A Balancing Act: Fair Use and Creative Content
July 24, 2017
Conventional wisdom, in the trademark arena, has been that a party who wishes to use the trademark of another party must first obtain a license. In recent years, a trend appears to be emerging in the entertainment industry where such use will occur without a party preliminarily seeking express consent. And the same is true in the related area of life story rights. This new trend demonstrates that entertainment industry actors are taking a more aggressive approach to using another’s intellectual property, putting them potentially at odds with the owners of those rights, whose objectives are to police and protect that brand with the public. The justification that industry actors rely on is that using these rights falls under the fair use defense, which excuses the lack of express authorization to use an owner’s trademarks or life story rights. The owners of these brands or rights, however, may employ their own aggressive measures to combat this trend in order to control and protect these rights.
An example of this trend is illustrated by HBO’s use of NFL (i.e., the “National Football League”) trademarks and logos in the show Ballers, which stars Dwayne Johnson.1 When news spread that HBO was not paying licensing fees to the NFL for depicting the NFL logo and team uniforms, it caught many by surprise.2 The cable series began with Johnson’s character, Spencer Strassmore, having flashbacks from his playing days for the Miami Dolphins.3 He is wearing what clearly appears to be a Dolphin’s uniform—logo in plain view-and is chasing down the Buffalo Bills quarterback, whose helmet logo is also visible.4
Some industry insiders assumed that the NFL would take action against HBO and that HBO would eventually have to pay the NFL for using the various team logos and uniforms; they were astonished to see a company taking on the NFL in such a way.5 Previously, producers who used NFL team logos and uniforms in their vehicles first entered into a licensing agreement with the NFL.6 This, of course, required paying licensing fees to the NFL.7 HBO responded to the publicity surrounding its actions by stating, “HBO is always mindful of other intellectual property owners, but in this context there is no legal requirement to obtain their consent.”8 While there have already been analyses of HBO’s decision, this article discusses instances (including Ballers) where the “fair use” defense could apply to similar conduct and how arguments are being used in the conflict over clearing-or not-of life story rights.
I. Fair Use and Trademarks
The use of noteworthy brands or trademarks is commonplace in fictional realities, with television, film, advertising, and video games being exemplars. Owners of these “brands,” or trademarks, have a bona fide and legally recognized interest in protecting their marks; the law allows them to stop others from using such marks to prevent the public from being confused about the source of corresponding goods or services. These rights, however, cannot halt non-infringing use of another’s trademark; one such subset of permissible conduct is known as “fair use.” There are two types of “fair use”: descriptive and nominative. Descriptive fair use is a statutory protection, codified in the Lanham Act,9 while nominative fair use is a judicially-created defense. Either is relevant here, because this is a principal argument that filmmakers and producers will rely on to use these marks without “paying to play.”
1. Descriptive Fair Use
Federal trademark law recognizes a defense to trademark infringement where the mark is used “fairly and in good faith . . . to describe the goods or services of such party, or their geographic origin.”10 Known as the descriptive fair use defense, it “in essence, forbids a trademark registrant to appropriate a descriptive term for his exclusive use and so prevent others from accurately describing a characteristics of their goods.”11 This defense “is available only in actions involving descriptive terms and only when the term is used in its descriptive sense rather than its trademark sense.”12 For example, in Zatarains, Inc. v. Oak Grove Smokehouse, the United States Court of Appeals for the Fifth Circuit found that the term “Fish-Fri” was a descriptive term relating to the preparation and consumption of fried fish and could be used by a competitor as a descriptive term for similar products.13
2. Nominative Fair Use
Though not codified in the Lanham Act, the nominative fair use defense was recognized as a judicial carve-out in New Kids on the Block and addresses circumstances where no descriptive term may exist:
With many well-known trademarks, such as Jell-O, Scotch tape and Kleenex, there are equally informative non-trademark words describing the products (gelatin, cellophane tape and facial tissue). But sometimes there is no descriptive substitute . . . when many goods and services are effectively identifiable only by their trademarks. For example, one might refer to “the two-time world champions” or “the professional basketball team from Chicago,” but it’s far simpler (and more likely to be understood) to refer to the Chicago Bulls. In such cases, use of the trademark does not imply sponsorship or endorsement of the product because the mark is used only to describe the thing, rather than to identify its source.14
Circumstances involving nominative fair use generally occur when a defendant has intentionally used the plaintiff’s mark to refer to the plaintiff but does not designate the source of the defendant’s own products or services.15 A defendant must satisfy three requirements to use the defense:
1) the plaintiff’s product or service in question must be one not readily identifiable without use of the trademark; 2) only so much of the mark or marks may be used as is reasonably necessary to identify the plaintiff’s product or service; and 3) the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.”16
