St. Louis-based appliance maker Emerson sues NBC

St. Louis Daily Record & St. Louis Countian, Oct 6, 2006 by Emily Umbright

In the backdrop of a shocking scene depicting a woman's bloody, mangled hand sits an Emerson-brand garbage disposal. That bit of unintended product placement received national attention this week after the St. Louis-based appliance maker sued NBC.

Despite regular appearances of planned and unplanned products in the primetime limelight, Emerson isn't too happy about having its In- Sink-Erator disposal featured before a national television audience. But is the brand name's presence enough to satisfy trademark infringement by NBC?

Washington University law professor Jennifer Rothman doesn't think so.

"In a very unscientific survey of people who watched, no one had any idea that it was an Emerson garbage disposal," she said. "I suspect [company officials] knew it was their garbage disposal because they filed the lawsuit."

The seven-count suit, filed Monday in the federal district court in St. Louis, claims NBC Universal Television Studios tarnished the image of the In-Sink-Erator when it used the product to display its character's special power of skin regeneration in the pilot episode of the TV show "Heroes."

The suit specifically alleges the scene casts the disposal in "an unsavory light" and "implies incorrect and dangerous design." It also raises claims of defamation, dilution under state law and tortious interference with other business relations.

An amendment to the Trademark Dilution Act is one reason Rothman is skeptical of any successful outcome for Emerson. Although the yet- to-be-signed bill eases the process for a trademark owner making a dilution claim, Rothman said it also "suggests" the defendant needed to be using the mark to qualify as a violation of the act.

"Here, NBC wasn't calling itself Emerson, and the series wasn't called Emerson, so there was no marking of any product," she said. "It just included a set dressing - a garbage disposal that Emerson recognized as its In addition, she noted, Hollywood has successfully faced other disputes brought by trademark owners.

In 2003, a California district court refuted Slip 'N Slide-maker Wham-O's claim that Paramount Pictures diluted its trademark rights when it showed actor David Spade skidding down a dry slide in the movie "Dickie Roberts: Former Child Star."

Likewise, a federal judge in Illinois dismissed Caterpillar Inc.'s claim against Disney that the studio's use of its bulldozer in the film "George of the Jungle 2" hurt its reputation when the vehicle was driven by "manical" cats. As with Emerson's case, Caterpillar also raised an unfair competition claim, which the court rejected, finding Disney was not trying to profit from the bulldozer's trademark.

In both the Caterpillar case and the Wham-O case, the studios did not legally clear the trademarks used in the film, Rothman said, pointing out that studios are more careful with clearing copyrights than trademarks

Nevertheless, she said, "most studios will try to remove trademarks where they can" by blurring the name.

"If they think they're important to the plot, they leave them in and won't clear them," she added.

In "Heroes" the In-Sink-Erator brand can be seen, if the view looks closely at the sink.

In a statement to Bloomberg News on Wednesday, an NBC Universal spokesperson said Emerson's suit was meritless but that the network plans to remove the brand name from the show.

Rothman called NBC's decision a "troubling precedent" and said the typical defense to trademark disputes is usually to make "straightforward attacks on the claims."

In addition to seeking a bar on future airings of the Sept. 25 television episode, Emerson seeks awards of monetary and corrective advertising damages.