As we are all well aware, every entrepreneur, regardless of what he or she does, whether he or she sells coffee and hot dogs or owns newspapers, factories and steamships wants to individualize their goods and services so that consumers can distinguish them from the goods and services of other entrepreneurs, so many entrepreneurs use the right provided by law to register trademarks. Trademarks surround us everywhere in the subway train, in the mall, in the wallet, on billboards, and movies are no exception.
If we are not talking about a fantasy movie or a movie about the Middle Ages, but, for example, it would be a romantic comedy, the plot develops in our time, the director, to bring the plot of the movie closer to reality and to convey the spirit of the time in question, is likely to use as a movie set and acting props things and objects from our everyday lives, which often have trademarks. So, for example, according to the screenwriter’s intention, the character prefers a certain brand of clothing, a car or uses iPhone by Apple. And when the intention of the script is realized in the movie, we see the trademarks as we watch it.
I always wondered why some movies or TV series use computer graphics to blur the trademarks that appear in the frame.
The first thing that comes to mind is the unwillingness of the moviemakers to advertise someone else’s brand for free.
The second is the risk of being prosecuted themselves for illegal use of a trademark in the absence of permission from the copyright holder.
Thirdly, in my opinion, what could push the moviemakers to the need to blur the trademark is a possible damage to the business reputation of the right holder of the trademark, if the movie presents the goods or services of the right holder with a negative connotation.
Regarding the first assumption, I believe that there is no point in speaking out, because this is a business issue, not the legality or illegality of the use of trademarks. But when it comes to the second and third assumptions, they just relate to the right to use trademarks and the associated business reputation of the right holder, so I believe it is necessary to consider these issues from the legal perspective.
Based on the legal position set out in paragraph 157 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 No. 10 On application of Part Four of the Civil Code of the Russian Federation (hereinafter the Resolution No. 10)1, taking into account paragraph 1 of Article 1477 and Article 1484 of the Civil Code of the Russian Federation, the use of a trademark is its use for the purposes of individualization of goods and services of legal entities or individual entrepreneurs.
The main purpose of a trademark is to enable a potential consumer to distinguish services and goods provided or delivered by one person from similar services and goods by others.
Whereupon, by virtue of paragraph 3 of Article 1484 of the Civil Code of the Russian Federation (hereinafter the Civil Code)2, “Nobody has the right without a right holder’s permission to use designations which are similar to his, her or its trademark for goods for the individualization of which the trademark has been registered or homogeneous goods if such use might result in confusion”, as provided for in paragraph 3 of Article 1484 of the Civil Code.
At the same time, in order to deem actions on the use of a trademark as illegal, it is necessary to prove its use in one of the ways specified in paragraph 2 of Article 1484 of the Civil Code, covered by the exclusive right to the trademark, for individualization of goods or services, similar to the goods or services in respect of which the trademark is registered.
Analyzing the judicial practice on the use of trademarks in movies, I found, as it seems to me, a rather interesting example, which is reflected within the case No. A40-64050/20193.
For example, the Federal State Enterprise “SoyuzPlodoImport” filed a lawsuit with the Arbitration Court of Moscow with a statement against the Paradise Productions Film Company Limited Liability Company for compensation in the amount of 100 000 rubles for illegal use of trademarks, (Russian Federation Certificates No.38388, No.262682, No.263741, No.263016, No.275940 and No.275045), including the well-known trademark “Stolichnaya” (Certificate No. 53), as well as trademarks containing the verbal element “Stoli” (Russian Federation Certificates No. 561228, No. 606413).
As it follows from the circumstances of the case and established by the courts, the basis for the right holder’s claim was the use by the defendant without the claimer’s permission in the distribution of the Vzryvnaya Blondinka movie, including a well-known trademark, by demonstrating alcoholic products, namely vodka Stolichnaya, individualized designation, similar to the extent of confusion as the trademarks. According to the claimer, alcoholic beverages, i.e., vodka Stolichnaya are used in the movie as a separate plot-forming (advertised) object and cannot be perceived as a movie prop. In this regard, according to the rights holder, is implemented hidden advertising of vodka Stolichnaya, thereby forming and maintaining the interest of the viewer to the object of advertising, as well as to the right holder of trademarks and a well-known trademark. Such actions of the defendant, according to the right holder, are a violation of the claimer’s exclusive rights to its trademarks.
Meanwhile, the court of first instance dismissed the claims, and the appellate courts upheld the decision of the court of first instance.
