Re: Trademarks in Copyrighted articles

From: Eugene Volokh <VOLOKH[_at_]law.ucla.edu>
Date: Fri, 10 Feb 1995 13:28:01 PST

Paul Robinson writes:
>
> I know it works the other way: I remember the MPAA got an injunction
> to stop a song from using the one of its motion picture rating
> certification marks, as the title of a song. Probably the "PG-13"
> mark, as the individual letters are probably too weak by themselves.

     OK, I couldn't resist: The following is a quote from Judge Kozinski's dissent from denial of rehearing en banc in White v. Samsung:     

     Pepsico Inc. claimed the lyrics and packaging of grunge rocker Tad Doyle's "Jack Pepsi" song were "offensive to [it] and [...] likely to offend [its] customers," in part because they "associate [Pepsico] and its Pepsi marks with intoxication and drunk driving." Deborah Russell, Doyle Leaves Pepsi Thirsty for Compensation, Billboard, June 15, 1991, at 43.

     Conversely, the Hell's Angels recently sued Marvel Comics to keep it from publishing a comic book called "Hell's Angel," starring a character of the same name. Marvel settled by paying $35,000 to charity and promising never to use the name "Hell's Angel" again in connection with any of its publications. Marvel, Hell's Angels Settle Trademark Suit, L.A. Daily J., Feb. 2, 1993, sec. II, at 1.

     Trademarks are often reflected in the mirror of our popular culture. See

     Truman Capote, Breakfast at Tiffany's (1958);
     Kurt Vonnegut, Jr., Breakfast of Champions (1973);
     Tom Wolfe, The Electric Kool-Aid Acid Test (1968) (which,
incidentally, includes a chapter on the Hell's Angels);
     Larry Niven, Man of Steel, Woman of Kleenex, in All the Myriad
Ways (1971);
     Looking for Mr. Goodbar (1977);
     The Coca-Cola Kid (1985) (using Coca-Cola as a metaphor for
American commercialism);
     The Kentucky Fried Movie (1977);
     Harley Davidson and the Marlboro Man (1991);
     The Wonder Years (ABC 1988-present) ("Wonder Years" was a
slogan of Wonder Bread);
     Tim Rice & Andrew Lloyd Webber, Joseph and the Amazing

Technicolor Dream Coat (musical).

     Hear
     Janis Joplin, Mercedes Benz, on Pearl (CBS 1971);
     Paul Simon, Kodachrome, on There Goes Rhymin' Simon (Warner
1973);
     Leonard Cohen, Chelsea Hotel, on The Best of Leonard Cohen
(CBS 1975);
     Bruce Springsteen, Cadillac Ranch, on The River (CBS 1980);
     Prince, Little Red Corvette, on 1999 (Warner 1982);
     dada, Dizz Knee Land, on Puzzle (IRS 1992) ("I just robbed a

grocery store--I'm going to Disneyland / I just flipped off President George--I'm going to Disneyland");

     Monty Python, Spam, on The Final Rip Off (Virgin 1988);
     Roy Clark, Thank God and Greyhound [You're Gone], on Roy
Clark's Greatest Hits Volume I (MCA 1979);
     Mel Tillis, Coca-Cola Cowboy, on The Very Best of (MCA 1981)

("You're just a Coca-Cola cowboy / You've got an Eastwood smile and Robert Redford hair ...").

     Dance to Talking Heads, Popular Favorites 1976-92: Sand in the Vaseline (Sire 1992); Talking Heads, Popsicle, on id.

     Admire Andy Warhol, Campbell's Soup Can.

     Cf. REO Speedwagon, 38 Special, and Jello Biafra of the Dead Kennedys.

     The creators of some of these works might have gotten permission from the trademark owners, though it's unlikely Kool-Aid relished being connected with LSD, Hershey with homicidal maniacs, Disney with armed robbers, or Coca-Cola with cultural imperialism. Certainly no free society can demand that artists get such permission.

White v. Samsung, 989 F.2d 1512, 1513 n. 6 (9th Cir. 1993) (Kozinski, J., dissenting from denial of rehearing en banc) (line and paragraph breaks added).

• Eugene Volokh, UCLA Law <volokh[_at_]law.ucla.edu>

Received on Fri Feb 10 1995 - 21:43:54 GMT