A 2004 Supreme Court decision, KP Permanent Make-Up, Inc. v. Lasting Impression, Inc.,17 cast doubt on the continued availability of nominative fair use as a defense, even though the case involved a descriptive fair use defense, because the ruling “calls into question whether the nominative fair use defendant would have the burden of negating sponsorship or endorsement confusion with the trademark owner.”18 But even with that consideration in mind, the concept of nominative fair use allows for the comparative advertising, parody, and noncommercial use of trademarks.19
II. Trademarks and the First Amendment
At their core, trademarks are considered to be commercial speech.20 Because the First Amendment allows for significant regulation of commercial speech, constitutional issues do not typically arise in trademark disputes. But this analysis changes for creative works, such as plays, televisions shows/series, films, books, video games, and songs, which are generally sold as commercial products.21 When a mark is being employed as a creative use, rather than a descriptive or commercial one, First Amendment considerations become part of the analysis. Creative works are protected as free speech under the First Amendment, and because these types of works in the trademark context contain both artistic expression and commercial promotion, a different analysis applies.22 Accordingly, a balance must be struck between the trademark owner’s rights and the First Amendment rights tied to creative works.23
The leading judicial authority on balancing these interests is Rogers v. Grimaldi,24 a case from the United States Court of Appeals for the Second Circuit, which involved a film about cabaret performers.25 The Rogers test has two prongs: 1) whether the use of the third-party trademark has artistic relevance; and 2) if there is artist relevance, is the use of the mark deliberately misleading as to the content or source of the work.26 Because this article focuses on television series and movies using third-party trademarks, whether the use of these marks is legal or defensible also raises the tension inherent in First Amendment considerations and trademark protections for owners. In some cases, if litigation is pursued, the Rogers test could be an important part of whether the use of this mark by an alleged infringer has constitutional protections.
III. The Use of Professional Sports League Trademarks in Film and Television: A Fair Use?
A prominent example of an entity that resolutely protects its brand is the NFL. As just one illustration of this, during the 2017 Super Bowl, U.S. Immigrations and Customs Enforcement (“ICE”), U.S. Customs and Border Protection (“CBP”), and the NFL engaged in “Operation Team Player.”27 The ICE newswire stated that “enforcement actions led by Homeland Security Investigations (HSI) resulted in the seizure of over 260,000 counterfeit sports-related items worth an estimated $20 million, and joint investigative efforts led to 56 arrests with 50 convictions.”28 NFL Vice President of Legal Affairs, Delores DiBella, responded to questions about the seizure at a joint press conference by stating that “the NFL is proud to continue its work with ICE, the IPR Center, and law enforcement departments throughout the country to protect fans and consumers who are seeking an authentic NFL experience during the celebration of Super Bowl LI.”29
The NFL’s brand protection efforts go beyond apparel and merchandise, extending to how the NFL is portrayed in the media. The NFL was able to persuade ESPN to stop airing Playmakers, one of that cable network’s most viewed shows. Playmakers depicted the lives of the Cougars, a fictional professional football team that was part of a larger organization only referred to as “the League.”30 In 2004, New York Times reporter Richard Sandomir wrote that then NFL commissioner Paul Tagliabue complained about ESPN’s Playmakers series to Michael Eisner, Chief Officer of the Walt Disney Company.31 Although the series had both high viewership and strong reviews, Playmakers was canceled after just eleven episodes because of pressure from the NFL, which disliked the portrayal of players’ lives off the field.32 The NFL made it clear to ESPN that NFL executives and team owners did not want (or appreciate) the negative depiction of players in Playmakers. Part of the calculus behind ESPN’s decision over whether to challenge the NFL’s demand to stop airing Playmakers was the fact that the network’s most watched show was Monday Night Football-and the rights to broadcast those games emanated from the NFL.33 ESPN’s profits, from a pure number standpoint, have declined in the past few years,34 which might have in fact raised the value of the NFL deal (which expires in 2021) and relationship for ESPN.35
HBO, on the other hand, has no such relationship with the NFL. In the episodes of Ballers, “NFL players” are shown going to clubs and struggling with financial problems. The NFL likely would prefer that these sort of experiences be aired on a platform as popular as HBO because of the possible negative impact on the NFL brand.36 Additionally, a spokesperson for HBO has stated that in the context of the show Ballers, “there is no legal requirement to obtain [the NFL’s] consent.”37 So what is HBO’s argument to justify its use of the NFL’s logos and trademark without a license? The answer: fair use. As set forth earlier, fair use provides an affirmative defense that a defendant can use in a trademark infringement or dilution case. The defense allows the general public to use the protected trademark as long as the primary meaning of the descriptive mark is being used in good faith.38 HBO’s position surely is that it is using the primary meaning of the marks, as Ballers depicts the NFL uniforms as they appear, and is acting in good faith and offering realistic portrayals, rather than disparaging or tarnishing the trademark and logos.
