Court Says It’s OK To Use Newspaper Name in Film When Newspaper Never Printed the Story Highlighted in Film
by Jerry Glover
December 18, 2017
Another court has allowed a media defendant to avoid trademark infringement and dilution claims for using a trademark in a film. The Sporting Times, Inc. v. Orion Pictures, Corp., 17 CV 00033 (W.D. Ky. December 13, 2017). In this case, the plaintiff is a youth sports publication that has been publishing since 2004. The defendant’s film, “Spaceman,” was a 2016 biopic of professional baseball pitcher Bill “Spaceman” Lee At the beginning of the film a montage of news stories concerning Lee included a nine-second shot of the cover of a fictional magazine entitled “The Sporting Times” dated July 1976 with the headline “Boston’s Bill ‘Spaceman’ Lee, In an Orbit All His Own” over a photo of the actor playing Lee in his pitching stance wearing an astronaut suit. Two seconds of the same shot was included in the original movie trailer.
Plaintiff claimed that defendent had used its trademark without permission. As a result, the plaintiff argued that consumers would be confused as to the source of the film, believing that the youth sports publication was a sponsor of the film. The film company argued that it made a “non-trademark use” of the plaintiff’s trademark. The defendants also noted that the plaintiff’s publication did not exist in 1976, the date of the newspaper story featured in the opening montage. The district court explained that the standard test for determining whether consumers were likely to be confused as to the source of the defendant’s film did not apply if the defendant’s use of the mark was a non-trademark use. The court noted that even plaintiff’s written complaint alleges that readers of its publication were confused as to the “content and nature” of the publication shown on screen not the source of the film. The court added that the plaintiff’s mark had appeared for only a few seconds with a montage of other news stories about the baseball player. Therefore, the court concluded, defendant’s use of the name of the publication was a non-trademark use.
The defendants also argued that their use of the plaintiff’s mark was protected by the First Amendment. The federal appeals court that governed this district court had earlier adopted what is known as the Rogers test for use of a mark in an expressive work. That test noted that a trademark infringement claim would be dismissed if the use of the mark had no artistic relevance to the underlying work whatsoever or, if it has some artistic relevance, unless the use explicitly misleads the consumer as to the source or content of the work. The court noted the test of artistic relevance was a purposely low threshold that is usually satisfied unless there the use of the mark has absolutely no artistic relevance to the film. The district court held that the use of “The Sporting Time” in the montage of news stories about the film’s subject had some artistic relevance to the film about a sport figure’s career.
The plaintiff claimed that defendant’s use of its publication title “diluted” its trademark and violated that Trademark Dilution Revision Act, 155 U.S.C. Sec. 1125(c)(3). Dilution does not require proof of consumer confusion. But the defendants noted that courts have agreed that a noncommercial use of the plaintiff’s mark is not trademark dilution. The court added its agreement to the chorus noting that a commercial use of the mark requires a context in which a commercial transaction is proposed. Here there was no such proposed transaction.