Caterpillar has lost its TRO motion to restrain Disney’s release of the movie “George of the Jungle 2,” which movie allegedly infringed and/or tarnished Caterpillar’s trademarks in its depiction of bulldozers in the movie. Background here.
In a somewhat similar fact pattern, Wham-O had failed in enjoining the use of its SLIP N’ SLIDE product in the movie ‘Dickie Roberts’ (background here). The Northern District of California noted in relevant part:
Defendants’ use of plaintiff’s marks satisfies all three aspects of this nominative use test. First, defendants use plaintiff’s mark to identify a product not otherwise readily identifiable. Other verbal formulas (e.g., “water slide” or “lubricated plastic sheet”) do not capture or identify the toy with adequate specificity, and trademark law does not compel individuals to “use absurd turns of phrase” simply to avoid trademark liability. See Welles, 279 F.3d at 804-05. In the film, defendants intend to identify the slide as a specific product; to do so requires the use of the product’s name. fn.8
Second, defendants use “only so much of the … marks … as is reasonably necessary to identify the product or service.” Id. (citation omitted). fn.9 To identify the slide as a toy, it was at once sensible and necessary to refer to the slide by its popular name. A single character does so two times in the film. No depiction of plaintiff’s logos or marks appears otherwise, and defendants do not reference plaintiff’s marks unnecessarily or abusively. Defendants’ use does not exceed that which was “reasonably necessary.” Id.
And, third, defendants’ use does “nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.” Id.; see Brother Records, Inc. v. Jardine, 318 F.3d 900, 908 (9th Cir.2003). The actual word mark (viz., “Slip ‘N Slide”) is used but twice, and it is not used or displayed more prominently than any other term. Id. Like any other portion of the film’s dialogue or set, plaintiff’s mark forms part of the film’s jumble of imagery; it is not highlighted so as to exploit the value of plaintiff’s mark.
As any moviegoer can attest, it is not unusual for movie producers to use a signature scene–and the products and props therein–to cultivate interest in a film. Films with car chases do so with cars; films with gunplay do so with firearms; films with haute couture wardrobes do so with clothing. Nothing in the record suggests defendants’ used plaintiff’s marks to imply that plaintiff placed its imprimatur on the film; nowhere in defendants’ publicity efforts is plaintiff’s mark unreasonably displayed or abused. Cf. id. (finding improper a defendant’s use of another’s mark as if it was defendant’s own). Defendants, instead, use the marks and product in a specific and unique descriptive sense: to evoke associations with an iconic child’s toy.
Wham-O v. Paramount Pictures, No. 03-4071 (N.D. Cal. Sept. 30 2003).