The Copyright Act states that names, titles, short phrases and expressions cannot be registered in the U.S. Copyright Office. But wait! Trademark law can cover names!
Sometimes the best title for your video production happens to be a relatively famous one that has already been used. It may not have been a movie title, but a title for a song or a name of a famous person or even a brand of toilet paper.
Titles cannot be protected by copyright. The Copyright Act clearly states that names, titles, short phrases and expressions cannot be registered in the U.S. Copyright Office (see www.copyright.gov/circs/circ34.html). In other words, no matter how clever (e.g., a play on words), novel or distinctive a name, title, logo or short phrase (slogan) is, you cannot registered it in the U.S. Copyright Office. Therefore, at least under the Copyright Act, you can use an existing title or slogan for the title of your movie.
But wait! Intellectual property protection is more than copyrights. It also includes trademarks for identifying the source of goods and services. When it comes to titles, it is the trademark law that can apply. If someone else has used the title or any trademark on his or her products or services, and you wish to use that exact title or a slight variation, you will have to investigate the circumstances carefully.
Trademark law is similar to copyright law. As you know, copyright law allows a user to prevent others from copying his work without permission. Trademark law also deals with an exclusive right that gives the owner of a mark the right to exclude anyone else from using the mark – or a confusingly similar mark – on goods or services in the same channel of trade. In other words, a trademark owner can prevent others from using the same trademark – regardless of whether the mark is registered – or a trademark that is close to the owner’s mark and is likely to cause confusion as to the source of the goods or services.
However, as long as the goods or services are in a different channel of trade, two or more parties may use identical trademarks. That is why certain trademarks used by different parties can coexist, such as UNITED AIR LINES® and UNITED VAN LINES® and CADILLAC® automobiles and CADILLAC® dog food.
The general rule, then, is that you can use a trademark that is being used by another party as long as your channel of trade is different from the trademark owner’s. But there is always an exception: be careful about “famous” marks. These are marks that are so famous that anyone’s use of them on any goods can be actionable by the trademark owner. You know a famous mark when you see it: McDonald’s, Coca-Cola, SONY, etc. If you call your movie “Home of the Whopper,” you may get a nasty letter from Burger King’s attorneys.
Some movie titles have been registered in the U.S. Patent and Trademark Office (PTO), since product tie-ins with movies are common nowadays. In fact, the tied-in products can generate more income for a movie company than the box office.
For example, STAR WARS® was registered in the PTO by Lucasfilm, Ltd. to cover not only the production and distribution of motion pictures and other entertainment services, but to identify paper goods and printed matter, like address books, comic books, notebooks, children’s books, paper doorknob hangers, printed invitations, paper tablecloths, trading cards, bookmarks, checkbook holders and covers, as well as pencils, pens, paper gift bags, greeting cards, napkins, party hats, postcards, stickers, cardboard figures, temporary tattoos and school and office supplies.
STAR WARS® also protects athletic shoes, slippers, children’s footwear, hats, masquerade costumes, masks, pajamas, rainwear, sweatshirts, ties, T-shirts, underwear, wristbands and suspenders.
You can search trademarks at the U.S. Patent and Trademark Office website, to determine whether another party is using a word or expression as a trademark.
As long as a mark is active (i.e., being used continuously on products or services), it is enforceable. In other words, there is no expiration date for trademarks. Coca-Cola®, for example, has been an enforceable trademark for over 100 years.
Since trademarks are in a gray area of law, it makes sense to avoid using an established mark for your title or to seek legal counsel if you are unsure about your rights or the rights of others.
Attorney Mark Levy specializes in intellectual property law. He has won many amateur moviemaking awards.