Featured Reel

Trademarks in your Film
Installment #3
Famous Buildings & Facades

by Mary Ellen Tomazic

IV. Famous Buildings and Facades

The appearance of famous or landmark buildings and facades in a filmmaker’s shot has caused much consternation and discussion, not to mention the creation of myths in the filmmaking community.

As with the use of copyrighted music, there is no amount of time associated with an automatic finding of fair use of the famous building or trademarked product in another creative project. It comes down to the same type of guidelines in copyright law, as set out in the previous installment in the New Kids case.

The use cannot be overly highlighted so as to suggest association or sponsorship of the work by the trademark holder, should be only enough to identify the authentic product, or in the case of a building, the location; and it should be in a situation where there is no other way to refer to the building or landmark other than by its proper name. 

The appearance of a famous building in a larger work such as a film, as opposed to a poster created that used the trademarked façade to sell posters of that building as such, should be deemed nominative and not an infringement of the mark. The most well-known example of this difference is in the case of Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Products[1], in which an injunction was issued against a photographer who was selling posters bearing a photograph had taken of the Rock and Roll Hall of Fame and Museum building. 

The district court found that due to the “extensive advertising and promotional activities of the Museum and building design trademarks, the public had come to recognize these trademarks as being connected with or sold by the Museum, its official licensees and/or official sponsors.”[2] The Rock ‘N Roll Hall of Fame case did involve the sale of a poster of the building alone, in the exact positioning of the logo used by the museum, from the front of the building. It was seen as cutting into and harming the market for similar posters of the museum, in the same position, sold by the museum. 

The building was used to sell a picture of the actual museum, not as just a part of the Cleveland skyline, as in a movie. However, the Sixth Circuit Court of Appeals did not see it the way the museum did. The court remarked that the building, though distinctive, was not used as a trademark at that time by the museum, and its existence as a public landmark further undermined its `fancifulness’ as a trademark.[3]

The court did not see the design of the building as an indicator of source or sponsorship, but rather the defendant took a photograph of an accessible, well-known public landmark.[4] It then held the museum failed to project a consistent image of itself to the public, further undermining the premise that the museum used the building as a trademark, and remanded the case back to the district court, where the injunction was dissolved.[5]

A different twist on the use of famous buildings and facades came in the case of Sherwood 48 Associates v. Sony Corporation of America,[6] which was filed by the owners of Times Square buildings and the lessee of advertising space on those billboards in 2002 against Sony. 

The defendants, makers of the first Spider Man movie, digitally altered the images of the buildings and billboards to take out their advertisements and replace them with others for which the moviemakers solicited and received payment. The plaintiffs claimed that Sony had violated their trademark and trade dress rights, and that they had been harmed by the loss of advertising revenues. The suit said that advertisers contract for advertising space at Two Times Square not only as a result of the prestige ad favorable connotations associated with the building, but because the images of the building and their sign will be seen by billions of television viewers, internet users, movie goers, magazine and book readers, and others during the course of their contract with Sherwood.[7]
 
Sherwood’s complaints included state law claims for trademark infringement as well as federal counts for trademark infringement and trespass, and alleged trademark rights in the image of the building, citing its “unique configuration and ornamentation of Two Times Square and (its) advertising and signage display”.[8] They claimed that the superimposition of the new advertisements over the contracted signs is likely to cause confusion, deception, and mistake as to the origin or source of the altered building and/or the advertising and signage display. The plaintiffs also raised a claim for trademark dilution under the New York anti-dilution statute.[9]
 
The District Judge dismissed both federal and state claims, and Times Square’s owners appealed; the federal appeals court affirmed the dismissal of the federal trademark claims, but said they could file their trespass claims in state court since it was an “unsettled question of state law”. The case was dismissed before Sony could show that its digital alterations had “artistic relevance” to the movie and were therefore protected under the First Amendment.[10] 

I have doubts that this defense would have worked for Sony, since they used the altered signage in a very commercial way, the same way the plaintiffs who sold advertising space used their famous building. The use by the moviemaker was not a nominative one, since they sold their own ads to be seen by millions watching the movie, and took away the exposure of the existing ads that had already been paid for to be seen on that building. 

If Sony was allowed to continue replacing paid ads, the plaintiff owners were likely to lose revenue since major corporations would not want to contract with Two Times Square if their ads were not going to get the amount of exposure that they had contracted for. The claimed “artistic relevance” to the movie was diminished by the fact that these ads were NOT actually part of the famous building and could not be seen there from a public access point, as is the case with nominative uses of famous building and facades used as trademarks. The case shows the possible harm to mark holders in a kind of backwards way, since the moviemakers were taking out the marks and replacing them with their own paid advertisements. 

It also teaches that filmmakers will not help themselves to avoid trademark violations by digitally replacing famous marks on a building, due to the commercial purpose of trademarks of identifying the source of goods.

A filmmaker may want to do a parody involving a famous building to avoid infringement claims, but courts have weighed in on that defense as well. 

In the case of New York Stock Exchange v. New York, New York Hotel, LLC,[11] the Stock Exchange sued the hotel and casino for trademark infringement and trademark dilution when the casino used a replica façade of the New York Stock Exchange’s building with its actual logo, but changed the wording in the logo to “New York $lot Exchange” and “NY$E” for signs on its frequent gambler’s club. The “parody” logo was also used on t-shirts and caps and other souvenirs given out by the club. The court found the actual registered logo of the New York Stock Exchange and its “NYSE” abbreviation to be distinctive and eligible for the Lanham Act’s anti-dilution protection. 

