Adult features bearing titles that are obvious "takeoffs" from popular television series, products, books or movies surface with some regularity. For an example – one that creates no risk because rights have expired — the epic Charles Dickens novel A Tale of Two Cities might be transposed into a triple-X-rated, not so epic, one, A Sale of Two Titties. You get the idea. Such play on some popular title or product might be cute, but lawsuits have been filed, money has been paid and product has been recalled because of just that kind of effort to be clever.
The topic this month is just how far video producers can go with this category of title. The short answer is that they should not go very far.
Protection of product trademarks — whether the name of a product or some identifying logo or non-functional, physical feature — emanates from two sources. One is simple trademark infringement, either statutory or common law, which can be actionable when there is customer confusion about the origin of a product or service. Trademarks, often identified with a tm, and service marks, often identified with an sm, will be treated interchangeably here; either, if registered, is identified with an �.
The purpose of a trademark is to distinguish one source of product from all others. If a car has "BMW" displayed on the hood, then you know that its origin is Bayerische Motoren Werke; or if you don?t know that, you know that wherever it is from is the same place that all of the other BMWs are from and, in either event, the mark is designed to inform you to expect a certain level of quality of the vehicle. The BMW trademark is of great value to the company, then, because it signifies a product of some particular quality. The McDonald?s trademark accomplishes the same thing, regardless of what you might think of their hamburgers, because, if you are in a strange town and see a McDonald?s, you know what you will get; if you see a hamburger restaurant that says "Joe?s Hamburgers," you don?t know what you might get.
Trademark owners spend gobs of money to popularize their marks — millions of dollars for a minute of Super Bowl commercial — so they don?t appreciate others ripping them off. However, given that a trademark is designed to distinguish one company?s goods from another?s, actionable trademark infringement requires proof of likelihood of consumer confusion. It is for that reason that Delta Airlines, Delta Faucets and Delta Dental can co-exist — airlines, plumbing fixtures and dental insurance don't compete in the same market.
Given that trademark infringement cannot be proven without establishing likely consumer confusion, you probably are thinking that it is not a problem to make the title of, and packaging of, a video feature look just like the name and packaging of a box of cereal. After all, cereal companies don?t make movies and movie companies don?t make cereal. And there is some truth to that.
However, the confusion thing is why legislative bodies arrived at the concept of trademark dilution. States (most significantly California and New York) have enacted trademark dilution laws over the years, followed by Congress? enactment of the federal trademark dilution law, effective in 1996. 15 U.S.C. � 1125(c). Trademark dilution occurs when someone "causes dilution of the distinctive quality of" a "famous" trademark. Without getting technical, suffice it to say that a "famous" mark is one with enough notoriety that it is worth capitalizing on. Beer companies, for example, spend millions on advertising that keeps their trademarks famous. So, how do you dilute them?
There are two important ways dilution occurs: One is to capitalize on the trademark?s fame to make money for yourself; the other is to tarnish the trademark?s image. An example of the first is if a company were to bring out a brand of "Exxon" razor blades. While that may not so obviously constitute infringement of Exxon?s famous trademark, it certainly capitalizes on its fame. An example of the second category is — you guessed it — associating a trademark with a product that is at odds with the product?s good name, like putting an allegedly wholesome product in an adult feature (something this column has counseled against for years). Another example is the tizzy that the New York Stock Exchange went into when the New York, New York Hotel-Casino in Las Vegas wrote "New York Stock Exchange" on a similar-looking building on its fa�ade — NYSE wasn?t impressed with the idea of being associated with gambling. New York Stock Exchange, Inc. v. New York, New York Hotel LLC, 293 F.3d 550 (2nd Cir. 2002).
Accordingly, it is trademark dilution that creates a risk when an adult title is a takeoff on a famous product or service. And, face it, using a takeoff on a product that is not famous won?t get you anything.
So much for products. Now, what about spoofs on titles of mainstream motion pictures or television series? Well, titles of motion pictures and other works of artistic expression are entitled to trademark protection, so there is no real difference between a takeoff on a famous product and one on a famous motion picture title.
