Friday, March 4, 2011

Can I use fashion trademark in movie?

Dear Rich: Please if you could let me know about using the Barney's name (Barney's New York) in feature film and presenting some space as its office. The lead actress gets an offer to work for Barney's from one of the managers, plot goes into different direction, and from her actions we conclude that she doesn't consider Barney's offer any more. So if it's part of the plot at all, it doesn't have a strong point. I would appreciate if you could respond to my dilemma. Short Answer Dept. You're probably fine with your planned use (although you should ditch the apostrophe as it implies you are dealing with purple dinosaurs not the store's apostrophe-free trademark). As we've said before, filmmakers and screenwriters have a First Amendment right to talk about and reproduce trademarks in films. However, such uses may trigger a lawsuit if a displeased trademark owner believes that your film is confusing consumers--that is, filmgoers  mistakenly believe that Barneys New York endorses or is in some way associated with your film.
Creating the fake Barneys office. We believe your re-creation of the Barneys office is permitted under First Amendment grounds but that doesn't mean that you won't get hassled. As you know from reading our blog, there's a difference between being legally correct, and surviving the lawsuit that proves you're legally correct. Re-creating the office may trigger a wider range of objections -- for example, if you accidentally use a character with a similar name as a real Barneys employee in an unflattering manner, or if the film defames management or by implying that working conditions at Barneys violate the law in some way. An apprehension of a trademark's owner wrath can even kill a big-time Hollywood production. As our previous post pointed out, another  problem in situations like this is that if your film becomes a success, your distributors and festival producers may demand releases for these uses. Hopefully, if you're successful enough to obtain distribution, you'll also be able to afford the legal power necessary to acquire the necessary rights.