The intersection of trade-mark law and the film and television industries raises a number of important issues for consideration by intellectual property lawyers and entertainment lawyers. This article will focus on trade-mark rights in titles. Future articles will deal with trade-mark rights in character names, trade-mark rights in catch phrases and product placement in film and television productions.

It is a generally accepted principle that titles are not protected by copyright as they are generally not substantial or original enough to be protected. Producers of film and television programs therefore often look to statutory and common law trade-mark rights to protect their titles. Whether they will be successful depends, in part, on whether the title is the title of a single production or a series of productions.

In Canada and the United States, the title of a single movie or television program is generally not protectable. The USPTO, CIPO and courts on both sides of the border treat single titles as inherently descriptive. Section 1202.08 of the US Trademark Manual of Examining Procedure unequivocally states: “The title of a single creative work is not registrable on the Principal Register or the Supplemental Register.” To date, the majority of the cases on registrability of titles emanate from the United States and that will be reflected in this article.

Although a title may not be registrable in association with a single movie or television program, applications can be filed in other categories for ancillary goods and services such as toys, clothing and other merchandise.

The cases are consistent with the edict of the USPTO regarding titles of single creative works. In the US, courts generally resist giving trade-mark protection to the title of a creative single work even if the title is unique: In re Hal Leonard Publishing Corp., 15 USPQ2d 1574 (TTAB 1990) ("a settled principle that the title of a book cannot be registered as a trademark"). In another decision of the US Trademark Trial and Appeal Board, the mark CHOOSE TO BE RICH for audio tapes featuring financial information in Class 9 was held by the USPTO to be the title of a single creative work and therefore unregistrable. The USPTO’s decision was upheld by the TTAB: In re Cashflow Technologies Inc. S.N. 78965495. The applicant argued that the content of each tape was different and therefore acceptable to show use of the mark on a series of creative works. The examining attorney took the position that the series of cassettes was marketed as a single work and that view prevailed at the TTAB.

In re Posthema, 45USPQ2d 2011, 2014 (TTAB 1998), the TTAB concluded that PHANTASM, as the title of a single live theatre production, was unregistrable because it did not function as a service mark.

A single title can be protected on common law or unfair competition grounds if it has acquired secondary meaning. To achieve secondary meaning, a title must be broadly known. In appropriate circumstances, secondary meaning can be established by a few performances or significant pre-release publicity. In Jackson v. Universal International Pictures, Inc., 36 Cal.2d 116 (1950), secondary meaning was found in the title of a play where less than 4,000 people in New York and Philadelphia saw the play. In that case, the author of the play “Slightly Scandalous,” which ran for only two weeks in Philadelphia and closed after seven shows in New York, was able to successfully assert his rights in the title against Universal which produced a motion picture under the same title. Secondary meaning was established by advertising and publicity in addition to the actual shows.

In another secondary meaning case, The Red Hot Chili Peppers (the “RHCP”) sued Showtime Networks and the creators of the show Californication, and filed a cause of action based on two dilution claims, two unfair competition claims and one unjust enrichment claim. The RHCP alleged that the title “Californication” had acquired secondary meaning on the basis of the commercial success of the album and song of the same name. Showtime moved to have the action dismissed, claiming its use of the word “Californication” was protected by the First Amendment.

Showtime’s motion to dismiss was granted with respect to the two dilution claims, but was denied with respect to the two unfair competition claims and the unjust enrichment claim. Interestingly, Showtime succeeded on the dilution claims because non-commercial trade-mark uses are expressly exempt under the US Federal Trademark Dilution Act which protects famous marks from uses that dilute their distinctiveness. The court accepted Showtime’s argument that its use was sufficiently artistic and not purely commercial and thus entitled to full First Amendment protection. The case ultimately settled. In cases involving the use of a trade-mark in works of artistic expression, such as movies or songs, the public’s interest in being free from confusion in the marketplace must be balanced against the artist’s right to free expression. Rogers v. Grimaldi, 875 F. 2d 994, 997-98 (2d Cir. 1989).

