A scene in the pilot for NBC's new superhero drama Heroes shows one of the characters sticking her hand in a running garbage disposal and pulling out a mangled and bloody stump. Due to the nature of her super powers, the hand heals itself within a matter of seconds. Most viewers watching the gory scene (myself included) probably did not notice the name on the rim of the garbage disposal. If you watch carefully, however, you can see that the disposal is an "In-Sink-Erator." That is an actual brand of garbage disposal made by Emerson Electric Co.
Apparently upset by NBC's unauthorized use of a picture of its product, Emerson sued to block further distribution of the pilot episode. Its complaint, which includes pictures of the ground-up hand, raises claims of unfair competion, trademark infringement, dilution by blurring and tarnishment, trade libel, and defamation. It requests an order permanently restraining NBC from showing the pilot episode or from using any Emerson trademark without permission, and forcing NBC to destroy all existing copies of the show. The complaint also demands attorneys' fees and damages, including money to conduct a corrective advertising campaign.
Emerson's tarnishment, trade libel, and defamation claims are difficult to understand. The complaint alleges that the scene "casts the disposer in an unsavory light" and "suggests that [the] disposers will cause debilitating and severe injuries, including the loss of fingers, in the event consumers were to accidentally insert their hand into one." Is Emerson's claim that sticking one's hand in their garbage disposal will not cause serious injury? The complaint doesn't say; but it claims that the scene "implies an incorrect and dangerous design for a food waste disposer, misrepresenting that the internal elements in EMERSON’s IN SINK ERATOR® brand food waste disposers will cause the severe injuries that the pilot depicts."
The user's manual for the device warns users not to "put fingers or hands into a waste disposer," and the symbol next to the warning (according to the manual's legend) indicates "a potentially hazardous situation which, if not avoided, could result in death or serious injury." I have no way of knowing how serious the injury would be, but Emerson's website for its "Evolution Excel" model claims that chicken bones placed in the unit will be "virtually liquefied." I think it is safe to say that putting one's hand into a running disposal is not a good idea.
The court in Wham-O v. Paramount Pictures Corp., 286 F. Supp. 2d 1254
(N.D. Cal. 2003), rejected a very similar claim over the use of Wham-O's
Slip 'N Slide
in the movie Dickie Roberts: Former Child Star.
The court did not believe that Wham-O's reputation would be injured by scenes showing Dickie Roberts
injured by using the slide, first without lubrication, and then coated
in cooking oil. The court thought that Dickie Roberts' misuse of the slide was "an obvious and unmistakable misuse, one recognizable by even the
youngest or most credulous film viewer, and one expressly described as
a misuse in the film itself." Sticking one's hand in a garbage disposal is at least as obvious a misuse, and nobody is going to have a lesser opinion of In-Sink-Erator after watching Heroes.
Emerson's trademark infringement and unfair competition claims are
even more problematic. These claims depend on a showing that
consumers are likely to be confused by NBC's use of the In-Sink-Erator
brand into believing that Emerson somehow endorsed or sponsored the
show. The complaint does allege this, stating that NBC used the
In-Sink-Erator "in a manner that is likely to cause confusion, or to
cause mistake as to the sponsorship or association of such use with
EMERSON."
It is hard to believe, however, that consumers would actually believe that NBC's brief use of the garbage disposal's name indicated endorsement by Emerson. The disposal is a simple prop. NBC could have edited out the trademark name, but why should it have to? Using actual trademarked goods can add flavor and realism to a creative work. HBO's The Sopranos, for example, is known for using real products in the show for the sake of authenticity—such as a scene where Ralph Cifaretto sprays Tony Soprano in the eyes with a can of Raid—and does not accept payment for product placement. NBC's Seinfeld based entire episodes around brand names, its plotlines hinging on products like Snapple, Junior Mints, and Kenny Rogers Roasters.
If companies could prohibit all unauthorized use of their brand names, they could effectively control the public discourse on their brands. Indeed, an SC Johnson spokesperson said that, if asked, the company would not have authorized the use of a can of Raid in the Sopranos. "We recommend the product be used as the label instructs: Avoid contact with the eyes, skin or clothing," the spokesperson was quoted as saying. Similarly, car makers probably would not approve of scenes in which their cars break down or crash, and food makers would not approve of a depiction of choking. Many companies have even gone so far as to claim that websites devoted to criticizing a brand name constitute trademark infringement. And as I noted last week, other companies think taking pictures of their products for purposes of resale is copyright infringement. Under the same logic, Emerson might even be able to prohibit unauthorized use of the In-Sink-Erator name in this post.
Of course, no such claim would withstand scrutiny under doctrines of fair use and the First Amendment. But the mere threat of litigation goes a long way, even when the defendant has deep pockets. In this case, NBC reportedly agreed to modify its pilot in response to the lawsuit. How much easier would it be to force the author of free online fiction to portray a trademark more favorably?
Emerson's claim is very similar to the claim made by the plaintiff in Caterpillar v. Walt Disney Co., 287 F. Supp. 2d 913 (C.D. Ill. 2003). In that case, Caterpillar argued that Disney's movie George of the Jungle 2 infringed and diluted its trademark by including footage of actual Caterpillar bulldozers, which were driven by minions of the film's evil villain while the narrator called them names like "deleterious dozers" and "maniacal machines." The court rejected Caterpillar's argument, noting that by depicting the bulldozers in its movie Disney was not free riding on Caterpillar's mark to help sales of its own product—tthe evil against which trademark laws are designed to protect. The court wrote:
Caterpillar's position seems to be simply that its products and trademarks appeared in George 2 without authorization in four scenes and that the appearance of its trademarks and products should be sufficient to constitute unfair competition under § 43(a) of the Lanham Act. Part of what drives the Court's discomfort with Caterpillar's position is the fact that the appearance of products bearing well known trademarks in cinema and television is a common phenomenon. For example, action movies frequently feature automobiles in a variety of situations.
Similarly, the court in Wham-O declined to hold that the movie-makers had refer to Wham-O's toy generically as a "water slide" or a "lubricated plastic sheet," noting that "[a]s a matter of custom, defendants do not seek the permission of manufacturers of name-brand products to use those products in its films."
Of course, some consumers will inevitably (and wrongly) assume that if a
branded product appears on television, it must have been licensed
by the trademark owner. These consumers would likely believe that if a
trademark appears on TV, its use must have been approved by the
owner, and are thus arguably confused about whether the trademark owner is actually a
sponsor of a show. But the consumer's misunderstanding in these cases is really about
the nature of trademark law itself. If the public's
beliefs about what permission is required were allowed to determine the
existence of infringement, the public's beliefs about the law would, in a very important sense, become
the law. Whenever consumers thought authorization required, it would
in fact be required. This application of infringement would rapidly spiral out of control, ultimately giving trademark owners total control of use of their marks and, at the same time, impoverishing the public discourse.
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