The District Court did not find the building itself, a historical landmark, to be inherently distinctive, but the Circuit Court of Appeals disagreed, finding that the building that housed the stock exchange, which consists of “a triangular pediment, displaying eleven bas-relief figures, that is supported by six Corinthian columns and topped by an attic, (and) also contains the words "New York Stock Exchange" on the frieze,[12] was neither generic nor descriptive of a stock market. 

The court’s discussion described the layout of the New York, New York Hotel and casino in Las Vegas, and how it used other famous New York images were used in a playful way to set the stage for its New York theme. The court said that it was obvious that the casino was engaged in a parody or humorous play on words that consumers would not mistake the modified marks for the real thing.[13] 

The casino actually modified some of the original NYSE marks it has used after this case was filed to “New York $lot Exchange” and “NY$E” instead of the actual marks. 

The Exchange’s New York state claims for dilution and tarnishment of their trademark, even with the defendant’s argument that casinos are actually listed on the stock exchange, were sent back to district court for further proceedings, since the Exchange wanted to preserve a reputation for integrity and transparency in the trading conducted on its floor.[14] The court’s reasoning points out to filmmakers that tarnishment need not be a seamy or unwholesome use of the mark, and arguments can be made by the mark owners for the reasons they do not wish to be associated with a particular use of their mark, ands why such uses may hurt their reputation.

Some moviemakers have successfully used the defense of fair use of copyrighted or trademarked images, as in the case that came out of the movie “Batman Forever”, in which copyrighted sculptures on a building were part of the backdrop for the film. 

Warner Brothers had obtained permission from the owners of the building before including it in their film, but the sculptor, Andrew Leicester, who had designed four sculpted towers on the building, sued the producers of “Batman Forever” claiming copyright infringement. Since the sculpture became a part of the building itself, the photographing of the building did not constitute infringement. The section in the federal copyright law, “Scope of exclusive rights in architectural works” provides that the copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of the pictures, paintings, photographs or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.[15]

Sometimes a filmmaker’s use buildings with sculptures for backgrounds is not favored by the courts, as in the case of the bas-relief sculpture by Frederick E. Hart that adorns the National Cathedral in Washington D.C. 

The use by Warner Brothers of a sculpture that substantially resembled Mr. Hart’s in the movie “The Devil’s Advocate” was seen as infringement. The movie showed the similar sculpture for twenty minutes of the feature length film, and this substantial amount of time combined with a part in the film in which the sculpture seem to move erotically swayed the court toward a finding of infringement. The case settled out of court and Warner Brothers was able to distribute the film in the home video market.[16] 

Some states have Artist’s Moral Rights laws, which protect the artist from altered reproductions of their work which may negatively affect the reputation of the artist. This is the European tradition and has now been incorporated into United States law under the Visual Artists Rights Act of 1990[17] and various state moral rights statutes. The laws of this country stop short of the European versions and only protect the artist’s original works, except in New York, under the New York Authorship Rights Act, which purports to include a prohibition against altering, mutilating, defacing or modifying a work of art or reproduction of thereof.[18] However, this law may not be as useful in films, since the copyrighted work being used as a backdrop is not directly being “displayed, published, or reproduced as being the work of the artist.” 

These cases illustrate the delicate balance between filmmakers and other artists in the use of their work. The same guidelines for use should be kept in mind when using buildings, whether they include sculptures or not, as a background for your film, as with other trademarks. The type of use, whether it is disparaging or negative; the substantiality of the use, including the amount of time the image is shown; and whether the use is highlighted as in advertisements or trailers, which may lead to a presumed association or sponsorship of the film with the famous trademarked building, makes a difference in whether the use is seen as expressive and nominative, and thus being seen as non-infringing by the mark holder.

[1] 934 F.Supp. 868 (N.D. Ohio 1996).
[2] Rock and Roll Hall of Fame and Museum, Inc. v. Gentile Prods., 134 F.3d 749, 754 (6^th Circuit 1998).
[3] Id. The case was heard in 1996, which was only a year after the building was finished, so it did not have much time to serve as trademark.
[4] Id.
[5] Id at 756. On remand the district court found that the museum had not used an image of the museum as a trademark, and granted defendant’s motion for summary judgment. 71 F.Supp.2d 755 (N.D. Oh. 1999).
[6] 76 Fed. Appx. 389, 2003 U.S.App. LEXIS 20106 (2d Cir. 2003).
[7] Complaint, Sherwood 48 Associates v. Sony Corporation of America, 02 CV 2746 (April 9, 2002), ¶ 23.
[8] Id. ¶ 50.
[9] Id. ¶ 74-77; NY General Business Law §360-1.
[10] Sherwood 48 Associates v. Sony Corp., 76 Fed. Appx. 389, 2003 U.S.App. LEXIS 20106 (2d Cir. 2003).
[11] 69 F.Supp.2d 479, 494 (S.D.N.Y.1999); affirmed and reversed in part, 293 F.3d 550 (2d Cir. 2002).
[12] 293 F.3d 550 (2d Cir. 2002).
[13] Id.
[14] Id.
[15] 17 U.S.C. § 120 (2010).
[16] Larry Witham, Sculptor Backed on `Advocate’ Lawsuit, WASHINGTON TIMES, Feb. 11, 1998, at A8; see also John T. Aquino, IP Issues Concerning Art and the Movies, 6 NO. 1 INTELL. PROP. STRATEGIST 1 (1999).
[17] 17 U.S.C. § 106A.
[18] N.Y. Art. & Cult. Aff. Law § 14.03 (1), (2).

Mary Ellen Tomazic is an attorney in Cleveland specializing in entertainment issue
such as copyright, trademarks, contracts and licenses for musical groups and filmmakers.