For the first professor v practitioner debate of the 2022 INTA Annual Meeting, Christine Farley and Tiffany Shimada argued over whether brand owners should be legally entitled to control depictions of their branded goods and services in creative works.
Shimada, shareholder at Greenberg Traurig in Utah, took the position that they should, while Farley, professor at American University Washington College of Law in Washington DC, argued that they shouldn’t.
Moderator Joel Feldman, co-chair of Greenberg Traurig’s trademark and brand management group in Atlanta, asked the audience to give a ‘yes’ or ‘nay’ at the beginning and end of the session to indicate whether they agreed or disagreed with the argument that brand owners should have more control.
Most members responded nay at the beginning and end, taking Farley’s side.
Protecting Peloton
Shimada kicked off the debate by arguing that the Rogers test – which is used to determine whether the use of trademarks in creative works is protected by free speech – was nearly impossible for creators to fail.
The Rogers test sets out that the title of an artistic work is protected under free speech when it has some artistic relevance to the underlying work and the title isn’t explicitly misleading as to the source of the content of the work.
Shimada went on to argue that brands having a say was important because their businesses could be harmed by their depictions in media. She highlighted the premier of the Sex and the City revival, in which the love interest Big died after using a Peloton bike, as an example.
She noted that the exercise bike company’s stock decreased 11% on the day of the premier and declined a further 5% the next day.
“Perhaps this was just bad timing, but there was real calculable harm done to Peloton as a result of the artistic choice to kill off a main character with its brand,” she said.
She concluded that there should be a middle road that would allow creators to use brands to tell stories but give said brands some level of control.
Favouring freedom
When Farley took the floor, she jokingly asked Shimada to recuse herself given that she and the moderator were from the same firm, noting that Shimada had an unfair advantage for being exceedingly likable (her request was unsurprisingly denied).
Farley argued that the proposed resolution of giving brand owners more control over creative works would “impoverish expression”.
She said it was important for creators to be able to use brands because they were important tools to develop characters or set scenes.
“Can you imagine a rich guy from Manhattan [where Sex and the City is set] on a stationary bike using anything but Peloton? That’s unlikely.”
Q&A
Feldman, the moderator, asked each of the speakers if they could articulate a scenario in which the use of a trademark in a creative work could have zero artistic value.
Farley at American University said it generally wouldn’t be a good idea for the courts to determine whether there was artistic relevance.
But she noted that if an awards show decided to call itself ‘the Oscars’, that could be a case of someone making a deliberate choice to confuse and in which there was no artistic relevance.
Shimada at Greenberg Traurig, answering the same question, came up with a scenario in which an antagonist needed a coffee cup on set and someone happened to have a Starbucks cup lying around and used the cup in the scene.
“Now we’ve damaged the brand without any intent,” she said.
Feldman also asked Shimada whether brand owners should lose control over how their marks were depicted if they chose to place advertisements in public places such as Times Square, and a scene was later filmed in that area that included said mark in the background.
Shimada said she expected businesses would take that scenario into account when choosing to advertise in public spaces. She said that would be OK for some brands.
“Bad news is fine for many brands because they’re still in the news,” she noted.
The INTA Annual Meeting is being held this week at the Walter E Washington Convention Center in Washington DC.
