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Shahrokh Sheik is a founding partner of Kramer Holcomb Sheik LLP. His practice areas cover business and intellectual property transactional and litigation matters, with a focus on corporate and entertainment transactions, e-commerce, and trademarks. Ryan C. Shanley is a 3L at Southwestern Law School in Los Angeles. While attending law school, he has worked at Lionsgate, Universal Pictures, and NBCUniversal’s Corporate Trademarks group.
While trademark law protects a wide range of marks used in commerce to designate their source of origin—service marks, word marks, design marks, sound marks, scent marks, and color marks—it does not generally protect titles of single creative works such as movie, television show, book, and song titles.1 Trademark protection for titles of works can provide significant value to the author. In addition to deterring third parties from distributing works with similar names that could dilute the brand or pass off on the accumulated commercial goodwill, trademark protection can facilitate opportunities for additional revenue streams such as licensing merchandise and other cross commercial brand partnership arrangements with related goods and services. Of course, the need for such protection is more relevant for titles with potential for ancillary products and merchandising opportunities.
Readily extending trademark protection to individual titles seems logical, but such a policy could theoretically divvy up the best descriptors of plots, themes, or characters in creative works to the first party who happens to use them and effectively remove them from the lexicon of possible titles. Because a likelihood of confusion might arguably be found with even similar titles, not necessarily exact duplicates, this scenario would limit the commercial opportunities for the creative community and likely encourage bad actors to squat on titles, particularly in this age of hypercreation brought on by the proliferation of digital cameras and online content distribution platforms.
U.S. intellectual property laws provide a limited scope of protection to titles. Copyright law does not provide specific protection because titles are akin to names, short phrases, mottos, slogans, and names of products or services—matters that have not achieved the requisite level of original creative expression.2 At the federal level, trademark law offers protection only in certain scenarios. As a policy, the United States Patent and Trademark Office (USPTO) will not issue trademark registrations for titles of single creative works.3 Interestingly, the USPTO has approved certain single-film titles that were registered under other classes of goods and services in connection with which the mark may be used, such as clothing, action figures, and DVDs.4 However, generally, single-work titles seeking registration for “entertainment” related services (International Class 41) are deprived of federal registration benefits such as constructive notice to others of ownership of the mark, presumptions of ownership and exclusive right to use the mark, statutory damages and costs with a successful claim under the Lanham Act (e.g., attorney fees and treble damages), the ability to register the mark with U.S. Customs and Border Protection to combat counterfeiting, and incontestability of the mark after five years of continuous unchallenged use.5
The justification from the courts and the USPTO for the refusal to register titles of single creative works is that they are inherently descriptive or generic, no matter how elaborate or lengthy. Ordinarily, even descriptive marks can obtain federal registrations via § 2(f) of the Lanham Act if they acquire secondary meaning.6 However, titles that acquire secondary meaning still cannot be registered. This distinction for creative works seems odd at first glance, but there is an explanation. Creative works can be protected by copyright law as well, but unlike trademarks, which can endure perpetually so long as they are used in commerce, copyright protection has a finite term, in most cases life of the author plus 70 years. The courts have taken the position that once a work falls into the public domain, the public has a right to refer to that work by its original title,7 and allowing federal trademark protection for that title would impair this right. Both the work itself and the title thus pass into the public domain.8
By contrast, federal protection of titles is available for works that are part of a series.9 The most obvious way to identify a series would be the appearance of labels such as edition, volume, or in the case of television, episode. Even without these specific labels, the name of a series can obtain registration if it sufficiently identifies the source of the goods (e.g., “Hunger Games” as the title of a series). Works “in which the content changes with each issue or performance” are also protectable (e.g., Landslide® magazine).10 Simple format changes, such as a book offered as an audio book, do not constitute a series.11 However, single creative works may qualify as a series with subsequent releases if the content changes significantly,12 such as a second edition of a book or a director’s cut of a movie.
Filing an intent-to-use (ITU) application for a series may effectively provide some de facto protection for the single work as a first in the series. An ITU application, with proper extensions, reserves the possible registration for several years. More important, because it is not contingent upon the title actually being registered,13 the title and ITU application will still show up on trademark and title reports ordered by potential holders of similar and identical titles, effectively deterring the risk-averse from encroaching upon a same or similar title.
State trademark offices may also be used to gain some title protection for single creative works. They do not have the hard and fast rule against registering single creative works that exists at the federal level, and the process of obtaining a registration is often much quicker than at the USPTO. State trademark registrations have the additional benefit of showing up in trademark and title reports.
Foreign registration holders are often availed to protections not offered to U.S. mark holders by way of trademark treaties such as the Madrid Protocol and the Paris Convention. Many foreign jurisdictions do not have the bar on registration of titles for single creative works, so studios and producers may still be able to secure title trademark protection in valuable distribution territories such as the European Union. Because Canada is considered a “domestic” distribution region for films, registering the film title in Canada could serve to get around the USPTO ban on single creative work protection, as studios will not want to market two English titles for the same film in the same “domestic” territory.14 This is again a deterrent strategy that doesn’t require the acquisition of secondary meaning, but is based on business judgment.
