Trademarks, Movies and the Clearance Culture

by William McGeveran

Thursday, July 02, 2009 at 06:10 PM EDT

As I hole up in my ivory tower writing about trademark fair use reform this summer, it’s nice to know that the issue might matter in the outside world. In a pair of signs yesterday, I ran across two different news articles showing how seriously our overbroad trademark rights are constraining free expression.

First, while waiting for my coffee to brew in the faculty lounge, my eye fell upon a front-page article [limited nonsubscriber access] in the Chronicle of Higher Education from last week that was lying on the table. An hour later, back at my desk, I stumbled upon this story in yesterday’s New York Times online. Both articles demonstrate that we have a serious problem — and both of them reported, as simple matters of fact, the wrong-headed legal interpretations that allow trademark-based censorship of film and television.

The Chronicle story explained how colleges and universities exercise control over the scripts of movies and television programs to ensure flattering fictional portrayals of their institutions. The author recounts how, for example, NYU “balked at racy plot lines” in the old TV teen soap Felicity, so the character instead enrolled at a fictional school very similar to NYU. In some cases, schools impose content restrictions as a condition for filming on campus (in addition to the thousands of dollars in rental fees they collect). That may be reasonable. But the main weapon the schools use is the assertion of expansive trademark rights in their names. The key passage from the article, with my emphases added:

Fleeting references to actual institutions should qualify as ‘fair use’ under trademark law, but anything more persistent requires permission. The threshold is confusion: If a viewer might infer an endorsement, a college that hasn’t signed off can sue. Cautious studio lawyers err on the side of letting colleges peek at the scripts.

Administrators often behave like film-ratings boards: They forbid violent or sexually explicit scripts, which could sully an institution’s good name. Some colleges are more persnickety, turning away fictional students who seem loutish or shady.

“Anything more than a fleeting reference” is a gross misstatement of the legal requirements of trademark law. If a writer really wants to send a fictional character to NYU or any other school, that alone does not give rise to actionable consumer confusion. The character can say the name of the school dozens of times, and even wear some collegiate sweatshirts too. At most, such references in works of fiction give rise to just the sort of “irrelevant confusion” that has so badly deformed trademark law.

Where would we be if, say, movie versions of One-Lor God and Man at Yale legally required permission from the universities they discuss (not always in flattering terms)? For that matter, why doesn’t the same logic require the schools’ trademark-based permission to talk about them in a book? Likewise, how could a film fully portray the struggles Dr. Kinsey faced in his research about sexuality without mentioning that he conducted them at Indiana University?

The Chronicle also discusses the movie Stealing Harvard, about a character who pilfers money to pay the tuition, which was originally called Stealing Stanford until that school objected. This may be a closer case of potential consumer confusion, but even here there is well-established case law that titles of artistic works can mention a trademark if it has relevance to the underlying work. And if Stanford in particular had somehow been important to the artistic message of a fictional work, surely we could not allow the subject of that message to stifle it without intruding very seriously on free speech.

Of course, as the quoted passage also notes, the excess caution of risk-averse gatekeepers often matters more than the actual scope of the law. I do hope that simpler law exempting such uses from the ambit of trademark law might embolden the timid studios — I’ve written that before and I am working on follow-up proposals this summer — but maybe that’s hoping too much.

The Times article tells, if anything, an even more alarming tale, though trademarks are a smaller part of it. A movie version of the great baseball book Moneyball (responsible, among other things, for inspiring law dean Jim Chen!) was set to begin filming in days, starring Brad Pitt and directed by Steven Soderbergh, but the studio has pulled the plug. Many Hollywood-style conflicts were involved (it reads like an episode of Entourage, actually), but one significant part was, again, over-expansive trademark law. The studio, Sony Pictures, had problems with Soderbergh’s revised script, according to the Times (again, with my emphases):

One reason [for Soderbergh's changes] was to win the approval of Major League Baseball, which was not happy with some factual liberties in [the original screenwriter's] version. Such approval is crucial in a baseball film that intends to use protected trademarks.

“Typically, on a film like this, we look at it for historical accuracy,” said Matthew Bourne, a vice president of Major League Baseball for public relations. “We’ve been in touch with Soderbergh and Sony, and they’ve been receptive to our requests.”

What baseball saw as accurate, Sony executives saw as being too much a documentary. Mr. Soderbergh, for instance, planned to film interviews with some of the people who were connected to the film’s story.

So, if a screenwriter wants to tell a story about a real team, baseball’s PR executives must approve of it first? To the degree that they can change the entire style of the movie? What if the character makes a pact with Satan to defeat the Yankees? How about an acclaimed Lou Gehrig biopic, or a cartoon about Babe Ruth’s talking bat? What about a mock trial of Pete Rose at Harvard Law School?

I wish these stories were unusual. But the casual way the journalists state the supposed law shows how widespread this (mis)understanding of trademark rights has become. And these incidents, like countless others (see here and here for examples), will never result in litigation, and therefore never result in decisions that might clarify the law. Rightsholders demand compliance, and movie or TV studios consider it too costly or troublesome to resist.

There oughta be a law!

This article originally appeared on Info/Law.