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?