Ballers and Playmakers both provide examples of where the networks producing the shows did not seek or obtain a license from the NFL before using its logos and trademarks. In the case of Playmakers, while the team names were fictional and the overall organization was referred to “the League,” the NFL appears to have viewed it as a thinly-veiled version of the actual NFL. In any event, the NFL did not like the way players and the organization were being portrayed and wanted to protect its brand and control the associated rights.
But in cases where a show or film finds it necessary to use trademarks-and opts to do so without first securing authorization-to tell a story, and the intent of that story is meant to be positive, that could well affect whether the intellectual property rights owner seeks legal action. For example, Sony did not seek permission from the NFL to use its logos or actual footage in the movie Concussion.39 That film, which starred Will Smith, concerns a forensic pathologist who fought the NFL’s efforts to suppress his research on chronic traumatic encephalopathy (“CTE”) brain degeneration suffered by professional football players. If challenged in a legal action, Sony’s argument would almost certainly be that using of the NFL’s trademarks was necessary to tell the story precisely and was protected by the fair use defense.40 Additionally, Sony could argue that the movie only used the NFL’s marks to identify the teams the main character played for and only used the mark enough for the audience to be able to identify the team or the NFL in the film, thus enhancing authenticity.41 Lastly, Sony did not make it appear that the NFL endorsed the movie, nor did it “falsely misrepresent” the NFL.42 Taken together, these arguments would form a fair use defense for Sony regarding the presence of the NFL’s trademarks in Concussion.
An important difference between Ballers and Concussion is that the intellectual property rights utilized by the latter were meant to have a positive impact by drawing attention to what many have labeled a serious health and safety issue affecting many professional football players. Additionally, at the time of Concussion‘s release, the NFL was involved in a class-action lawsuit with former NFL players concerning concussion and head-related injuries. If the NFL chose to sue Sony for trademark and copyright infringement, it might have risked further tarnishing of its brand with the public during a period when the NFL was already experiencing bad publicity from these lawsuits.
The fair use defense may also apply to the unsanctioned use of marks in documentaries. Two relatively recent documentaries relating to the NHL are The Last Gladiators (2011) and Ice Guardians (2016).43 Both focus on the role of “enforcers,” the hockey players whose job it is to fight anyone from an opposing team who tries to hurt one of their teammates. Each documentary uses actual footage from NHL games and portrays NHL logos throughout, and it is not evident that either documentarian had express permission from the NHL to use its logos or footage. In a video interview posted on the NHL’s website, Kelly Chase explains that the creators of Ice Guardians were careful in how they portrayed the game and players so as to not antagonize the League, strongly suggesting that the people associated with the film did not officially seek the NHL’s permission.44 These filmmakers could make a similar argument as that available to Sony for Concussion, namely, that they had no obligation to get express authorization from the NHL insofar as their use of NHL intellectual property was both necessary to portray the story accurately and not misrepresentative of the NHL. These and like positions would most likely qualify as fair use defenses.
In response to this more aggressive approach of television producers and filmmakers using these materials, many sports leagues have created their own networks and are producing their own movies. If this “trend” continues, leagues such as the NFL and NHL may take more stringent measures to protect their marks and brands and make it more difficult for these producers and filmmakers to use their marks.
