I am the License King. I can do… ANYTHING

By: Steven Shapiro, Esq.

Licensing Folks, bear with me for a few lines because I’m going to talk law for a bit. “The operation won't take long and you'll feel much better in the morning.” –Jim Morrison, Celebration of the Lizard King

I had the pleasure of hearing University of Minnesota Law School’s Professor William McGeveran speak about Trademark Fair Use Reform. Basically, the idea of fair use in the trademark context is a defense to an infringement claim, where the defendant alleges she’s using a brand, but is NOT using it like a trademark (as a source identifier), but in a First Amendment-protected, expressive, non-source identifying manner.

So if the pop band Aqua wants to sing about being a Barbie girl in her Barbie world? Let her.

Unfortunately, no matter how good your trademark fair use defense may be, in order to get to the point where you can actually raise it, you have to slog through an entire likelihood of confusion, actual factual analysis of the use in front of a jury. End result: expressive use defenses are expensive and random, so many defendants roll over, rather than fight for their non-infringing expressive use.

McGeveran argues that there are some cases where an expressive use of a trademark is so clearly present, that it’s a no-brainer-- a question of law that on which a judge can rule immediately. These wouldn’t be a get out of jail free cards for ANY ol’ use dressed up as expressive. But some of the more obvious works that would otherwise be completely shut down could instead receive help early on to resolve their cases. He then went on to talk about trademark compliance departments and how entertainment folks have to clear rights anytime a cheerleader sticks her hand down a garbage disposal on Heroes or INSINKERATOR will sue them. He believed that his ‘safe harbor’ fair use categories could alleviate the need for such departments all together.

To his point about trademark compliance, I suggest that the cheese needs to be moved to a different part of the maze. There is a clear market for branded goods in creative works. The Play Pen doesn’t want you displaying its strip club in GTA: San Andreas? Okay. Follow TV and films lead: there are THOUSANDS of gentleman’s clubs that would pay hand over first for that kind of brand exposure.

Do small and lean entertainment companies have product placement departments that can capitalize on those ancillary revenue dollars? Probably not. So how can these companies use trademarks for a reasonable fee? Let’s look across the fence to our copyright folks and their blanket licenses. One can receive certain rights to ASCAP’s entire library of 8.5 million+ songs for a standard rate. Well, why not have a similar collective that provides compensation to licensors for expressive use of their brands?

DISCLAIMERS:

There would need to be incredibly strict quality and brand message guidelines as to what can and cannot be done with each individual brand/trademark.

The licensor would need some kind of right of approval that does not exist in the ASCAP context because of the nature of trademark acquiescence and the realities of brand bibles.

Such a collective would probably be of most interest to less iconic brands.

I do not suggest that this is a perfect model for every situation or even a perfect model for any situation! But such a collective may allow for more efficient implementation of creative and targeted ad dollars. From the creatives’ perspective, instead of the realities of paying cautionary dollars to avoid paying litigation dollars, this might allow cash flows to come into a content-creator’s company in exchange for access to goods that may help them express their story more effectively by aligning with a licensor’s brand message with very little of the intensive legwork.

"Los Angeles, California has the best landscape and climate, but New York has the grooviest people." –Jim Morrison, Celebration of the Lizard King