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What began with Katherine Hepburn’s character dumping Gordon’s gin overboard in The African Queen and evolved into luring the alien in ET with Reese’s Pieces has grown to a $4 billion annual business known as “product placement.” Confronting the evolving trends toward greater use of product placement as a source of advertising-and the potential for misuse of trademarks in movies and television-was the focus of the International Trademark Association gathering of 7,400 lawyers, corporate leaders and industry insiders in San Diego last week. Among the themes: New digital technology has opened ethical and legal questions of control over public images. “In a world of Tivo, where you can skip commercials, companies try to work products into shows and movies,” said Bruce P. Keller, a trademark specialist with Debevoise & Plimpton in New York who was a presenter at the conference. Triggering lawsuits Nimble companies are aggressively seeking licensing arrangements and will pay to place their trademark product on TV and in movies. The flip side, the misplacement of a product in a setting considered damaging to the corporate image, produces lawsuits. The Federal Trade Commission recently rejected a call by a consumer group to identify for viewers the paid product placements on film and television. But a similar request before the Federal Communications Commission is still pending, according to Keller. Fights over unlicensed use of protected works in the backdrop of programs took a sharp turn after artist Faith Ringgold sued the Black Entertainment Network for copyright infringement when her picture, “Church Picnic Story Quilt,” appeared in the background of the show TV show ROC. Early cases had held that incidental use of a protected product in a film amounted to fair use, and the film industry regularly won in litigation. But the appeals court decision, Ringgold v. BET, 126 F.3d 70 (2d Cir. 1997), created a watershed change in Hollywood by saying fair use could not be decided on summary judgment. The trial court had to take into account the potential effect on Ringgold’s future ability to license her design. That spawned clearinghouses to acquire rights and avoid expensive litigation. Protecting celebrity images on a global basis has become more complex than ever with the growth of technology that allows the digital creation of the image of a long-dead celebrity saying and doing new things. “It is possible to digitally have [John] Kennedy saying something he never said in life,” said David Bernstein, also of Debevoise & Plimpton and an organizer of the conference. “That is scary for politics in our society today.” In the entertainment industry, who has the right to decide whether digital images of a celebrity can be created? “It is an issue of moral rights for the entertainer,” Bernstein said. And in protecting commercial rights, “there is the law of 200 countries you have to consider,” he said. And then there is garden-variety crime. Internet issues continue to dominate trademark-abuse discussions, including the use of protected marks by criminals intent on “phishing”-or using fake e-mails to trick recipients into giving personal data that they think is going to their bank or other legitimate business. Tracking down the criminals behind phishing remains one of the toughest problems for lawyers right now, according to Faisal Shah, a former partner at Pillsbury Winthrop and now chairman of eMarkMonitor Inc., which is engaged in corporate identity protection. People committing fraud are not likely to provide accurate information when they register a domain name, he said. “How do you find the person behind it?” he asked.

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