By: James B. Astrachan
Trademarks can be a business’ most valuable asset. They instantly identify the source of the product and convey important information to the consumer. Is the product of high or low quality? Does it last or wear out? Smell good or bad? The LOWENBRAU mark has been in use since 1383.
A business can usually prevent a competitor from using its trademark or a similar mark in connection with the competitor’s goods or services if consumers are likely to be confused as to either the source of goods or an affiliation between the owner and its competitor. Some marks are considered famous, such as McDonald’s or Ford. They have been around forever and lots of ad dollars have been spent to reach most of the population. Even people who have never eaten at a McDonald’s have heard of McDonald’s. If a business selling goods or services not in competition with the owner of a famous mark adopts the famous mark, the mark’s owner can often stop its use under state or federal anti-dilution laws. For example, Sony and Sony’s restaurant. It’s not likely that anyone will believe Sony is in the restaurant business, but a restaurant’s use of Sony’s famous mark may blur the distinctiveness of the mark.
Not every use of another’s trademark is infringing and actionable and no one has a monopoly in its mark. The statutory concept of fair use allows another’s mark to be used for comparative advertising, parody and for descriptive purposes. For example, the owner of the SWEET N TART mark could not stop another candy marker from describing its candy as being sweet and tart, as long as the marker did not use the descriptive term as a trademark. There are also First Amendment considerations that allow the use of another’s mark in artistic works.
Established in 1926, U.S. Route 66, also known as the Will Rogers Highway, was one of the original United States highways. It ran from Chicago to Los Angeles, a distance of 2,448 miles. It was removed from the highway system in 1985, having been replaced by the interstate system and being considered no longer relevant.
Route 66 is also a popular song about getting kicks (on Route 66) written in 1946 and covered by many musicians including Chuck Berry and the Rolling Stones. Route 66 also spawned numerous businesses of that name including a race track, a technology company, a record label and a brand of blue jeans sold by K-Mart. Perhaps the most well remembered product associated with Route 66 was the television series that ran from 1960 to 1964 and featured Martin Milner and George Maharis and a sweet Corvette sports car. Martin’s and George’s characters drove for four years in their search for the meaning of life. The show, however, was not bound to locations along Route 66; the final episode was shot in Tampa, far from Route 66. There was a spin-off movie of the same name released in 2004, starring two Germans and an old Cadillac. The name still had drawing power and had not been forgotten after 40 years.
In 2001, Roxbury Entertainment acquired all rights to the Route 66 TV series and related intellectual property, including the federally registered Route 66 mark. Its intention was to release the old TV series on DVD and perhaps make or license a movie. It has been said that no iconic trademark escapes irreverent use by persons not its owner, and Route 66 was no exception.
Penthouse Media, the publisher of Penthouse Magazine decided that the mark Route 66 was perfect to use to market and sell its Route 66 titled DVD that featured on the cover – it is Penthouse, after all – two topless women standing on a roadmap with a silhouette of a mountain range behind them. The word “Penthouse” appears in all capital letters across the top of the package and on the bottom third of the package appears “Route 66” in a font two times the size of the Penthouse font. A California highway sign marked Route 66 is prominent in the photo. The DVD package is labeled “hard core adult entertainment.” The DVD is primarily graphic sex scenes, but there is a story line, albeit very thin. It concerns a young couple fleeing an unlawful event. They are traveling by car and on the run. It’s no surprise that they spend much of the movie in roadside motels along Route 66.
It’s no surprise, either, that Roxbury very strongly objected to the use of its registered mark in connection with a hard core porn movie that involved two road travelers. When Penthouse refused to stop selling the DVD, Roxbury sued for trademark infringement and violations of the anti-dilution act.
Penthouse’s First Amendment and fair use defenses were entirely foreseeable. Where an artistic work is involved, the First Amendment can provide a complete defense to a Lanham Act claim. This is because non-commercial speech receives more protection than does “buy me” speech, or to put it another way, speech that does nothing more than propose a commercial transaction, such as ads.
Films, as artistic works are generally, but not always, entitled to First Amendment protection. To determine whether a particular film deserves protection in a trademark case courts generally apply a test of two components. First, the defendant’s use of the plaintiff’s trademark must be relevant to the film, but the defendant has a great deal of leeway in this regard as courts have held that “the level of relevance must merely be above zero.”
The second component of the test requires an examination of whether a defendant’s use of the mark explicitly misleads consumers as to source or content of the film. In other words, would consumers believe that the film created by, or that the defendant is somehow associated or affiliated with the plaintiff? Mere use of another’s mark does not make for confusion.
Penthouse won its case as there was no evidence of consumer confusion presented to the court as to source or association. Subject matter aside, the DVD was a film and it had some modicum of a plot. And there was some relationship, albeit it weak, between the mark and a film about road travelers on Route 66.
The court didn’t discuss the strength of the mark. Stronger marks get more protection, and this mark is pretty weak due to its long use to identify a U.S. Route, and a myriad of uses by many persons. Nor did anyone raise the issue that Penthouse’s film may be a parody of the original TV series and the use of the mark essential to that parody.
