Wednesday, May 5, 2004

Frequently Asked Questions: Titles

Answers from Mark Litwak, Attorney At Law



DISCLAIMER: The information provided here is intended to provide general information and does not constitute legal advice. You should not act or rely on such information without seeking the advice of an attorney and receiving counsel based on your particular facts and circumstances. Many of the legal principles mentioned might be subject to exceptions and qualifications, which are not necessarily noted in the answers. Furthermore, laws are subject to change and vary by jurisdiction.



Question: Is it clearly illegal for a studio to use a title from a copyrighted screenplay for its own work? I copyrighted "Ruby Ridge: An "American Tragedy" as the title of my screenplay many months before CBS decided to produce their miniseries, which is not based on my screenplay. Nobody from CBS ever contacted me, and I have not been compensated.



Answer: Titles are not copyrightable. They can sometimes be protected under trademark laws and laws of unfair competition. In order for a title to be protected, it has to be associated with a series of work and distinguish them from other sources of manufacture than yourself. Another way to protect a title is to register the title with the MPAA, the Motion Picture Association of America, and the Title Registration Bureau, which is binding by virtue of a contract that all the participants and the signatory service sign.



Question: Quick questions on movie titles and trademarks. Prior to a movie being announced, marketed, promoted, and released can the movie title be considered a trademark? Are movie titles trademarkable? If a person owned an Internet domain name, e.g., www.XYZ.com and XYZ was the title of a movie that had not been released, and the title had not been used in a previous movie, would that person be infringing a trademark?



Answer: Trademarks protect product and service names, and company names. When a certain name becomes associated with a certain product or service, trademark rights arise. Some of these rights arise simply from use of the mark. Additional protections arise if you decide to register your trademark. Examples of famous trademarks are Xerox, Apple and IBM. If you are in the computer business, you cannot market your computers as Apple computers unless you have the permission of the company known by that name. Likewise, you cannot set up a hamburger stand across the street from McDonald's and call yourself McDonald's, put up golden arches, or in any way try to pass off your hamburgers as legitimate McDonald's hamburgers, when they are not.



However, titles of individual products like a movie are generally not eligible for trademark protection. Only a series of products from a single source, such as sequels or a television series such as Bonanza, can be protected under trademark law. However, for a one-shot project like a movie, the title would not be protected. The title, however, could possibly be protected under the laws of unfair competition once the title has acquired a secondary meaning. A movie cannot have a secondary meaning with the public before it is released. Thus, after George Lucas had produced and distributed Star Wars, another filmmaker could not distribute a movie called Star Wars II, and trade on the goodwill and name recognition of the original. This would be unfair competition, and would violate various federal and state laws. Whether the use of a name on a product or service violates the trademark rights, or violates various unfair competition laws, may be a difficult call.



Trademark rights are often restricted to a geographical area or type of product. For example, if you operate the Acme Hardware Store in Los Angeles, it would not necessarily prevent someone else from opening an Acme Hardware Store in Brooklyn, a location where you do not do business. Likewise, the fact that you operate a Hardware Store under the mark "Acme" would not prevent someone from setting up the Acme Supermarket because people do not associate hardware and food together. In other words, there is little likelihood of confusion.



Another way to protect titles is with registration with the MPAA. This is protection by contract law, through an arrangement between the MPAA companies and any independent producers who choose to join. It is a contract wherein all parties agree not to infringe each other's titles. There are some limitations because the deal is only binding on those people who choose to sign it. If you wish to contact the MPAA Title Registration Bureau, their number is (818) 995-6600.



Question: You have informed readers "there is limited protection by registering a title at the Motion Picture Association of America Title Registration Bureau." Is there similar protection for titles of television programming; i.e., series, specials, etc.? Thank you.



Answer: The title protection offered by the Motion Picture Association of America is limited because the agreement is only binding on signatories. These include all the member organizations of the MPAA, (essentially the major studios), and any independent producers who choose to sign the agreement. The MPAA does not register titles for television programs. For more information, you can contact the Motion Picture Association of America at (818) 995-6600 or go to their Website at http://www.mpaa.org.



Question: I just discovered your website from my screenwriting listserv group and find it very useful ... thanks! I have a question: My first screenplay in progress is called "Thorn of the Rose." I researched the WGA's site to see if this title was a duplication of another screenplay already written and registered but didn't find any resource on their site that listed every name of screenplays registered. Do I have to worry if that title is already taken?



Answer: Titles cannot be copyrighted, although use of a title in a confusing manner may give rise to an action for unfair competition. Of course, there may be a number of films that share the same title. If the other films that share your title are not likely to be confused with your film (perhaps they are very old, or are no longer being distributed) then you do not have much to worry about. Before finalizing your title, you may want to do a title search to see who else may have used the same or similar title. Title searches can be done through Dennis Angel (914) 472-0820 (online at http://www.lawyers.com/dennisangellaw) or Thomson & Thomson (800) 692-8833 (online at http://www.thomson-thomson.com). Any source

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