Applying Trademark Law to Fictional Brands

-Submitted by David Drumm (Nal), Guest Blogger

Benjamin Arrow, a 3L at Fordham University School of Law, has raised an interesting question in his article for The Fordham Intellectual Property, Media & Entertainment Law Journal. Can a use in fiction constitute a “use in commerce” sufficient to reserve priority rights in a trademark?

In 1996, Fox won a preliminary injunction against two Australian breweries for manufacturing a product called “Duff Beer.” Fox is also pursuing lawsuits against other breweries, but what harm could Fox allege?

Is the use of Duff Beer a trademark or copyright infringement? For a symbol to be a viable trademark it must be used in commerce, but to say Duff Beer has been used in commerce is to indulge in fiction. Under copyright protection a court may very well consider Duff Beer to be de minims expression unprotected by Fox’s copyright.

In DC Comics v. Kryptonite Corp. (a bicycle lock manufacturer), the court ruled that Kryptonite had “come to be recognized as a powerful symbol” for the Superman franchise, and ruled that Kryptonite was protected by trademark law. Since the Kryptonite Corp. was not making glowing green space rocks, you would not be faulted if you thought the “proximity of the goods factor” would benefit the Kryptonite Corp.

Are fictional marks stuck in a lacuna between trademark and copyright, protected by neither? Arrow proposes that Duff Beer is not a trademark for beer but rather for an entertainment product, viz., The Simpsons. Arrow proposes a test for measuring how much of use in fiction is enough to constitute real-world trademark priority.

H/T: Concurring Opinions, Real-Life Protection for Fictional Trademarks (pdf).

17 thoughts on “Applying Trademark Law to Fictional Brands”

  1. HenMan 1, February 27, 2011 at 5:43 pm


    If you click on your second link ( and scroll down a little way, you will find a slogan by “Diana in Wisconsin” that says,

    “Save the Earth. It’s The Only Planet With Chocolate.”

    I think we can all agree with that!


    It is also the only planet with Renard’s 10 year aged cheddar, and the only planet with “Bite You Back Cheese”?

    It is good to have Bite You Back Cheese; it is good for those who bite to understand what it is to also be bitten?

    10 Year Cheddar, Dark Chocolate, Buckwheat Honey, Bite You Back Cheese, local artisan baked Black Bean Peppercorn bread; what more could any heaven have to offer?

  2. @Lying Harris: You cannot patent what already exists in nature; there is a major legal argument going on right now over the right to patent human genes. Patenting novel new genes is a different story, if somebody invents one or modifies one.

    Since the universe exists and everybody knows it, you cannot patent it, or life, or any other idiotic idea you may have.

  3. @Lying Harris: To be a trademark it must be used in trade, and typically you must show some evidence that the word or phrase is used in your advertising or other distributed promotional material in a way unique to your product or company, and is therefore presumably associated with or symbolic of your product or company by your trading partners.

    The question is whether people should have rights to their own inventions that become popular, be those inventions phrases, machines or processes.

    I had rights to some important ideas myself, which I willingly turned over to society at large to benefit and advance science. I don’t make a dime off them, but that was my choice. They were not taken from me, I had the rights and chose what to do with them, and I do not regret that choice in the least. In fact I have made the same choice several times and intend to make it again. The fact that I choose not to exploit my ideas and inventions for financial gain should not be taken as evidence I am against intellectual property rights; in fact I believe I am exercising my right to do with my ideas as I see fit.

  4. Vinny, “Not Jerry Gallo, Jerry Callo.”?

    “G” and “C” appear almost the same, why not define them by statute to be identical, interchangeable, and equivalent?

    The Corporate Creed is Corporate Greed?

    So “God” is the same as “Cod”?

    No wonder a fish symbol was the symbol for The Way?

    What is the relationship of a codpiece to a God Peace?

  5. How do I trademark, as individual words, all words of all languages in every possible combination?

    How long before it becomes a trademark or patent violation to be born?

    When did Greed become the only permissible Creed?

  6. “Duff Beer” and “Duff Man” and all that used in The Simpsons are protected by copyright. They are clearly novel word constructs, images, etc. Something on Seinfeld like “The Soup Nazi” might be protected by copyright also; naming an eating establishment after that is stealing some name recognition power that rightfully belongs to Jerry Seinfeld (I presume), whether he is using it or not. The Seinfeld show invented that phrase and spent money on production and airing of the episode that gave that phrase meaning. Without the Seinfeld episode, naming an eating establishment “The Soup Nazi” would undoubtedly be seen as offensive and cause many prospective diners to avoid the place. After Seinfeld the name is seen by many millions of people to be humorous and light-hearted and as a claim of soup so outstanding it is worth submitting to humiliation. Anybody unfamiliar with the comedic episode in question would be quickly corrected by friends and coworkers that are.

