The Intellectual Property Implications of Marketing a Fictional Product
Every year, law students face exams with characters and products ripped from popular television, movies, and YouTube videos (a wiser course than building a torts or crime problem around your colleagues, see Orin Kerr’s post here). What is true for the goose is no doubt true for the gander: many may want to buy fictional products from popular culture. For instance, Omni Consumer Products Corporation, a “defictionalizing” company, licenses real-world versions of popular fictional products like “Sex Panther,” the fictional cologne from Anchorman: The Legend of Ron Burgundy.
An interesting question raised by law student Ben Arrow’s Note Real-Life Protection for Fictional Trademarks (which has garnered lots of attention, see here, here, and here) is whether a use in fiction constitutes a “use in commerce” sufficient to reserve priority rights in a trademark. Two cases have addressed real-life protection for fictional trademarks: Daily Planet from S.D.N.Y. and Duff Beer from Australia. Arrow explains that the courts, finding real-life trademark infringements, hand-waived on the priority analysis. For instance, in Duff Beer, the court assumed that Duff Beer had used the mark (presumably because it is famous and thought the breweries were free riding on, well, something). But Duff Brewery never sold anything in commerce, because it isn’t real (that is at least true if you buy the fact that Homer Simpson isn’t really drinking anything). So maybe Duff Beer is not a trademark for anything. A real-world Duff Beer might not be an infringement after all; you can’t infringe a non-trademark.
Arrow’s article explores if Duff Beer isn’t a trademark, then maybe it’s copyright infringement. The problem there is that “Duff Beer” is a mere two words and may well be found to be de minimis expression unprotected by Fox’s copyright in The Simpsons (but we don’t know because no court has ever passed on a fictional trademark case brought as a copyright cause of action). So are fictional marks stuck in a lacuna between trademark and copyright, protected by neither? Arrow doesn’t think so. He concludes that because Duff lives in fiction, there’s a kind of cognitive illusion that distorts a relatively simple trademark problem. Duff Beer is a trademark, but it’s not a trademark for beer, so it doesn’t matter that Duff Brewery is fictional and has never sold a real Duff Beer. Duff Beer is a trademark for an entertainment product: The Simpsons. When people see the real-world Duff Beer, they think of The Simpsons and think the show endorses the beer or warrants its quality, or has something to do with the beer. Arrow ultimately proposes a test for measuring how much of a use in fiction is enough to reserve real-world trademark priority for such a trademark. Kudos to Arrow on the piece: Bruce Carton “declares this new approach in fictional trademark cases to be known as The Arrow Principle.”