When branding a new product, many businesses allude to copyrighted works either to honor a creative work or cash in on a pop culture success. The practice is very common across a wide variety of products, including t-shirts, stickers, craft beers, and car commercials. You may even be considering alluding to a copyrighted work for your next product. However, brand creators are often unaware of the dangers associated with the practice, as it risks trademark and copyright infringement. This four-part series introduces the limits of the applicable legal doctrines, as well as the defenses available.
Creative Works Inspire Brands
Creative works, such as movies, tv shows, books, comic books, and music, are immensely successful at capturing our imagination and influencing pop culture. In 2022, for example, the global cinema box office revenue hit $26 billion, and 85% of U.S. households have at least one subscription to a video streaming service. Currently, 82 million Americans are paid subscribers to on-demand music streaming services, and even comic book sales are back on the rise. These creative works are popular, and it should not surprise us that brand creators often allude to these creative works in their brand. The cynic may say these brand creators are lazily trying to cash in on a pop culture success, but many brand creators truly wish to pay homage to their favorite works. Whatever the reason, these creative works inspire allusions.
Creative works are also protected by copyright laws, though, which provide the authors of those works exclusive rights over their projects, such as the right to reproduce, distribute, and prepare derivative works. Therefore, alluding to copyrighted works in branding can risk infringing on the creative author’s exclusive rights or on a trademark registered by that author. The law is not always clear on these issues, case outcomes are often surprising, and little guidance exists for those who want to know whether a given allusion is possible. This four-part series walks the reader through the relevant legal doctrines and available defenses.
How Brands Allude to Copyrighted Works
The three most common ways in which brand creators allude to creative works are in brand name, in trade dress, and in advertising.
Brand Name. Perhaps the most important aspect of branding is the name of the company or product being sold. Over time consumers develop certain feelings or associations with a brand name. For this reason, brand creators work very hard to build positive feelings and may see allusions to copyrighted works as a shortcut to those positive associations. For example, a hypothetical vodka distillery that wants new customers to view its craft vodka as suave, sophisticated, and mysterious may want to call its product “James Bond Vodka” to immediately infuse their new brand with associations and emotions that have already been cultivated by the author Ian Fleming and movie studio Eon Productions.
Trade Dress. Brand owners also allude to copyrighted works in their products’ trade dress. While trade dress in the past was limited to the appearance of labels, wrappers, and containers, it now includes size, shape, color, and graphics. To continue our hypothetical, the vodka distillery may simply decide to slap a photo of James Bond from onto its vodka label. Such allusions in packaging and artwork, often in connection with the brand name, immediately evoke the reference.
Advertising. Allusions to copyrighted works are also common in advertising, in which brand creators want to grab the consumer’s attention, make them laugh, or simply entertain. A famous 1994 television commercial for the Honda Sol, a semi-convertible automobile, made clear reference to James Bond by featuring a debonair man evading a helicopter and metal-arm wearing villain in the Honda Sol. Metro-Goldwyn-Mayer sued, arguing the commercial infringed its copyright in the James Bond films.
Craft Breer As a Case Study (Pun Intended)
The craft beer industry is one example in which small businesses often allude to copyrighted works in branding. With the ever-increasing number of breweries and beers, branding has grown in importance in order to distinguish one hazy IPA from another, and there are fewer and fewer names to go around. Many craft breweries turn to creative works for inspiration. If you don’t believe me, just Google the name of your favorite movie or tv show with the word “beer” after it and see what pops up. Some of these may be officially licensed, but others likely are not. A few years ago, one beer-ranking website published its own list of “Star Wars” themed beers, which included over a dozen examples running the gamut from lazy appropriation to clever puns. Recently, a brewery in Texas created a beer for each member the Marvel Avengers team to celebrate the blockbuster movie. The craft beer industry is not the only industry that tends to pay homage to creative works. Allusions to copyrighted works are prevalent in wall art and graphic t-shirts, to name two notorious examples.
Don’t Touch That Dial
Now that we have a better understanding of how brands allude to copyrighted works, we can examine how such allusions might infringe on the rights of trademark or copyright holders. We will also discuss how brand creators might tweak their branding strategy to avoid such infringement. So, don’t touch that dial and stay tuned for Parts II, III, and IV.
This article is taken from Paul M. Matenaer, Never Tell Me the Odds: How to Avoid Infringement When Alluding to Copyrighted Works in Branding, 22 Chi.-Kent J. Intell. Prop. 86 (2023).