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NBA2K16 should pay for the “Extra Value” Added to the Games by Players’ Tattoos

A tattoo is undoubtedly a work of art, and once inked onto a person’s skin, that art is permanently “fixed” as a part of that person. But is it “fixed in a medium” as required for protection under the Copyright Act?

That is the question posed by the makers of the wildly popular basketball video game series, NBA2K, in answering a lawsuit brought by the owners of the copyrights to the tattoo designs featured on some NBA players in this and prior years’ games. After making a deal with the tattoo artists to exploit their designs in return for a royalty, Solid Oak Sketches, LLC offered 2K Games, the makers of the NBA2K series, a license for the tattoo designs, but they declined. Ultimately Solid Oak filed suit for copyright infringement against the video game makers and developers, Visual Concepts LLC, 2K Games Inc., and Take-Two Interactive Software, Inc. on February 1, 2016 after this year’s video game, NBA2K16, was released.[1]

Tattoos meet copyright standards

The Copyright Act has two requirements for copyrightability: the work must be an original work of authorship,[2] and it must be “fixed in a tangible medium of expression.”[3] The “fixation” requirement is not limited, but may be “any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”[4]  The definition section bolsters this wide view of the requirement: “A work is “fixed” in a tangible medium of expression when its embodiment in a copy or phonorecord, by or under the authority of the author, is sufficiently permanent or stable to permit it to be perceived, reproduced, or otherwise communicated for a period of more than transitory duration.” (Emphasis supplied.)[5] No one would argue that an individual’s body is not permanent or stable enough to be a medium of expression.

The issue of the copyrightability of tattoo designs is well settled, as they are original works of authorship registrable in the Copyright Office just like any other art.[6]  The copyrightability of a tattoo design on a person’s skin, which is only one “copy”, has been questioned by legal scholars and the defendants in this case. However, a tattoo on a person can be copied, reproduced, and communicated, just like other works, through copies of the tattoo on a person’s skin reproduced in other media. In the case of the tattoos on NBA players in the NBA2K games, the works are copied and reproduced not only hundreds, but MILLIONS of times in the games.

Owners have exclusive rights

Under the Copyright Act, the owner of the copyright, whether the original artist or his or her assignee, has the exclusive right to exploit the work. This includes the right to copy and reproduce the work, to publicly perform or display the work, and to prepare derivative works.[7] The very fact that 2K Games reproduced the tattoos on NBA players’ bodies for its games, and also reproduced them on their product packaging and in their advertising materials, shows that the tattoos on a body are capable of being reproduced in other media. Making these copies and exploiting them commercially is the sole right of the copyright owner. Even LeBron James could not make copies or license others to make copies of his own tattoos in this case, since without a waiver, it is assumed that tattoo designs are owned by their creator, not the person who pays to have that design inked on their skin. This was illustrated in the lawsuit filed by the tattoo artist who created Mike Tyson’s tribal face tattoo against Warner Brothers for reproducing the tattoo on a cast member of the movie “The Hangover 2” and using it prominently in its advertising. Tyson had signed an agreement that the tattoo design was solely owned by the tattoo artist, so he alone had the right to reproduce the design. Warner Brothers settled the case with the artist shortly after the movie was released.[8] There have been several other cases in which tattoo artists have sued to stop the reproduction of their tattoo art in other media for profit. Tattooist Matthew Reed sued NBA star Rasheed Wallace and Nike to stop the use of the tattoo in a sneaker ad which actually featured a simulation of the tattoo’s creation. Soccer icon David Beckham’s tattooist sued him over a proposed advertising campaign which revolved around a tattoo created for him. Both athletes and Nike settled out of court with the artists.

NBA2K series is a multimillion seller

According to sales figures, NBA2K16 shipped an impressive and record breaking $4 million copies the first week of its release.[9] Revenue for Take-Two rose substantially in the second quarter of 2015, when NBA2K was released, to $364.9 million, a 169% increase from the previous year. Also digital downloads of the game doubled from the prior year.[10]  Take-Two’s 2K Sports game developers have been called “The kings of customization”, and are described by reviewers as having “upgraded their tattoo game” by allowing gamers to choose from 1500 tattoo designs that can be used to create “almost and endless array of virtual body art.”[11] So 2KSports can offer 1500 tattoo designs to customize their new game, but they do not want to pay for those designs that help them make their millions.

