language are often deleted or sped up to fit network timeframes and decency standards.
This is what occurred when the ABC and BBC licensed the rights to telecast Monty Python’s Flying Circus. The television networks managed to cut 24 minutes of Monty Python’s classic comedy by omitting the climax of skits and deleting schematic developments in the storyline. This constituted a mutilation of Monty Python’s work or as Judge Lasker stated, “The networks have impaired the integrity of Monty Python’s work causing the programme to lose its iconoclastic verve.”
Although the ABC and BBC had licensing rights to edit the program to fit in with television timeframes, the claimed revisions in the script exceeded the scope of their licence. The court ruled that the claimed revisions in the scripts and ultimately the program could only be made after consultation with Monty Python.
When can’t moral rights be claimed?
Moral rights cannot be claimed in every instance. In order to claim moral rights, the artist’s work must have been changed in some way or not attributed properly. For example, if you don’t like the format your work has been presented in but there is no change to your artistic work, you cannot claim this defence.
What can the courts do?
If your moral rights have been infringed, you may be entitled to injunctive relief (a court order requiring the party to refrain from an activity) or awarded an account of any profits. However, litigation should always be a last resort due to its timely and costly nature. Solving the problem through negotiation is preferable. If you do decide to sue for an infringement of your moral rights, you will still need to arrange how the remainder of your responsibilities under the contract will be carried out.
It is also very important to check whether the court has authority to hear your moral right claim in the country you are situated. For example, the moral right claim is not available under current US law.
Defences to moral right claims
If the person who changed the artist’s work can prove this was a reasonable act in all the circumstances, then this could be a possible defence to a moral right claim. The court will use its discretion to determine the ‘reasonableness’ of the change and will base their examination on the nature of the work and relevant industry practices.
There is a need to allow the owner of the underlying copyright to control the method in which the work is presented to the public. This right remains paramount in copyright law. Moral rights under copyright law are used to recognise the important role of the artist in our society and the need to provide adequate legal protection for one who submits his or her work to the public.
We recently had an enquiry from a theatre director wanting to know whether he could change the words of Madonna’s hit song, Like a Virgin for use in his theatre production. The legal issue here is what constitutes ‘fair use’ of a copyrighted work and what is simply copyright infringement. However, as we outline in this article, the issue is not always black and white.
What is fair use?
The fact that an artist’s copyrighted work has been copied does not necessarily mean that copyright infringement has taken place. The same law that gives copyright ownership to the original creator of a work also grants everyone else a general privilege of ‘fair use’ of that work.
The fair use doctrine is a defence against copyright infringement. It permits courts to avoid rigid application of the copyright statute when on occasion it would stifle the very creativity which the law was designed to foster, namely to ‘promote the Progression of Science and Useful Arts'.
Section 150-153 of the Copyright Act defines fair use as any dealing with copyrighted material for the purposes of ‘criticism; review; parody; news reporting; teaching or research'. If the work is used for any of these purposes, no copyright infringement can be found.
There has been considerable debate among the higher courts in Australia and America about what constitutes ‘fair use’. The courts have finally begun to commit themselves to judging this issue, albeit on a case by case basis.
Fair use factors
In the case of our theatre director, a court would consider the following factors in order to determine whether his use of Madonna’s work would constitute fair use:
Application of the law to parody
In the scenario we’ve discussed, the purpose for changing the lyrics was to parody or ridicule Madonna’s hit song, Like a Virgin.
The entertainment genre known as parody has long posed a challenge to the copyright doctrine. In fact, parody as an art form long predated copyright as evidenced by the work of Shakespeare.
The hoped-for benefits of parody are not only entertainment and enjoyment but also artistic innovation and social criticism. The legal problem though is that in order to parody a work, one also has to copy it sufficiently to create a recognisable ‘derivative work’. This is something that ordinarily requires consent of the copyright holder, which may not be forthcoming even for a fee.
America has led the way in facing this legal and intellectual dilemma, particularly in the case of Campbell v Acuff Rose. The court had to decide whether a rap song made by 2 Live Crew had violated the property right of Roy Orbison’s 1960s country rock hit, Oh Pretty Woman, the rights to which were assigned to Acuff Rose. 2 Live Crew did request permission from the copyright owner to use the work but were denied. They went ahead and published the rap song and were sued for infringement.
The court found that the material copied was a fair use of the work as it was a parody or play on words of the hit song. The court stated that even though there was “substantial copying” of Roy Orbison’s song, “when parody takes aim it must be able to conjure up at least enough of that original to make the object of its critical wit recognisable. It must therefore quote the most distinctive or memorable features that are contained in the song.” Therefore, although in most copyright cases any copying of work no matter how small or large is prohibited without the artist’s permission, in parody cases copying the ‘heart of a work’ is permissible in order for the parody to ‘take aim’.
It is uncontested in 2 Live Crew’s case, that there would be a copyright infringement but for the finding of fair use. Applying this precedent to the scenario of our theatre director, it would appear that as the theatre director significantly transformed the lyrics of Like a Virgin, to make fun of or parody the hit song, it would constitute a fair use and it is unlikely that copyright infringement would be found.
But not in all cases…
However, this is not true of every case and one needs to be reminded that this is a grey area of law to be judged on a case by case basis.
For example, in Dr Seuss Enterprises, L.P v Penguin Books, the court found that an author who mimicked the style of a Dr Seuss book to retell the facts of the OJ Simpson murder trial, was not entitled to claim the fair use defence to copyright infringement. The Court determined that the book entitled, ‘The Cat that is not OUT of the HAT’ was a satire, not a parody. The court emphasised that the book merely used the Dr Seuss characters and style to tell the story of the murder. As the book did not poke fun at or ridicule Dr Seuss, the court found that the author’s work was non-transformative and commercially affected Dr Seuss’ book market.
Fair use is a copyright principle based on the belief that the public is entitled to freely use portions of copyrighted materials for purposes such as commentary and criticism.
Unfortunately, if the copyright owner disagrees with your fair use interpretation, the dispute may have to be resolved by a court of law. Courts take a subjective view of this doctrine and it is hard to determine whether you will be successful or not. If the factors are weighed up and it is determined that your purpose is not a fair use, then you are infringing upon the rights of the copyright owner and may be liable for damages.