    A similar argument can be made for Duff Beer. Pre-Simpsons, “Duff” meant “Butt,” as in “Get off your duff.”

    The Simpson’s writers, as a parody, named their most popular brand at Moe’s “Butt Beer.” Pre-Simpson’s, this name would have earned marketing derision; and using the name is stealing positive publicity that belongs to the owner’s of the series. It is the equivalent of putting Homer Simpson on their label, or the cartoon character “Duff Man.”

    “Duff Beer” belongs to the series, it was copyrighted like all original constructs the second it was put to paper, and there is no reasonable evidence it would have any appeal to consumers without the benefit of name recognition by virtue of being written into dozens of episodes of a popular TV show. Whatever good will and humorous associations it now enjoys belongs to the people that own the rights to that series.

    There is no gray area of trademark and copyright law here; this is not “fair usage” in a news or entertainment column, this is blatant commercial usage and implied endorsement of a popular entertainment franchise without permission.

  7. How do I go about trademarking and patenting existence?

    If I am able to show that what causes existence to exist is non-obvious, can I patent the whole universe?

    Who will help me, pro bono, to get the universe privatized?

    Once I have trademarked and patented everything?

    Perhaps I patent all of life itself, first?

    Who could claim that all life is not a novel, non-obvious invention?


    Time for “p”?

  8. Companies pay big money to have their products placed in movies and TV shows. Obviously if there is a fictional product (and DUFF beer may be the best example) that is very well known because of its repeated placement in a series that has run for 20+ years that brand name has great value. Add to this that the actual product could reflect on the value of the fictional work that made it famous I would have to say that it is well deserving of copyright protection.

  9. HenMan,

    That is interesting…. Today…I left the abode….went to the store and bought white Chocolate…with cranberry’s and almonds… I did get preachers dozen of chocolate chip cookies…. of course there must have been a hole in the bags as when I got home….the bag was empty……I am not sure how that happened… But because it has happened before… There should be a cure…. The worst thing I can recall is the Starbucks Oatmeal Raisin…. try about 12 of those… They are good….the only thing they don’t have…you guessed it chocolate…

  10. AY-

    If you click on your second link ( and scroll down a little way, you will find a slogan by “Diana in Wisconsin” that says,

    “Save the Earth. It’s The Only Planet With Chocolate.”

    I think we can all agree with that!

  11. AY,
    I have to admit that I beat Uncle Harry to the idea of putting wine in cans. I had that idea in the late 60’s and early 70’s when I purchased a bottle (or two) of Strawberry Hill and muttered that I could keep it colder longer in aluminum cans. I never got anyone to believe me that it was possible and worthwhile. Sadly, I don’t think I ever put my idea in writing and I just settled on drinking my wine out of the bottle!

  12. rcampbell,

    This started out as a Radio Hoak….Now there is a winery/vineyard in NE Texas that actually makes this stuff….

    Welcome To The Hiney Winery (Humor Break)
    Hiney Winery Website ^ | Unknown | Unknown

    Posted on Thursday, March 19, 2009 8:39:47 AM by TnGOP

    Welcome To The Hiney Winery

    The Hiney Winery was established in 1979 by Uncle Harry Hiney. He had the idea of putting his Hiney in a flip top disposable can. Family friends convinced him that his Hiney was too good to keep to himself so they bought the warehouse behind the library and the rest is history. Since that time people all over the area have been enjoying Hiney Wine.

    The tradition is being kept alive by Harry’s two nephews, Big Red and Thor, who refuse to put their name on their Hiney until its perfect. That way you know that anytime you wrap your hands around an ice cold Hiney, it’s going to be the best Hiney you’ve ever had. The entire family is proud of their Hiney. Big Red, Thor, Ophelia, Humphrey, Selma, Ima, Rosey, Anita, Seymore, Lucie and Thor’s wife, Oma Aiken-Hiney are just a few of the Hineys that are part of the crack inspection team that checks every can for quality. Quality assurance and customer care ensures you that you are getting the best Hiney money can buy.

    Next time you go shopping, ask your grocer where he keeps his Hiney. The motto of the HINEY WINERY says it all, “You only go around once in life, so grab for all the Hiney you can get”. hiney wine

  13. Wasn’t this what happened to the dot com world…. Taking space and charging excessive fees…. Other than that it is BS…

Comments are closed.