Leslie Chong is a JD candidate at Osgoode Hall Law School.
Benjamin Arrow’s article “Real-Life Protection for Fictional Trademarks” addresses the issues that arise when real-life companies attempt to exploit trademarks established in fictional worlds. Dubbed by commentators as “The Arrow Principle”, the author suggests that, as the use of the brand shifts from the fictional world to the real world, the protection being sought is best afforded through copyright rather than trademark law.
In his analysis, Arrow uses the Australian ‘Duff Beer’ trademark case to support his argument that while these fictitious trademarks ought to be protectable in real-life, conceptual issues preclude damages for direct trademark infringement even if the infringement appears to be clear.
A trademark is meant to identify or distinguish the originating source of a product or service from those provided by its competitors. As such, when a real-world manufacturer put a ‘Duff Beer’ label on his beer products (exactly as it had appeared on The Simpsons), it is hard to conceptualize the injuries that were suffered by 20th Century Fox and The Simpsons’ creator Matt Groening. ‘Duff Beer’ was not a product created in the real world and any infringement suffered by the plaintiffs could not amount to damages from loss of business, customer confusion or dilution of their mark in the public. Rather, as Arrow writes, “Because the expression of a parodic beer with an unflattering name is a minimally creative artistic expression fixed in the tangible medium of film, the breweries’ appropriation of Fox’s original expression might constitute a copyright injury”.
This, however, should not preclude the protection of fictional trademarks. Rather, proof of infringement must be demonstrated by showing that another party has usurped the goodwill associated with the fictional world in which the product at issue is found. As Arrow argues, the trademark in ‘Duff Beer’ exists not as it relates to alcoholic beverages as it appears on the show, but rather as it relates to the goodwill associated with The Simpsons as an entertainment franchise. In attaching ‘Duff Beer’ to their products, the breweries “reap the financial, reputation-related rewards associated with a desirable product” – the product being The Simpsons franchise.
Since trademark law has been used to protect superhero names and their related products in the US, while copyright law has been used to protect these same rights in Canada, it may well be that ‘The Arrow Principle’ will encourage an integration of both copyright and trademark principles for protecting fictional trademarks.