A title may be protectable by asserting claims of unfair competition or trademark infringement under state laws and/or the Lanham Act—for example, in an instance demonstrating a clear attempt to deceive the public as to the affiliation and source of origin and to pass off on the goodwill of established brands. Such claims are generally limited to titles that have acquired “secondary meaning,” which means the title is so well known with the public that it serves to identify the source of the work.15 This can be proven with evidence of marketing efforts, sales, surveys, and a variety of other factors.16
A blatant example of a deceptively misdescriptive title and attempt to pass off on the commercial goodwill of an established brand can be found in the recent case Warner Bros. Entertainment v. Global Asylum, Inc.17 The plaintiffs (including The Saul Zaentz Company, owner of various marks from J.R.R. Tolkien works such as the HOBBIT marks), filed for a temporary restraining order enjoining the release of Asylum’s “mockbuster” film Age of Hobbits. The film was allegedly about “a recently-discovered species of pre-historic humans that lived in Indonesia,” rather than the fictional creatures from the famous novels.
Warner Bros. had issued cease and desist letters and had been negotiating with Asylum regarding changes that could be made prior to release, but even after changing some marketing materials, Asylum ultimately decided to go ahead with a film containing the word “hobbit” in the title. Warner Bros. sued for trademark infringement, false designation of origin, dilution, false advertising, and state law unfair competition. Three weeks before the release of Asylum’s film, Warner Bros. filed an ex parte request for a temporary restraining order (TRO).
The court granted the TRO because Warner Bros. proved it had a protectable interest in the mark and Asylum’s use was likely to cause confusion. Most of the Sleekcraft factors18 weighed in favor of Warner Bros., especially the three most important in the Internet context: similarity of the marks, relatedness of the goods, and use of similar marketing channels. The marks were identical, both companies produced and distributed feature-length films, and both marketed extensively on the Internet. The court was also highly suspicious of Asylum’s intent, particularly because Age of Hobbits was scheduled to be released only three days prior to The Hobbit: An Unexpected Journey.
When asserting unfair competition and infringement claims, the plaintiff should consider potential First Amendment defenses that protect users of similar sounding marks. The seminal case involving title trademark law and the First Amendment freedom of expression defense is the 1989 Second Circuit decision Rogers v. Grimaldi.19 Ginger Rogers was an international celebrity known for dancing with Fred Astaire. In 1986, the defendants produced and distributed the Fellini film Ginger and Fred, the fictional account of a post-retirement reunion of Italian cabaret performers, Pippo and Amelia, who were impersonators of Ginger Rogers and Fred Astaire, and were known as “Ginger and Fred.” The film was meant to be a satire of contemporary variety shows. Rogers brought suit under the Lanham Act and common law right of publicity, alleging that the title created the false impression that the film was about her. The district court granted the defendants’ motion for summary judgment, holding that the title fell within the First Amendment exception to the Lanham Act (as part of an expressive work), and also dismissed the right of publicity claims on that basis.
The decision affirming the district court gave rise to the now-standard test for First Amendment protection when dealing with titles of creative works: “Where a title with at least some artistic relevance to the work is not explicitly misleading as to the content of the work, it is not false advertising under the Lanham Act.”20 This two-pronged approach is a balancing test, pitting the public interest in avoiding confusion against the expressive interests of creative authors. It has come to be used in mediums beside film, such as titles of books, songs, and television shows.
Going back to the “hobbit” example, Asylum’s First Amendment and nominative fair use defenses both failed. Asylum failed the Rogers test because the use of the word “hobbit” in its title did not intentionally reference the trademarked term, and would also be considered explicitly misleading based on the application of the Sleekcraft factors. Because Asylum emphatically stated it in no way intended to refer to Warner Bros.’ HOBBIT mark, nominative fair use did not apply. The TRO was followed weeks later by a preliminary injunction, which the Ninth Circuit affirmed.21 The film was ultimately renamed Clash of the Empires.22
So while case law has established that First Amendment protection is available for artists as long as their titles pass the two-pronged Rogers test, conditions must be met in order for the test to even apply, and they still lack free reign to select whatever title suits their fancy.
One prominent nontrademark way to protect film titles is via the Motion Picture Association of America (MPAA) Title Registration Bureau (TRB). As explained by the MPAA:
The Bureau is a voluntary central registration entity for titles of movies intended for U.S. theatrical distribution, and it is intended to prevent public confusion over films with similar titles. In order to register titles, filmmakers must subscribe to the Bureau’s registry. There are currently almost 400 subscribers, including all of the major motion picture studios. Subscribers are bound by the Bureau’s rules, which prescribe procedures for registering titles and handling any related disputes.23
The TRB thus handles film title usage via contractual protections rather than trademark or unfair competition law. By having signatories agree to be bound by various procedures and remedies, it avoids costly litigation and allows for some certainty in the marketplace as far as what films are on the horizon and which may have confusingly similar titles. It also allows for each signatory to register and protect up to 500 commercially released U.S. theatrical motion picture titles,24 which it may prevent other members from using with timely protest.
