The Legal Intelligencer — Intellectual Property April 30 2013
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Real-World Trademark Rights For Fictional Brands
Graeme Hogan And AndreW B. Katz

Pop culture sells. But who owns it? Mcommon sense — and the law — often provide an easy answer. It appears obvious that Paramount Pictures Corp., for example, owns the rights to all the characters in its movie Anchorman: The Legend of Ron Burgundy. Any business would implicitly understand the need for permission from Paramount to trade on the likeness of one of the movie’s characters, such as Burgundy himself. But what about Sex Panther, a favored cologne of one of the movie’s characters, to which he attributes his success seducing women? Sex Panther is a made-up brand in the movie. Could an enterprising retailer sell its own brand of Sex Panther cologne in the real world without infringing on Paramount’s property? Here, the law and the legal principles surrounding it are not so clear.

The question is an intriguing one, and one that is increasingly relevant in today’s hyper-connected and media-saturated society. Businesses have long sought to use pop-culture references and phrases to market their products and services. But now, with names, jokes and memes of all sorts drawn from television, movies, songs and the Internet ricocheting around the globe like never before, the lure to capitalize on such references is growing. What people watch, listen to, click on and share reveals an enormous amount about what they like and what they care about. It is of little surprise, then, that more and more companies are seeking to use pop-culture references in their branding strategies.

Borrowing from the entertainment world in this way can be tricky. In today’s media, the distinction between what is real and what is fiction has become increasingly blurred, sometimes even indistinguishable. The same may be true for the products and services that appear in these fictional settings. Yet, neither federal trademark laws nor their related court decisions provide a clear answer as to whether trademarks used in these “unreal” portrayals are valid and enforceable in the real world. The question remains: Can we dab on Sex Panther cologne without Paramount’s permission?

The starting point for an answer is the Lanham Act, 15 U.S.C. §1051 et seq., which states a basic tenet of trademark law “that in order for a mark to garner protection, it must be used in commerce.” The act goes on to define use in commerce as “the bona fide use of a mark in the ordinary course of trade,” and to state that “it is firmly established that the right to exclusive use of a trademark derives from its appropriation and subsequent use in the marketplace.” Thus, there can be no trademark absent goods sold, and no service mark without services rendered. Courts have upheld that principle — no trade, no trademark — in a number of cases, including, notably, La Societe Anonyme des Parfums le Galion v. Jean Patou, 495 F.2d 1265, 1274 (2nd Cir. 1974), and Chance v. Pac-Tel Teletrac, 242 F.3d 1151, 1156 (9th Cir. 2001) .

But interpreting the Lanham Act gets murky when it comes to fictional products, and court cases that have touched on the issue provide limited guidance.

A 1979 decision in American Footwear v. General Footwear, 609 F.2d 655, (2d Cir. 1979) , allowed a footwear company to trademark the word “bionic” for use on shoes despite prior trademark registrations issued to Universal Studios — relating to The Six Million Dollar Man and The Bionic Woman television shows — covering TV, entertainment and toys. However, the decision focused on the use of a term popularized (not even coined) by the television shows owned by Universal; it was not about turning a fictional product or service into something real.

Duff Beer, the fictional brew enjoyed by Homer Simpson and his pals, has been the subject of litigation in Australia, where Fox Entertainment Corp. successfully blocked a brewing company there from calling one of its beverages Duff Beer. Similar controversies with the real-life use of the Duff brand have cropped up in other countries, too, but in all cases, the matters are governed by foreign statutes and thus have minimal precedential value to American law. A Duff Beer case might be brewing domestically in the near future, however, as Duff’s Famous Wings Enterprises Inc., an establishment in New York that began operations prior to The Simpsons cartoon, seeks to extend its registered mark DUFF’S for bar services to additionally cover a new microbrew.

In the meantime, much of the legal discussion about the permissibility of using fictional brands in real commerce revolves Around two cases that involve DC Comics’ ownership of the Superman franchise, one of the best-known and revered fictional creations. DC Comics prevailed in both cases, but the particular facts and circumstances of the cases may diminish their precedential nature and, importantly, call into question their relevance to trademark disputes involving lesser-known properties.