License offer rejected

Solid Oak Sketches, through their attorneys, attempted to negotiate a license for future uses of their copyrighted tattoo designs in early summer 2015, before the latest version of the game was released. The attorneys for Solid Oak offered a confidential settlement in compensation for 2K’s “ongoing acts of copyright infringement” in their unlicensed use of the tattoo designs in earlier years’ versions of the game. The letter pointed out that several of their clients’ copyrighted tattoo designs, namely those on LeBron James and Kobe Bryant, were featured prominently not only in the games, but also on the cover photos and advertising for those games. LeBron James was pictured on the cover of NBA2K14, with the disputed tattoos visible; that version sold over 7 million units. Those tattoos on LBJ were said to be “the face” of the 2014 game, making the tattoos’ marketing and promotional value several times higher than the other tattoos. After several correspondences between the Solid Oak attorney and the principals of 2K Sports, the game company terminated the negotiations and continued with the production and release of NBA2K16.[12]

Damages for Copyright infringement

Under the Copyright Act, damages for infringement can be calculated from the copyright owner’s actual damages suffered as the result of the infringement, or the owner can elect at any time before judgment to recover an award of statutory damages, which can range from $750 to $150,000 per infringement, depending on the willfulness of the infringement.[13] In addition, the court has the discretion under the law to allow recovery of full costs by or against a party, including reasonable attorney’s fees to the prevailing party.[14]

In their attempt to negotiate a settlement and license for future use of its tattoo designs with the heads of 2K Sports and the other defendants, Solid Oak attorneys set out what they considered a reasonable license fee. Since the courts have not decided the issue of damages for tattoo design infringement due to out of court settlements in several recent cases, and Solid Oak did not have access to 2K’s sales and revenue numbers for sales of the infringing games, the attorneys calculated the potential damages according to the only public damage award known for tattoo infringement. That award of $22,500 by a bankruptcy court to the tattoo artist Christopher Escobedo, who created a tattoo visible on an athlete in the video game “UFC Undisputed” which sold 4.1 million copies, was appealed as inadequate, and the artist settled for an undisclosed amount. Although the attorneys for Solid Oak allowed that the ultimate payout probably exceeded the $22,500 amount, they used that amount along with the publicly available sales figures for the 2K game and came up with $819,500 as compensation for prior infringements, and offered a perpetual license for all future uses of the specified tattoos of $1,144,000. They noted that most of the athlete’s careers will surpass four additional years as represented by the license fee.[15]

Alternative theories and trademark defenses

Some writers have posed different solutions to the tattoo licensing situation, including defending on the fair use theory that some of the tattoos in the games are not always visible, or are a very small or “de minimis” part of the games. That of course does not hold water with some of the tattoos on the NBA players in the games which are not only prominently featured in the game but are used in its cover art and advertising.[16] This defense ties in with another which assumes an implied license from the artist to the bearer of the tattoo, which would allow a sublicense to third parties to show the players’ tattoos in any commercial depictions of him or her. However, under copyright law implied licenses are disfavored; the burden of proof is on the defendant to prove the existence of a license by a preponderance of the evidence.[17]

Others have seen the issue as one of personal freedom, with the person bearing the tattoo having the right to publicly display the tattoo, even in commercial settings for athletes and celebrities. This argument is similar to the “nominative use” defense in trademark law, which allows the natural portrayal of trademarks and logos seen and referred to in real life situations.[18] For example, under the nominative use theory, Lebron James can appear in a film as himself with his real tattoos visible, since they are part of the “landscape” of him and of the movie. However, it would not be nominative use if Lebron James’ tattoos were focused on in the film and prominently displayed in the trailer and advertising for the movie. That would imply an association with the tattoo artist as having a connection with the film, which would help market and advertise the film, even though the artist is not connected to the movie and may not want his or her designs used in that movie. However it is clear the defense does not quite fit here, as usually it is a prominent company’s logo which has been wrongfully co-opted by the moviemakers to bolster sales of the film by association with that company. Unless a tattoo artist is famous worldwide and his or her designs well known, there is little value (or harm) in associating a movie (or game) with that artist. On the other hand, the association with the game implies that the tattoo artists or their representatives have agreed to their tattoo designs being in the game, and are being paid for them, which they are not.

Public policy argument

Other writers want to amend the Copyright Act to deny tattoo artists copyright protection for their designs by changing the definition of “copies” to exclude the human body. They argue there is a “public policy” that would prevent the potential for intrusion on the human rights of the tattoo artist’s clients by giving the artist some control over what is done with the tattoo once it is on the client’s body. The vague notion that tattoos are becoming so ubiquitous in today’s society that it would be difficult to control the use of them, and therefore the artist creating them should not be paid for reproductions of that art (while on a body) in some other medium is weak at best. Singling out this type of art may violate the tattoo artists’ constitutional right to obtain copyright protection for their creations which are legitimately protectable.