Rejecting the claims, the courts came to the following conclusion: “According to Article 3 of Federal Law No. 38-FZ of March 13, 2006 On Advertising (hereinafter the Law on Advertising), the advertising is information, distributed by any method in any form and by any means, addressed to the general public and aimed at drawing attention to the object of advertising, arousing or maintaining interest to it and its promotion in the market.
According to paragraph 9 of part 2 of Article 2 of the Law On Advertising, the mentioned Law does not cover mentions of goods, means of their individualization, manufacturer or seller of goods, which are organically integrated into the works of science, literature or art and by themselves are not advertising information.”
Thus, the courts concluded that simply referring to the claimer’s trademark in the defendant’s work does not constitute trademark use, since the determining factor for deciding whether the defendant uses or does not use the trademark is the identification of the field of activity of the claimer and the defendant. If the defendant does not use the trademark to commercialize goods similar to the goods for which legal protection is granted with the trademark, there is no likelihood of confusion, and therefore such actions are not a violation of the exclusive right to the trademark.
Meanwhile, based on the plot of the movie, the trademark may be presented with a negative connotation, e.g., the car of a certain brand will constantly break down, which will be the kind of adverse publicity, i.e., the action designed not to raise but to reduce interest, or to discredit trademarks, and respectively their right holders and the goods and services offered by them. In this case, consumers can form an unfavorable or negative association with the brand, resulting in damage to the business and reputation of the trademark owner.
Most often, negative associations of consumers to a trademark can be formed when a trademark or its image is placed in the context of obscenity or illegal activities.
In certain cases, it seems to me, it is possible to talk about the dissemination of defamatory information. So, according to the explanations of the paragraph 7 of the Resolution of the Plenum of the Supreme Court of the Russian Federation dated February 24, 2005 No. 3 On Judicial Practice in Cases concerning Protection of Honor and Dignity of Citizens as Well as Business Reputation of Citizens and Legal Entities4, “defamatory information is information containing allegations of a violation by a citizen or a legal entity of current legislation, the commission of an unfair act, wrongful or unethical behavior in personal, public or political life, bad faith in carrying out industrial and business activities, violation of business ethics or customs of business turnover, which belittle the honor and dignity of a citizen or the business reputation of a citizen or legal entity”.
At the same time, in cases of this category the following should be taken into account. The circumstances relevant to the case according to Article 152 of the Civil Code of the Russian Federation, which the judge has to determine when accepting the statement of claim and preparing the case for the court proceedings, as well as in the course of the court proceedings, are: the fact that the defendant disseminated information about the claimer, the defamatory nature of such information and the lack of correspondence to its reality. In the absence of at least one of these circumstances, the claim cannot be satisfied by the court.
A rather famous example when a rights holder considered the use of its trademark in a movie unworthy of the company’s reputation was the use of a BMW car one-reel, so BMW Group Russia planned to use the movie to advertise the brand and was ready to provide cars for the shooting. But when the movie director decided to full-length criminal movie, the BMW did not want to take part in shooting and refused to support the project.
Sergey Chliyants, the producer of the Boomer, after filming the picture said that: “The image of the BMW car did not allow the BMW Russian representative office to participate in our project. Obviously, the gangster nature of the movie was meant. When we asked them at least to fix our car, which was badly damaged during filming (it was my own BMW which we had just destroyed) or to lend a similar model for a while, even that was denied. So, no brand supported the project, BMW simply did not approve the idea.”5
However, in this case, we can say that all ended well for the moviemakers; as far as we know, no lawsuits followed, probably because BMW lawyers were not completely confident that the lawsuit would be a success.
So, when you see logos or trademarks blurred in a movie or TV series, it could be because the creators in ambiguous situations are trying to protect themselves and avoid costly trademark litigation.
Summing up the research herein, I conclude that in the case of a simple reference to a trademark in the movie, it is not necessary to blur it and there is no need to require permission for its use, but these rules do not apply to cases where the purpose of the movie is to promote its own goods or services using a similar designation, that is, those cases where the movie is essentially an advertisement.
1 Resolution of the Plenum of the Supreme Court of the Russian Federation dated April 23, 2019 No. 10 On the Application of Part Four of the Civil Code of the Russian Federation.
2 Civil Code of the Russian Federation, Part Four of December 18, 2006, adopted by the Federal Law No. 230-FZ, ed. on July 26, 2019 and amended on July 24, 2020.
3 Decision of the Court for Intellectual Property Rights of February 10, 2020 No. C01-1426/2019, Case No. А40-64050/2019.
4 Resolution of the Plenum of the Supreme Court of the Russian Federation of February 24, 2005 № 3 No. 3 On Judicial Practice in Cases concerning Protection of Honor and Dignity of Citizens as Well as Business Reputation of Citizens and Legal Entities
Head of Department