In Canada, the Federal Court of Canada recently released a decision consistent with the American approach to titles of single creative works. In Drolet v. Stiffung Gralsbotschaft 2009, FC 17, [2009] F.C.J. No. 38, the Court held that book titles are “inherently descriptive” and therefore not the subject of valid trade-marks.

In his reasons, Mr. Justice de Montigny stated : “I am nevertheless of the opinion that the title of a literary work is inherently descriptive not because it conveys information on the content of the work but because it is the only way to identify the book in question. Thus the title cannot be dissociated from the work itself. Indeed, how could a publishing house identify a book it publishes other than by its title? At most, the owner of the title of a literary work can bring an action in unfair competition if he can establish that the use of the same title by someone else is likely to create confusion, provided of course that he can prove that the original title has acquired a secondary meaning. For the reasons given above, I find that the title of a book is inherently descriptive to the extent that it is the most certain way of identifying it. Therefore, the fact that a book may be considered a ware is not sufficient for its title to be considered a registrable trade-mark.”

The title of a series of creative works is generally treated differently than the title of a single creative work. Titles of works that are part of an ongoing series such as Harry Potter or Twilight are generally registrable and protectable. Producing a sequel creates opportunity to obtain trade-mark registration for a title if the title serves to distinguish and identify the source of the goods. The rights for the series date back to the first work of the series only if the second work or sequel is released within a reasonable period of time with a requisite association in the public mind: Hebko Int’l. v. Kappa Books 64USPQ2nd1375 (TTAB 1970).

In re Scholastic Inc. 23USPQ2d 1774, 1778 (TTAB 1992), the TTAB accepted THE MAGIC SCHOOL BUS as a registrable trade-mark: “Notwithstanding its appearance in the books’ titles, THE MAGIC SCHOOL BUS is recognized by purchasers who, when they see the term, know what they are getting – that is, another book in this series of books emanating from applicant.”

However, if a title in a series merely identifies characters in the movies, the title does not function as a mark. The case cited to support this principle deals with “The Littles,” an animated TV series first broadcast in the 1980s based on the Littles characters in a series of children’s novels written by John Peterson. “While we do not dispute the fact that the applicant produces a series of books, we cannot agree that trademark usage is shown. The series concerns a fictional family called the Littles and each book involves a particular activity of the family. Hence use of THE LITTLES in the title of each book merely names the main characters of that book. It does not identify the source of the physical commodity, the book. Rather it identifies in whole or in part the reading material found between the covers of the book. That is not the function of a trademark”: In re Scholastic Inc. 223USPQ432 (TTAB 1984).

In light of the foregoing restrictions with respect to the protection and registration of titles, what options are available to producers of films or other single work titles? In Canada, an applicant could apply on a proposed use basis for a series of works and stretch out the application process by extending the time frame for filing a declaration of use. In the interim, the applicant could produce and release a sequel thereby creating a series and removing obstacles to registration and enforceability. Even if a sequel is not produced and the application is abandoned, the producer can start to build secondary meaning in the title and attempt to enforce its rights in the title against third parties. When filing the application, the applicant must have a bona fide intent that it will produce a series of productions. Otherwise, the application or registration may be open to challenge under Section 30(i) of the Canadian Trade-marks Act.

US commentators have suggested there is merit to registering single work titles under the state registration system. Although the registrations have little substantive value, they will be disclosed in title search reports and potentially deter a third party from adopting the title. Another method used to protect titles is to register proposed titles with the Motion Picture Association of America’s Title Registration Bureau, the members of which are the Hollywood studios and hundreds of independent production companies. Once a title is so registered, other members of the Bureau are bound by the Bureau’s rules which impose restrictions on their ability to adopt and use the same title or a confusingly similar title.