Athlete unions involved

The NFL Players Association is the only athlete union so far to address this tattoo situation by encouraging players to get an assignment, release or waiver from the tattoo artist agreeing to indemnify the game maker against third party claims before they would be allowed to have their tattoos depicted on merchandise. Several NFL players have done just that and relieved the makers of games they are depicted in from paying for the use of their tattoos. Colin Kaepernick got permission from the two artists who inked his tattoos to use them in the video game “Madden 15” released by Electronic Arts.[19] The combination of the popularity of video games featuring professional athletes as they appear in actual games and the number of athletes with tattoos makes the issue of releases and waivers a real concern for both athletes and game makers.

Enhancement of the games

As mentioned before, the reason athletes’ tattoos are so valuable to video game developers is that they make the games as realistic as possible. They are seen as an important feature of the games, partially responsible for the increase in the games’ popularity and sales.[20] The artwork provided by the tattooists is obviously a subject of negotiation for the game makers, as they make more money from the realistically enhanced depictions of the players. It is not an acceptable excuse that it would be too difficult for these game developers to get waivers from all athletes involved or a license from all the tattoo artists. You have to spend money to make money, as all filmmakers who have to pay for the music and artworks depicted in their movies know. Similarly, as the game makers’ revenue is enhanced by realistic depictions of tattoo art, the copyright owner artists responsible for their increased revenue should also share in the wealth.

 

©2016 Mary Ellen Tomazic

 

[1] Complaint for Copyright Infringement, Solid Oak Sketches, LLC v. Visual Concepts LLC, 2K Games Inc., Take Two Interactive Software, United States District Court, Southern District of New York, No. 16-00724.

[2] Id., § 102(a) (5). “… the requisite level of creativity is extremely low; even a slight amount will suffice.”  Feist Publications, Inc. v. Rural Telephone Service Co., Inc., U.S.Kan.1991, 111 S.Ct. 1282, 499 U.S. 340, 113 L.Ed.2d 358, 18 U.S.P.Q.2d 1275.

[3] Id.

[4] Id.

[5] Id., § 101.

[6] Tattoo Art v. TAT International LLC, 498 Fed.Appx. 341 (C.A. Va., 2012).

[7] 17 U.S.C. § 106(5).

[8] “Who Owns Your Tattoo? By Marisa Kakoulas, Inked Magazine, March 9, 2012, available at http://www.inkedmag.com/articles/who-owns-your-tattoo/.

[9] “NBA 2K16 Breaks Records With 4 Million Copies Shipped in Under One Week,” GameSpot.com, Oct. 2, 2015,

available at http://www.gamespot.com/articles/nba-2k16-breaks-records-with-4-million-copies-ship/1100-6431093/.

[10] Id.

[11] “NBA 2K16: Breaking Down Best New Features for This Year’s Game,” BleacherReport.com, Aug. 31, 2015,

available at http://bleacherreport.com/articles/2558410-nba-2k16-breaking-down-best-new-features-for-this-yearsgame.

[12] Id., fn. 1

[13] 17 U.S.C. § 501. § 504.

[14] Id. at § 505.

[15] Complaint for Copyright Infringement, Solid Oak Sketches, LLC v. Visual Concepts LLC, 2K Games Inc., Take Two Interactive Software, United States District Court, Southern District of New York, No. 16-00724. Confidential Settlement Communication.

[16]http://espn.go.com/nba/story/_/id/14693836/makers-nba2k-sued-graphically-representing-tattoos-players-permission

[17] 3 Melville B. Nimmer and David Nimmer, Nimmer on Copyright §10.03[A] [7] and §12.11(D) (2006).

[18] 15 U.S.C. § 1125. See, New Kids on the Block v. News America Pub., Inc., 971 F.2d 302, 308 (9th Cir.1992).

[19] http://espn.go.com/nba/story/_/id/14693836/makers-nba2k-sued-graphically-representing-tattoos-players-permission.

[20] “NBA 2K16: Breaking Down Best New Features for This Year’s Game,” BleacherReport.com, Aug. 31, 2015,

available at http://bleacherreport.com/articles/2558410-nba-2k16-breaking-down-best-new-features-for-this-yearsgame.