Copyright law, as it happens, does not really figure into this because a motion picture title, alone, is not copyrightable, nor is a company name. A logo, on the other hand, could well be an artistic work, and thereby subject to copyright protection in favor of the artist (or the company that employed the artist) that drew it (whether on paper or on a computer).
Now, it may have dawned on you that there is some intersection between the First Amendment and the copyright law, and you would be right, but only in a very limited sense. For example, public interest — i.e., newsworthiness — associated with what is copyrighted does not trump copyright protection. If you think about it, that makes sense because, otherwise, the copyright on any controversial work could be destroyed (think about the public interest in motion pictures such as The Last Temptation of Christ or All the President?s Men). Importantly, First Amendment limitations on copyrights, such as they are, are not the same as the right of fair use, such as recording a television show for later home viewing or using brief excerpts from copyrighted works in the context of criticism or review. Fair use of copyrighted material is allowed based upon what Congress enacted as limits of copyright protection. Trademarks also are subject to fair use defenses.
The concept underlying the fair-use defense is that Congress has the power to — but is not required to — enact copyright laws for the protection of authors. Accordingly, Congress can limit the extent of copyright protection as it pleases, and it has. The exception for fair use of copyrighted materials is one such exception (others include, for example, the expiration of a copyright, the first-sale doctrine, and so on). Without getting into the particulars of the fair-use copyright defense, suffice it to say that fair use exists most frequently when the use will not diminish the value of the copyrighted work. Thus, quoting a brief passage from a book in a review is not likely to reduce the commercial value of the author?s copyright. On the other hand, the constitutionally protected part of the book review, including the reviewer?s opinion that the book stinks, could do much damage, although it would not be actionable. Indeed, line items in the statutory fair-use exception identify as fair use uses "for purposes such as criticism, comment, news reporting, teaching ..., scholarship or research," subject to factors, particularly the use?s impact on the value of the copyright.
One species of fair use is parody and satire. The Supreme Court has said, "Parody and satire are deserving of substantial freedom — both as entertainment and as a form of social and literary criticism." But true as that may be, one court noted, "We are not prepared to hold that a commercial composer can plagiarize a competitor?s copyrighted song, substitute dirty lyrics of his own, perform it for commercial gain, and then escape liability by calling the end result a parody or satire of the mores of society." And you can see how this could fit neatly into the example of an X-rated movie attempting to satirize a popular, mainstream one. But then the Supreme Court later refused to preclude from fair use 2 Live Crew?s gritty parody of the song popularized by Roy Orbison, "Oh, Pretty Woman." Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569 (1994).
The parody exception also is embodied in trademark law, to some extent based upon the First Amendment. However, there are legions of trademark cases denying the parody defense. The line between protected parody and illegal tarnishing of a trademark is a blurry one, which counsels against running the risk of being sued by the trademark owner. Owners of famous trademarks tend to have lots of money to spend on attorneys, and much incentive to pursue such claims.
The bottom line is that it generally is not worth it to spoof titles. Certainly, given the 2 Live Crew case, there is a position to be taken where what is being done is parody or satire. But that can be a very expensive position to advance; defending an alleged trademark violation against a suit by a mainstream company with bucks to burn can easily cost more than the adult feature could ever make in profit. Also, where the spoof on the name is for no purpose other than to capitalize on the famous name of a product, movie or television series, those circumstances lean far toward the side of trademark dilution and a long stretch from parody or satire.
Proceed with caution.
(Clyde DeWitt is a partner in the Los Angeles-based, national law firm of Weston, Garrou & DeWitt. He can be reached through AVN's offices, at his office at 12121 Wilshire Blvd., Suite 900, Los Angeles, CA 90025 or over the Internet at [email protected]. Readers are considered a valuable source of court decisions, legal gossip and information from around the country, all of which is received with interest. Books, pro and con, are encouraged to be submitted for review, but they will not be returned. This column does not constitute legal advice but, rather, serves to inform readers of legal news, developments in cases and editorial comment about legal developments and trends. Readers who believe anything reported in this column might impact them should contact their personal attorneys.)