This past summer, audiences were privy to a high-profile example of an MPAA TRB dispute when Warner Bros. protested and then won an arbitration award preventing The Weinstein Company (TWC) from using “The Butler” for its much-anticipated release about the first African American butler in the White House. Warner Bros. objected on the basis of its 1916 short film The Butler, which was never widely distributed but remained a protected released title with the TRB.25 Although Warner Bros. prevailed in the arbitration procedure required by the TRB members and an appeal, public accusations, complaints, and antitrust suit threats by TWC filled the trades on a daily basis for weeks.26 Fines of $25,000 a day were levied against TWC for each day marketing materials continued to refer to the forbidden title, and although it eventually relented and changed the name to Lee Daniels’ The Butler (a proposed title it had registered earlier with the TRB), it did not escape severe financial punishment. TWC had to pay $400,000 in fines and Warner Bros.’ $150,000 legal bill, plus unknown costs to redesign and distribute marketing materials that incorporated the new title.
While theoretically great and very powerful in practice, this system is only beneficial for business planning or in a dispute if both parties are signatories, because the TRB offers no protections for nonmembers. And even if the small and the large alike join, the larger studios still have more resources to pour into their protected titles. They can (and do) finance one-off business entities that are themselves signatories to the TRB, each having the same allowance for protected titles. So in effect, major players in the industry can protect far more than what would appear on the surface. This seems to create a large disincentive for smaller participants in the market thinking about becoming signatories.
In order to devise an effective trademark protection strategy and assess options in light of potential infringing uses of marks by third parties, trademark owners should consider the available legal methods to protect intellectual property rights in titles in conjunction with potential First Amendment defenses. In the United States, the desire to protect intellectual property and encourage and reward creative content producers is weighed against the public policy concern of not confiscating an ever-increasing number of words for creative expression. Secondary meaning is needed in order for an unfair competition suit against a confusingly similar title holder to be successful, and proving it in court can be expensive. Indeed, the film may never even rise to such a status in the minds of the consuming public. In addition to utilizing common law and statutory protections for single creative works, trademark owners should also consider business tools and strategies like registering the title with the MPAA TRB, serializing the work, and developing ancillary income streams through related goods and services. n
1. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 10:4 (4th ed. 2013).
2. The Copyright Act protects original works of authorship only, and the Copyright Office has explicitly declared that titles do not meet the criteria for the “minimum amount of authorship in the form of original literary, musical, pictorial, or graphic expression.” U.S. Copyright Office, Circular 34, Copyright Protection Not Available for Names, Titles, or Short Phrases 1 (2012).
3. U.S. Patent & Trademark Office, Trademark Manual of Examination Procedure (TMEP) § 1202.08 (Oct. 2013).
4. Examples include “Reservoir Dogs” (Registration No. 2,640,668), “The Blair Witch Project” (Registration No. 2,800,585), and “Judge Dredd” (Registration No. 3,007,341). See Jonathan L. Handel, Mark My Words, L.A. Law., April 2008, at 22, 24.
5. See 15 U.S.C. §§ 1057(b), 1115(a), 1117, 1118, 1124.
6. TMEP, supra note 3, § 1212.
7. See Corporate Counsel’s Guide to Trademark Law § 5:5 (2012).
8. 2 McCarthy, supra note 1, § 10:36.
9. TMEP, supra note 3, § 1202.08(c).
10. Id. § 1202.08(b).
11. See Mattel, Inc. v. Brainy Baby Co., 101 U.S.P.Q.2d 1140, 1143 (T.T.A.B. 2011).
12. 6 Anne Gilson LaLonde, Gilson on Trademarks § 1202.08(b).
13. TMEP, supra note 3, § 1103.
14. Handel, supra note 4, at 25.
15. See 3 Thomas P. Selz et al., Entertainment Law: Legal Concepts and Business Practices § 19:24 (3d ed. 2013).
17. No. 12-cv-9547, 2012 U.S. Dist. LEXIS 185695 (C.D. Cal. Dec. 10, 2012).
18. In determining whether a likelihood of confusion exists, the court considers: (1) the strength of the plaintiff’s mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the marketing channels used; (6) the type of goods and degree of care likely to be exercised by the consumer; (7) the defendant’s intent; and (8) the likelihood of expanding product lines. AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979).
19. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989).
20. Id. at 1000.
21. Warner Bros. Entm’t v. Global Asylum, Inc., No. 13-55352, 2013 WL 5814731 (9th Cir. Oct. 30, 2013).
22. Matthew Belloni, Warner Bros. Wins Injunction against “Age of the Hobbits” Movie, Hollywood Rep., Jan. 30, 2013.
24. MPAA Title Registration Bureau, Rules for Registration of and Disputes Relating to United States Theatrical Motion Picture Titles ¶ 4.4.2.
25. Eriq Gardner, “The Butler” Battle Escalates: Weinstein Co. Hints Lawsuit, Raises Antitrust Warning, Hollywood Rep., July 3, 2013.
26. TOLDJA! Weinstein Co. Can Title Its Movie “Lee Daniels’ The Butler,” If It Wants, Deadline (July 19, 2013), http://www.deadline.com/2013/07/toldja-mpaa-oks-weinstein-co-to-use-lee-daniels-the-butler/.