Do I need permission to use a trademark in a documentary?
By Yahoo User • Category: Do I Need It To Trademark?So basically I’m a film student at FSU. We make a documentary and we have to get a lot of paperwork filled out in order to submit the doc to film festivals which potentially you can win money from.My doc is about the FSU seal. There are pictures of it around campus and I use a graphic of it, showing how it has evolved over the years. I also took a copy of the seal and changed the words around so it said “Florida State Film School” and “A Broken Seal” and there’s a crack in the seal so it’s broken. All the “broke” stuff because the seal went through a facelift recently and they haven’t fixed it on campus yet, and it sounds good. I’m going in to talk to trademark licensing tomorrow, but do I even need their permission? If so, for which parts? I know it’d be nice for their permission, but I’m not too certain they’ll approve the seal I wrote all over, but I’m hoping to claim it as parody.
If you have used the official seal without modifications in your film, you will have to have a license to use FSU’s trademark, since you are doing so for monetary gain. Modifications or parody of the seal may not require permission if the parody is recognizable.
You may have a nominative fair use argument for the film itself. Nominative fair use involves the descriptive use of another’s mark to describe or identify the other mark owner’s goods or services, not your own.The leading nominitive fair use case, in which the New Kids on the Block asserted that newspaper polls infringed their trademark, sets forth a three-part test:”[W]here the defendant uses a trademark to describe the plaintiff’s product, rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the use must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.”New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 at 308. (9th Cir. 1992).In your situation, the third prong is key: It is important that you don’t use the university’s trademark in a way that suggests that they have sponsored or endorse your film. So you’ll need to be particularly careful about using the logo or variants to promote or label your film. It’s a delicate line; you can make a film about the seal but really can’t use or trade off of the seal to promote it.You’ve suggested that the parody defense could permit your use of the modified seals. There is no bright light test for the parody defense. A court considering your parody defense to trademark infringement would weigh your right to free speech against the University’s right to avoid dilution or confusion with respect to its marks. A court would consider whether your “parody” could be reasonably confused with a the real thing. Is it funny/sarcasm or just confusing? Based on the foregoing, it sounds like the documentary film itself would constitute fair use. It’s unclear how you are using the broken seal, but I wouldn’t be concerned if you simply included a shot in your film to make a statement and avoided using it to identify or promote your film.The “Florida State Film School” logo that you’ve created is more troublesome. It sounds like this could reasonably cause confusion by creating the impression that the University’s film school has sponsored or endorsed your film. Context is everyting, but the paraody defense is probably unavaiIable because it sounds like it looks just like the film school’s seal would look if it had one.