Fan Films – Breaking the Unwritten Rules and Defining Profit

The word “fan” finds its origins in the word “fanatic”, defined as a person “unreasonably enthusiastic” or “overly zealous” about a specified performer, sport, movie or program. Some of the most enthusiastic fans of all are those who profess their love of certain movies or television shows by producing a “fan film.”
Fan films use copyrighted material to pay homage to the original, and under the unwritten rules of this practice, they are not to be sold and no profit is to be made from them. They are not supposed to be in competition with the original film or show, and they are not to be seen as a substitute for the original work. Usually these heartfelt homages are made by amateur filmmakers with their own money, and they do not rise to any significant competitive level with the original in quality, scope or length.
This noncommercial but still infringing use of copyrighted works is termed “tolerated use”, and is allowed by the rights holder despite knowing someone is infringing on their work. The understanding of fan film makers is that under these unwritten rules they cannot profit from their fan film in any way, and it must remain noncommercial (i.e. not for sale) and noncompetitive with the original work. The copyright holder may feel the fan film complements the original work, creates goodwill and adds value in keeping fans engaged and favorite characters alive. On the other hand, it is still direct infringement of copyrights and trademarks that the rights holder may to put a stop to at any time. It is possible that the movie and television studios have allowed fan films to this point because they were not any competition and did not made profits from the use of their copyrights, so committing serious money to sue them did not make sense.
Fan films have been made for decades and many rights holders have unofficially sanctioned them by not suing the makers for copyright infringement. Some rights holders not only tolerate fan films, they encourage them. Lucasfilm holds an annual “Star Wars Fan Film Awards” which they call “the ultimate celebration of Star Wars fan creativity”. However, the rules for this contest state that “SW fan films are limited to 5 minutes in length and nobody that is union affiliated is allowed to be involved.” Obviously a five minute video is by definition not in competition with the full length Star Wars films.
Another issue for rights holders is the use of their logos and other trademarks in fan films which may not square with the reputation and goodwill that are represented by the marks. The fan film may make use of subject matter or topics that the rights holder does not want associated with its trademarks. Or the use can be so poorly executed that it may reflect badly on the rights holder by association, so that it tarnishes the company’s brand. Of course any use by fan filmmakers of the trademarks of the original work in any kind of commerce, either distributing or selling items with the logo or trademarked characters is a violation of the Lanham Act and can be the subject of a separate lawsuit.
These issues all came into sharp focus with the filing of a copyright infringement lawsuit in U.S. District Court in Los Angeles by Paramount Pictures and CBS Studios against Axanar Productions and its president, Alec Peters, along with twenty other “John Doe” defendants who assisted in the making of the film (Paramount Pictures Corp. & CBS Studios Inc. v. Axanar Productions, Inc.) When a group of filmmakers decided to make a Star Trek fan film called “Axanar” and raised over $1 million in donations through Kickstarter and Indiegogo campaigns to produce the movie, the copyright holders sat up and took notice. According to Variety, “(t)he suit notes that the two films are “substantially similar to the Star Trek Copyrighted Works, with Vulcans, Klingons and many of the original franchise’s characters portrayed throughout.” The suit alleges that in their unauthorized derivative works based on Star Trek, the Axanar producers “unabashedly” took CBS and Paramount’s intellectual property to make their movie “look and feel” like a true Star Trek movie. It claims that Axanar was intended to be a professional production, and infringes the plaintiffs’ works by “using innumerable copyrighted elements of Star Trek, including its settings, characters, species and themes.”
The studios in this case seem to have finally drawn the line on how much they will tolerate with fan films, and in their complaint are asking for injunctive relief restraining the Defendants, and anyone acting in concert with them, from directly or indirectly infringing the copyrights of the Star Trek Works, including but not limited to “continuing to prepare, reproduce, distribute, copy, publicly perform, market, advertise, promote, produce, sell or offer for sale the Axanar Works or any works derived or copied from the Star Trek Copyrighted Works”; statutory damages of $150,000 per each separate infringement of the Star Trek Copyrighted Works; reasonable attorney’s fees; and a declaratory judgment that the continued production of the Axanar Motion Picture specifically constitutes infringement of the Star Wars Copyrighted Works.
The case revolves around what “profiting” from a fan film includes – can a filmmaker hire actors, set designers and build out a studio with crowdfunded money to make a “fan” film? Can he pay himself a salary from the funds? Paramount and CBS say no, deciding that this Axanar movie is no fan film but a competing product made from their copyrights and trademarks. The lawsuit is their way of reining in their previous tolerance of unlicensed use of their intellectual property, and protecting their legal rights under federal law. It is the evident hope of CBS and Paramount that the court will set a precedent on what is a fan film that can be tolerated by the rights holders, and what is straight infringement by a rival producer.
The producer of Axanar, Alec Peters, has not made himself popular with the studios or even a lot of Star Trek fans, some of whom contributed money to the project. In his response to the lawsuit on his website, he claims his movie is a “labor of love” that “keeps fans engaged, entertained, and keeps favorite characters alive in the hearts of fans.” He claims to have been in contact with Paramount and CBS before the project was started, but does not say how far he may have been allowed to go with a Star Trek fan film.
Discussions among filmmakers and Star Trek fans reveal the theory that the Axanar movie may have been “too good” and the competition was too much for Paramount and CBS, so they decided to shut it down. The braggadocio exhibited by Peters in criticizing how the owners of Star Trek have exploited the franchise in the past, and that his movie was going to be better, probably did not help his cause. But the very fact that the production was staffed with “industry professionals” as Peters admits in his published response, and that a commercial production studio was being built with the million dollars’ worth of funds donated to make the film, shows that this was a for-profit project. The profit component is the real linchpin to gauge how future fan films will be treated by rights holders.
Some were suspicious that Peters mysteriously kept delaying the start of production while encouraging people to make more donations to his crowdfunding sites for the film. He announced that he was building out a studio “for the production of Axanar,” but also said he wanted to use it to make other films in the future. This plan added to the feeling among fans that Axanar was using another’s copyrighted work for their own profit. The admissions by Peters, along with a financial report sent out to donors that was said to have numerous red flags indicating that he and his girlfriend may have drawn salaries from donated funds, was evidently the last straw for Paramount and CBS.
Whether Peters and Axanar Productions are shut down by a permanent injunction or they settle with Paramount and CBS to voluntarily cease production of this copyright infringing movie is still to be seen. One question has been posed in discussions among filmmakers – will Peters have to return the donations made through Kickstarter and Indiegogo? The project only got as far as a small prequel, “Prelude to Axanar”, so the fans donating cash did not really get what they were promised, a full length Star Trek film. There have been some concerns voiced recently about how stringently the crowdfunding sites monitor projects they accept for the unlicensed use of others copyrighted material, and whether they would take any responsibility to enforce any reimbursement by Peters and Axanar Productions.
The Axanar lawsuit should serve as a cautionary tale for all fan film makers, as it will most likely result in strongly stated and probably strict parameters being set by other rights holders for future tolerated use of their intellectual property. Peters, by going too far in making a film that was no longer a fan film but a low budget film with paid professionals competing with Star Trek works, crossed that line. He may have made it more difficult for fans to pay homage to their favorite movies with a lovingly crafted but still unauthorized work.

