Lights, Camera…

January 1, 2005


Matthew C. Lefferts

Wait, what’s that in the background?

Motion pictures, video games, pictorial advertisements and other visual media often include background elements that are not owned or controlled by the producer. There is no problem if the background shows a sunset or ocean view that no one can claim to own. But when it comes to private property used as a backdrop – either real estate or intellectual property (like trademarks or copyrighted works) – permissibility may depend on the focus of attention.

For example, big city venues are filled with landmark buildings and highly visible intellectual property, like advertisements on billboards. No one can object to the use of a cityscape just because its constituent parts are many privately owned buildings with ads on them. In contrast, framing a shot without authorization in front of an identifiable private residence, like a private home in the suburbs, could pose a problem. Producers often eliminate the problem by obtaining permission from the owner of the property in the form of a location release. Even when a release might not be necessary, if a big-budget production hangs in the balance, the cost and effort of obtaining the release is usually far less burdensome than the risk of neglecting it.

But an unusual twist developed in a situation where the producer didn’t intend to include private property in a shot, but rather to exclude it. The licensees in control of advertising space on certain buildings in Times Square, as well as the owners of the buildings, sued the producer of the motion picture “Spider-Man” in federal court for depicting those buildings with superimposed advertising that never appeared in real life. The plaintiffs’ theory of trademark and trade dress infringement did not impress the court, however, which rejected both claims. Noting that the plaintiffs’ “advertising-encrusted buildings” were only “fleetingly visible from time to time as background” in action scenes, the court found no “likelihood of confusion” among moviegoers as to the “buildings’ association with the substituted advertisements.” Moreover, the trial court held that the combination of images – both fictional and actual – in a depiction of Times Square was “central to a major scene in the movie thereby serving the theatrically relevant purpose of orienting the viewer to the location” and protected by the First Amendment.

A federal appellate court affirmed rejection of the “confusion” claim because the plaintiffs failed to identify any specific elements of the buildings that deserved such protection. The court also noted that the filmmakers merely had to show “at least some artistic relevance” to defend their replacement of ads in Times Square under the First Amendment. But mostly on technical grounds, the appellate court left it for a state court to address the plaintiffs’ claims of unfair competition, deceptive trade practices, dilution and trespass, which raised “unsettled questions” under New York state law.

While producers might find some encouragement here, the “Spider-Man” case underscores that each set of circumstances must be individually assessed to determine whether the use of other people’s property in the background of a shot will violate their rights.