Written by Aida M. Lebbos and Shaun M. Koenig

The movie Flight with Denzel Washington was released into theaters just a few months ago on November 2, 2012. In the short period of time since its release, there has been a fair amount of media attention given to Anheuser-Busch’s objections to a scene in the movie where Whip Whitaker, the alcoholic airplane pilot portrayed by Mr. Washington, is drinking a Budweiser while driving a car. Anheuser-Busch had asked that the Budweiser logo be removed or obscured in future showings of the film and on the version to be released on DVD and other mediums. If you have picked up the film at your local Redbox since its DVD release on February 5, 2013, however, you will note that Paramount Pictures has not acceded to this request.

Unlike the paid product placements that are often very prominent and sometimes comical in TV and movies (who knew James Bond drank Heineken?), “unauthorized” product depictions may be less favorably received by the companies that make the depicted products, especially when the use of the product has a negative association. Although Anheuser-Busch and other companies may object to such use on the basis that it is unauthorized, the reality is that permission really is not needed as courts have held movie studios and TV production companies do not need permission for a depiction of products that are used as they are intended.

But Anheuser-Busch is not just objecting to the use of a Budweiser beer, they are objecting to impression created by the manner of use, asserting that the depiction is inconsistent with the brand’s image and detrimental to the brand’s reputation. Anheuser-Busch’s position is that such a portrayal of its product is counter to its efforts to promote responsible drinking. In fact, the Federal Trademark Dilution Act provides a cause of action for tarnishment – essentially that the infringer’s use reduces the trademark’s reputation as a wholesome identifier of the owner’s products or services. While this would seem to be a sword readymade for use in objecting to less than glamorous or desirable depictions, relying on the FTDA has not proved to be very successful as a deterrent or a remedy in these instances.

For instance, in WHAM-O, Inc. v. Paramount Pictures Corporation, 286 F.Supp.2d 1254 (N.D. Cal. 2003), Wham-O sought to enjoin Paramount studios and Happy Madison Productions against what it considered unauthorized use of a Slip ‘N Slide in the movie “Dickie Roberts: Former Child Star.” Wham-O claimed that a scene showing actor David Spade suffering injury while (mis)using the popular summer toy violated trademark laws through infringement, unfair competition, and dilution.

Although this was a request for an injunction, the court had to analyze the likelihood that Wham-O would succeed on the merits on any of its claims. In response to the plaintiff’s claim that the depiction of their product in such a way “presents a danger that consumers will form an unfavorable association with the mark, the court held that “to those viewing the film, the misuse will be apparent and plaintiff’s mark will not be harmed”.

The court addressed the infringement and unfair competition claims by stating that defendant’s depiction of the Slip n Slide product and use of the associated trademark was not likely to cause customer confusion about the source of the goods. In short, not one single consumer is likely to believe that Paramount Pictures manufactures Slip ‘N Slides, and in fact, since it does not, there is no basis for an unfair competition claim. Even if there were such a basis, the Court denied the injunction stating that Paramount raised a successful nominative use by meeting all three factors 1) only identifying or capturing the mark with adequate specificity; 2) using only so much of the marks as is reasonably necessary to identify the product; and 3) the use of the mark does not in any way suggest sponsorship.

Wham-O is not the only example of business unhappy with a movie product depiction going on the offensive with trademark law. In 2011, Louis Vuitton sued Warner Bros. for trademark dilution among other things based on the use of a handbag in an airport scene in the Hangover II when Alan (played by Zach Galifianakis) carries luggage marked LVM and warns another character “Careful, that is… that is a Louis Vuitton.” According to the complaint, the item in question is not in fact a Louis Vuitton but was instead made by a Chinese American firm called Diophy. Warner Bros. moved to dismiss on the grounds that its non-commercial use of the Diophy bag was part of an “artistic work and not explicitly misleading as to the source or content of the work. In June 2012, the District court grants defendant’s motion to dismiss the trademark infringement action. The lack of success for these trademark holders as well as others means Anheuser-Busch is unlikely to march into court to try to remedy its unhappiness over Flight, at least not using trademark law.

Aida M. Lebbos, Esq. is an Assistant General Counsel for The Henry M. Jackson Foundation for the Advancement of Military Medicine, Inc. and Shaun M. Koenig, Esq. is in private practice at The Koenig Law Group, LLC.