Bulldozer maker Caterpillar was not amused with its products being driven by the villains in ‘George of the Jungle 2′, but could this amount to trade mark infringement/dilution?
Topic: Product placement
Who: Caterpillar Inc and the Walt Disney Company
Where: US District Court for the Central District of Illinois
When: October 2003
What happened:
Caterpillar, the well known manufacturer of bulldozers, diggers and dumpers etc sued the Walt Disney Company for abuse of its trademarks in "George of The Jungle II." Caterpillar's problem was the appearance of its bulldozers in five scenes. They were driven by the "baddies" and shown converging on a natural site, "Ape Mountain," in order to drive our hero "George" from the area which was his home. The marauding bulldozers are opposed by George and his animal colleagues, whilst the film's narrator describes the Caterpillar equipment as "maniacal machines," "deleterious dozers," etc.
Perhaps surprisingly these days, the appearance of the Caterpillar products was not the result of a product placement deal between Walt Disney and the dozers' manufacturers.
On the contrary, Caterpillar was outraged that its products were cast in a light which they regarded as thoroughly denigratory to their brand. Caterpillar's trademarks, as featured on the bulldozers in shot, were clearly seen on screen and Caterpillar mounted an action for trademark infringement and dilution against Walt Disney.
On the infringement claim, Caterpillar argued that partly because of the current environment in which product placement deals between movie makers and brand owners are so rife, there was a significant risk that those seeing the movie would imagine that "George of the Jungle II" was sponsored by or associated with, or otherwise affiliated with Caterpillar.
On the dilution claim, Caterpillar focused on the "blurring" or "tarnishment" limbs of this US civil wrong. It argued that the association of its products with the baddies in the movie tarnished the reputation of Caterpillar's products and business.
On both counts, the court threw out the Caterpillar claim.
On the infringement side of things, the absence of any indication of Disney seeking to free-ride on Caterpillar's trademarks (at least in the view of the court) was influential in its rejection of the Caterpillar claim.
As for dilution, the Caterpillar products themselves were, as they appeared in the action, functioning perfectly properly and in accordance with their description and image. They were not in any way suggested to be shoddy or below par and accordingly, despite the "maniacal machines" and other less than flattering descriptions of the products by the narrator, the court was not inclined to give credence to the Caterpillar claim.
On that basis the Caterpillar claim for a temporary injunction preventing further sales or screenings of the movie was rejected.
Why this matters:
Whether Caterpillar's claim would suffer a similar fate in the UK is an interesting question. Similar issues can arise where third party products and their trademarks feature in advertising. Is there always going to be a risk of some form of trademark infringement or passing off claim by the third party brand owner unless the brand is obscured?
It is to be hoped that a UK court would take a similarly robust view to that adopted by the Illinois court in the George case. Indeed, at first blush, the UK law equivalent to the US's "tarnishment" doctrine looks helpful in this regard. It is contained in Section 10(3) of the 1994 Trade Marks Act. This gives the owner of a registered trademark which has a "reputation in the UK" a remedy for trademark infringement if the use of the mark "without due cause" takes advantage of, or is detrimental to, the distinctive character or the repute of the mark.
On the other hand, the wording is quite broad and perhaps might encapsulate the mere association of a trademark with unpleasant or evil characters in a context similar to that of "George II."
The bottom line at present, therefore, has to be that we are not aware of any case in which such issues have been aired before the UK courts to date, and until they are and a clear picture presents itself, we must continue to advise caution in the portrayal of third party brands in advertising material.