IV. Life Story Rights: Are They Necessary?
The analysis for the life story rights is a similar one, where the issue of not having express authorization for using those rights can implicate a fair use defense. Before delving into what life story rights are, it is important to note the key issue here is the right to publicity.45 What this encompasses is an individual’s right to “control and profit from the commercial exploitation of his or her name and likeness, image, or persona.”46 This is not a federal right, and each state has its own view of what constitutes “infringement” and “fair use.”47 For example, New York classifies using “the name, portrait or picture of any living person” without the person’s or his/her guardian’s written consent as a misdemeanor48 and also provides equitable relief.49 A violation of a right to someone’s publicity can also involve ancillary individuals if a depiction of their names or likenesses was not previously recorded in a public manner and the filmmakers did not obtain permission to depict these characters in the film.50
The right to publicity comes into play for clearing life story rights. A “life story” is simply “the things that have happened to someone in life.”51 Typically, movie studios and producers purchase life story rights so they can have the legal right to depict the events that happened in a person’s life.52 Without this permission, movie studios and authors can be sued for invading the respective individual’s right to privacy.53 In this context, there is a conflict between freedom of artistic expression (important to the movie studios and producers) versus freedom of privacy (important to the private citizen), and a tension within the First Amendment itself. In times past, the right to privacy prevailed, and clearing life story rights was a requirement.54 Traditionally, the major studios always played it safe so their profit would not decrease by paying for litigation.55 The difficulty for indie artists-who are not as well-funded as their major studio counterparts-is that obtaining a life story license can be expensive; particularly depending on whose “life” is being purchased.56 And these agreements are not really about acquiring an underlying right, because the facts of the person’s life are in the public domain, but rather serve to waive certain personal rights.57 For these reasons, it is sometimes easier to proceed without obtaining a life story rights agreement.58
1. Case Study: Equinox Films and Winnie Mandela
In 2011, Equinox Films made a movie about Winnie Mandela, the wife of Nelson Mandela, starring Jennifer Hudson and Terrence Howard. Equinox Films based the film on the biography, Winne Mandela: A Life, by Anne Marie du Preez Bezrob and obtained the rights to the book. The filmmakers did not, however, obtain Winnie’s life story rights.59 Ms. Mandela openly criticized the movie and filmmakers for not obtaining her permission and “delving only superficially into her life story.”60 She stated, “I was not consulted. I am still alive, and I think that it is a total disrespect to come South Africa, make a movie about my struggle, and call that movie some translation of a romantic life of Winnie Mandela.”61 While there was no litigation, Equinox Films arguably would not have needed to the life story rights because Winne Mandela, as both Nelson Mandela’s wife and a powerful individual in her own right, lived in the public arena. Furthermore, as the filmmakers based the film upon book rights they already had, and unless the film was based on works outside the book or a mischaracterization of Ms. Mandela’s life, Equinox Films would likely have a defense of fair use for the film.
2. Case Study: Narcos and Roberto Escobar
As noted above, ancillary characters or subsequent owners of life story rights may also invoke issues with clearing life story rights. Netflix is currently airing Narcos, a series that IMDb describes as “[a] chronicled look at the criminal exploits of Colombian drug lord Pablo Escobar, as well as the many other drug dealers who plagued the country through the years.”62 On July 1, 2016, Roberto Escobar, Pablo Escobar’s brother, sent a letter to Netflix requesting a review of the second season of Narcos because he purported that there were “mistakes, lies and inaccuracies from the real story.”63 This letter raised two important issues with respect to life story rights, namely, Roberto Escobar not only had ownership of the successor-in-rights for his brother64 and his family name, but he was also a part of the story.65 Based on these ownership rights, Roberto Escobar sought $1 billion for the use of his brother’s name and likeness on the show. Mr. Escobar argued that as one of the few survivors of the Medellín cartel and his brother’s “closest ally,” “nobody else in the world is alive to determine the validity of the materials, but me” regarding the allegations of the mistakes, lies, and discrepancies in season 1 of Narcos.66 This is an example of a situation where a subsequent owner could try to influence the clearing of life story rights and potentially affect the airing of a show by raising issues of accuracy and the like.
Additionally, Roberto Escobar was both his brother’s accountant in the Medellín cartel and the head of his hitmen; he wrote a book about Pablo Escobar’s drug empire in 2009, entitled The Accountant’s Story: Inside the Violent World of the Medellín Cartel.67 But Roberto Escobar is neither directly depicted in the show-it portrays an accountant who is fired and claims to have been a CIA informant-nor ever appears in the show.68 Had Roberto Escobar been portrayed in the series or the details regarding his “portrayed character” were based upon his book, then this would potentially raise issues as to whether Netflix would need to obtain the life story rights or the rights to Roberto’s Escobar’s book before using his name, likeness, and stories on Narcos.
3. Case Study: Chuck Wepner and Rocky
Even where a number of years have passed since the alleged unsanctioned use of life story rights, the subject of another’s creative efforts may still be able to interpose a cause of action for violating one’s right to publicity. This is precisely what Charles “Chuck” Wepner did. Known as the “Bayonne Bleeder,”69 Mr. Wepner was the heavyweight boxer who purportedly served as the inspiration for the iconic Rocky Balboa movie character.
