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).