Titles as trade marks

Major Hollywood studios and television networks have no equal when it comes to registering motion picture and television titles as trade marks. Titles are not subject to copyright protection so the studios and networks have spent a fortune registering their titles as trade marks and then taking legal action against usurpers. But not all film and television titles can become trade marks, even if they are famous. Only a select few achieve that status.

Title clearance

When creating or choosing a title of a motion picture or television program it’s best to pick one that will not be confused with another film or television title. This certainly helps avoid law suits and ensures the E & O Policy will be issued. The policy will typically have a ‘title clearance’ clause protecting against an alleged unauthorized use of the title, but before issuing the policy the insurer will require a clear ‘title report’ supported by a professional opinion. The report (see, for example, www.thomson-thomson.com) lists over hundreds of pages prior use of a particular title in film, television, radio, books and theatre.

A ‘title opinion’ on the report is typically provided by a specialist trade marks attorney. The opinion addresses whether or not the title is safe to use. Where a title has merchandising potential the attorney or the insurer will also order an ‘entertainment search report.’ This is a broader report, virtually identical to a trade mark availability search, but focusing on popular film and television merchandise items. If the report is clear this is the ideal time to file trade mark applications covering those areas in the main countries of interest.

Title Registration Bureau MPAA

It’s impossible to talk about title clearance without mentioning the way Hollywood decides motion picture title disputes. The Motion Picture Association of America (MPAA) set up its own Title Registration Bureau in 1925 in response to filmmakers’ wishes to protect their titles. By agreement each member (mostly the major Hollywood studios and their subsidiaries) is required to register forthcoming titles with the bureau. Independent distributors can opt in for a small fee. If the title is registered, the other members agree not to use a confusingly similar title. A compulsory arbitration system applies where there is a dispute and, over the years, there have been many.

Warner Bros registered Casablanca with the bureau for its 1942 feature starring Humphrey Bogart and then threatened legal proceedings against A Night in Casablanca starring the Marx Bros. In a notorious exchange of letters with Warner Bros, Groucho Marx retorted that he ‘had no idea that the City of Casablanca belonged exclusively to Warner Brothers … What about ‘Warner Brothers’ — do you own that too? You probably have the right to use the name Warner, but what about Brothers? Professionally, we were brothers long before you were …” (see http://www.chillingeffects.org/resource.cgi?ResourceID=31) The dispute dragged on, but after the press got a hold of the story, Warner Bros relented, the title was registered and A Night in Casablanca was released in 1946.

Generally the system works well, but it only binds its members and the MPAA does not register television titles. Also, some independent producers are reluctant to register as it tends to favour prior titles registered by the majors. One thing is for sure: it hasn’t stopped the majors from applying for trade mark registration in relation to their titles.

Title Wars

There is now a widely held view that numerous film and television titles are not trade marks in the legal sense because they can’t work as badges …

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