It’s frustrating, no doubt, for the mark’s owner to see Route 66, a mark it paid considerable money to own, used for free in this fashion. But sometimes the First Amendment will frustrate someone who doesn’t like what someone else is saying. That’s just the way it is.
A business can usually prevent a competitor from using its trademark or a similar mark in connection with the competitor’s goods or services if consumers are likely to be confused as to either the source of goods or an affiliation between the owner and its competitor. Some marks are considered famous, such as McDonald’s or Ford. They have been around forever and lots of ad dollars have been spent to reach most of the population. Even people who have never eaten at a McDonald’s have heard of McDonald’s. If a business selling goods or services not in competition with the owner of a famous mark adopts the famous mark, the mark’s owner can often stop its use under state or federal anti-dilution laws. For example, Sony and Sony’s restaurant. It’s not likely that anyone will believe Sony is in the restaurant business, but a restaurant’s use of Sony’s famous mark may blur the distinctiveness of the mark.
Not every use of another’s trademark is infringing and actionable and no one has a monopoly in its mark. The statutory concept of fair use allows another’s mark to be used for comparative advertising, parody and for descriptive purposes. For example, the owner of the SWEET N TART mark could not stop another candy marker from describing its candy as being sweet and tart, as long as the marker did not use the descriptive term as a trademark. There are also First Amendment considerations that allow the use of another’s mark in artistic works.
Established in 1926, U.S. Route 66, also known as the Will Rogers Highway, was one of the original United States highways. It ran from Chicago to Los Angeles, a distance of 2,448 miles. It was removed from the highway system in 1985, having been replaced by the interstate system and being considered no longer relevant.
Route 66 is also a popular song about getting kicks (on Route 66) written in 1946 and covered by many musicians including Chuck Berry and the Rolling Stones. Route 66 also spawned numerous businesses of that name including a race track, a technology company, a record label and a brand of blue jeans sold by K-Mart. Perhaps the most well remembered product associated with Route 66 was the television series that ran from 1960 to 1964 and featured Martin Milner and George Maharis and a sweet Corvette sports car. Martin’s and George’s characters drove for four years in their search for the meaning of life. The show, however, was not bound to locations along Route 66; the final episode was shot in Tampa, far from Route 66. There was a spin-off movie of the same name released in 2004, starring two Germans and an old Cadillac. The name still had drawing power and had not been forgotten after 40 years.
In 2001, Roxbury Entertainment acquired all rights to the Route 66 TV series and related intellectual property, including the federally registered Route 66 mark. Its intention was to release the old TV series on DVD and perhaps make or license a movie. It has been said that no iconic trademark escapes irreverent use by persons not its owner, and Route 66 was no exception.
Penthouse Media, the publisher of Penthouse Magazine decided that the mark Route 66 was perfect to use to market and sell its Route 66 titled DVD that featured on the cover – it is Penthouse, after all – two topless women standing on a roadmap with a silhouette of a mountain range behind them. The word “Penthouse” appears in all capital letters across the top of the package and on the bottom third of the package appears “Route 66” in a font two times the size of the Penthouse font. A California highway sign marked Route 66 is prominent in the photo. The DVD package is labeled “hard core adult entertainment.” The DVD is primarily graphic sex scenes, but there is a story line, albeit very thin. It concerns a young couple fleeing an unlawful event. They are traveling by car and on the run. It’s no surprise that they spend much of the movie in roadside motels along Route 66.
It’s no surprise, either, that Roxbury very strongly objected to the use of its registered mark in connection with a hard core porn movie that involved two road travelers. When Penthouse refused to stop selling the DVD, Roxbury sued for trademark infringement and violations of the anti-dilution act.
Penthouse’s First Amendment and fair use defenses were entirely foreseeable. Where an artistic work is involved, the First Amendment can provide a complete defense to a Lanham Act claim. This is because non-commercial speech receives more protection than does “buy me” speech, or to put it another way, speech that does nothing more than propose a commercial transaction, such as ads.
Films, as artistic works are generally, but not always, entitled to First Amendment protection. To determine whether a particular film deserves protection in a trademark case courts generally apply a test of two components. First, the defendant’s use of the plaintiff’s trademark must be relevant to the film, but the defendant has a great deal of leeway in this regard as courts have held that “the level of relevance must merely be above zero.”
The second component of the test requires an examination of whether a defendant’s use of the mark explicitly misleads consumers as to source or content of the film. In other words, would consumers believe that the film created by, or that the defendant is somehow associated or affiliated with the plaintiff? Mere use of another’s mark does not make for confusion.
Penthouse won its case as there was no evidence of consumer confusion presented to the court as to source or association. Subject matter aside, the DVD was a film and it had some modicum of a plot. And there was some relationship, albeit it weak, between the mark and a film about road travelers on Route 66.
The court didn’t discuss the strength of the mark. Stronger marks get more protection, and this mark is pretty weak due to its long use to identify a U.S. Route, and a myriad of uses by many persons. Nor did anyone raise the issue that Penthouse’s film may be a parody of the original TV series and the use of the mark essential to that parody.
It’s frustrating, no doubt, for the mark’s owner to see Route 66, a mark it paid considerable money to own, used for free in this fashion. But sometimes the First Amendment will frustrate someone who doesn’t like what someone else is saying. That’s just the way it is.
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