Chuck Wepner fought some of boxing’s biggest heavyweight names during his career, including Sonny Liston and George Foreman.70 But the Bleeder’s most noteworthy fight was his 1975 title shot against Muhammad Ali, which a young Sylvester Stallone admittedly watched on television.71 Don King, the fight promoter, had offered Mr. Wepner $100,000 to challenge Muhammad Ali for the heavyweight title; Wepner noted that “Ali said he need an easy fight after [George] Foreman . . . and figured he would cut me up[.] . . . But I had a shot to win a title against the most famous man in the world.”72
The fight was neither quick nor easy for Ali, shocking him and the sporting world. In the ninth round, Wepner unexpectedly knocked “The Champ” down73 and, despite retaliatory pummeling from a roused Ali, made it to the fifteenth and final round before losing by a technical knockout with nineteen seconds left.74
Rocky debuted the next year. Sylvester Stallone wrote, directed, and starred in the film, which spawned a seven-movie franchise75 and achieve celluloid immortality by winning three Oscars, including Best Picture (it was also the highest-grossing film of 1976).76 After the movie’s release, word seeped out that Mr. Wepner had supposedly been the inspiration for Rocky Balboa. In fact, Wepner himself admitted lying to others that he had been paid for life rights because he “was upset about [not being compensated] and had a lot of pride.”77 While Mr. Stallone offered Mr. Wepner a role in the sequel, Wepner admits that he was having personal issues, including heavy partying and drug issues, that precluded his involvement.78
After apparently ruminating for many years, in 2003 Mr. Wepner sued Mr. Stallone, alleging a continuous and ongoing violation of Wepner’s rights of publicity-or life story rights.79 The Complaint contended that Mr. Stallone had called Mr. Wepner several months after the Ali fight to inform him of a script that Mr. Stallone had written three days after being “inspired” by that fight.80 The Complaint further alleged that Mr. Stallone had used Mr. Wepner’s name to promote the Rocky movies and associated products.81 Though Mr. Wepner sought $45 million dollars in damages, the suit settled in 2006 for an undisclosed sum.82
The time gap between the initial act that purportedly formed the basis for the injury and the eventual suit was abnormally long here, occasioned in part by the decades-long success of the Rocky franchise. That notwithstanding, Mr. Wepner’s story provides yet another example of how troublesome the failure to clear life story rights can be to the entertainment vehicle’s maker.
Studios are increasingly relying on the fair use doctrine in connection with use of content in film to portray a story accurately, and are less inclined to seek licenses or consent to use trademarks in films, television series, or documentaries. This trend may force owners of intellectual property to be more creative in protecting their respective rights and brands. One solution may be for an affected entity, such as the NFL, to reach out and work directly with filmmakers to control the process of how their brand is used or depicted. This approach may also be applicable in the life story rights context, as having a source that can aid in correctly portraying a character will almost certainly provide a more powerful and “endorsed” message from the person upon whom the character is based or the successive owner of the life story rights.
It is also important to note what effect publicity could have on the film. If the production is portraying a message that is positive to a significant part of the viewing audience, arguably what the movie Concussion sought by highlighting a health and safety issue for professional football players, then the trademark owner may be reluctant to assert its rights and potentially draw more attention to the artistic vehicle. But in a different context, not having appropriate clearance can result in negative publicity. For example, Winnie Mandela’s public criticisms about the film and its makers for not obtaining her permission and for “delving only superficially into her life story”83 were less than optimal from the filmmaker’s perspective and may well have kept away patrons who might have purchased tickets at the box office but for her recriminations against the filmmakers.
Although HBO is not the subject of a lawsuit from the NFL for not securing authorization Ballers, its failure to obtain consent and licensing from the NFL carries some level of risk-which still exists as of the publication of this article. Although obtaining express authorization to use trademarks, logos, and life story rights is not always necessary, it is likely a more pragmatic approach that may shield content creators from future complication and expense, allowing them to focus on what drove them in the first place-their creative endeavors.
Richard Parke, a partner at Haug Partners LLP, has litigated patent cases in a wide range of technologies and has likewise litigated a variety of trademark cases, for large and small clients. He is also one of the firm’s leading experts on adjudicating or otherwise resolving domain name disputes. Mr. Parke also routinely counsels clients on multifaceted intellectual property and commercial issues, including intellectual property procurement and other transactional matters.
Ben Natter, a partner at Haug Partners LLP, is a skilled attorney whose practice focuses on all aspects of global trademark strategy, procurement, management and enforcement. Mr. Natter implements client-specific approaches for protection of intellectual property rights around the world. On any given day, Ben’s work will find him enforcing client rights throughout countries spanning the globe with local authorities, courts, and associates.
Jessica Sblendorio, an associate at Haug Partners LLP, focuses her practice on litigation. Her prior experience encompasses a broad range of areas, including constitutional law, human rights, international law, and international arbitration. She draws upon her experience in both the public and private sectors to apply her knowledge to her current practice.
The authors would like to thank Philip George, a law clerk at Haug Partners LLP, for his assistance in the preparation of this article.