In the first case, DC Comics v. Powers, 465 F. Supp 843 (SDNY 1978), an independent newspaper was ordered to drop the name The Daily Planet because it was deemed to create an association with the fictional newspaper found in the Superman cartoons and comic books. The fact that no one in the real world offered a newspaper or reporting service under a mark confusingly similar to “The Daily Planet” made no difference. The decision instead rested simply on the strength of Superman as a highly recognized cultural icon and brand reference.

More than 25 years later, the strength of Superman as a brand would even withstand a hard dose of kryptonite. The ruling in DC Comics v. Kryptonite, 336 F.Supp.2d 324 (SDNY 2004), determined that “kryptonite” was an element of the Superman entertainment product that should be entitled to trademark protection, and found trademark infringement and breach of contract by the bicycle-lock company, Kryptonite Corp. Here, too, the decision turned on the court’s determination that the Superman franchise is so popular and powerful that its story elements were “immediately recognized or associated with the character Superman.” Also at work in the court’s decision was consideration of a 10-year-old licensing agreement reached between the parties that had allowed the lock company to use the term “kryptonite” both as its corporate name and as a product trademark. Indeed, DC Comics initiated the suit only after the company sought to expand its product line and filed trademark applications for the term “kryptonite” in its own name. The original deal, it appears, signaled to the court an acknowledgment by Kryptonite Corp. that DC Comics owned at least some rights to the term or, at a minimum, that some permission from DC Comics was necessary to use the term.

While neither of the Superman cases presents standards for determining exactly what would qualify a fictional product or service for real-world protection, other trademark cases with some overlapping issues might offer some guidance. For instance, a decision handed down earlier this year by the U.S. Court of Appeals for the Seventh Circuit in Eastland Music Group v. Lionsgate Entertainment, No. 12-2928, (7th Cir., 2013), holds some clues about how courts might determine the scope of protection for a fictional mark based on public perception. In the case, a music management company representing the rap group Phifty-50 brought suit against a movie production studio alleging that the movie 50/50 infringed on the music management company’s trademark rights. The court held that Eastland Music’s very limited trademark rights were not infringed upon, stating: “Only a confusion about origin supports a trademark claim, and origin for this purpose means the producer of the tangible product sold in the marketplace.” The court found, in effect, that it is the public’s perception of the pop-culture phrase, not the phrase-maker’s claim to the phrase, that governs whether trademark rights are infringed.

The court’s rationale in the Eastland Music case suggests that owners of media properties that include fictional brands and products would have to prove likelihood of confusion, i.e., that consumers would be confused as to the origin of the real-world product based on the fictional product. Lack of confusion would mean lack of infringement. And with the exception of iconic marks, such as Superman — which has flooded the worldwide marketplace with a slew of merchandise for decades — the owners of most fictional marks will find developing persuasive survey and anecdotal evidence difficult and expensive.

Paramount, then, might have a hard time proving that consumers of a real-world Sex Panther cologne would confuse the product as having been put into commerce by the movie studio or, even, as an Anchorman tie-in. Certainly, Ron Burgundy does not enjoy the same recognition as Superman or Homer Simpson, and the term “Sex Panther,” used in only a few scenes in the movie, is not nearly as recognizable as The Daily Planet or Duff’s Beer. Accordingly, entrepreneurs — even those purposely capitalizing on the movie’s cult status — may have viable rights to freely adopt the term “Sex Panther” as a trademark on any number of products, including, but certainly not limited to, the movie’s signature cologne. Of course, Paramount, if it chose to be aggressive, could attempt to stifle such attempts by asserting infringement claims based on the Superman cases. Until an opinion comes out that sets a clearer standard for real-world rights in fictional products, we may never know how enticing Sex Panther really is. •

Graeme Hogan is a second-year law student at Villanova University and is currently an intern at Belles Katz, assisting with trademark and licensing matters.

AndreW b. Katz is a partner at Belles Katz, a full-service intellectual property law firm with offices in Philadelphia and Horsham, Pa., and Washington, D.C. A registered patent attorney, he concentrates his practice on managing the intellectual property portfolios of a diverse set of clients in the technology and consumer products arenas.