©2016 Mary Ellen Tomazic

Trademark and Other Modes of Protection for Titles of Movies and TV Shows

The global reach of the internet brings with it the opportunity for artists, authors, and filmmakers to find a wider distribution for their works. Unfortunately, this opens up the possibility of infringement or outright taking of the works by others for their own use without attribution or compensation for the owner. Piracy and misappropriation of works of authorship is rampant throughout the world, and many movies, recordings, and products under copyright or trademark protection in the United States can be found online on foreign websites. These are termed “rogue websites” by the Motion Picture Association of America, and “notorious foreign infringers” in the SOPA legislative language.
Creative people are always trying to find ways to protect their intellectual property, and often an important component of that includes protecting the titles of their works. A filmmaker may worry that the unique and compelling title he has thought up for his film will be taken and used by someone else before the film even comes out. Federal trademark registration is the best way to protect a movie title, giving notice to all that the title is owned by someone. Trademark registrations, or even applications for registration, show up on all trademark or title clearance reports, which are required for the producers to obtain Errors & Omissions insurance. Federal registration can serve as a powerful deterrent to would-be infringers of a movie title, as they must also clear their production to obtain their own insurance.
Unfortunately, although an internet domain name can be reserved for the title, and copyright protection can be obtained for the screenplay or completed film, trademark protection is not available for the title, as a single creative work. No matter how fanciful or creative the title of a movie is, it is not registrable on the Principal or even the Supplemental Register in the Patent and Trademark Office. Although the statutory sections do not mention titles specifically, they are excluded from registration under the Trademark Manual of Examining Procedure (TMEP), which describes what constitutes a single creative work. This is a longstanding rule, affirmed by several landmark court cases since the 1950s dealing with the title of a literary work , which denies registration of individual book titles as being merely descriptive of the book itself, not identifying its source, no matter how unrelated the title is to the book’s contents. The TMEP gives examples other than books of single creative works which must be denied trademark registration, such as sound recordings, DVDs, videocassettes, audio CDs and films. Trademarks must not only be words that are not descriptive of or even generic for the goods, but they must identify the source of the goods in commerce.
There is an exception in the trademark law for registration of the title of a series of books or other works such as movies, and the TMEP excludes titles of series as not constituting a single creative work, and therefore registrable marks. A book or film that significantly changes content in subsequent editions or presentations, not just format changes or new editions to make minor changes, will be not be considered a single creative work. Examples of works that are not treated by the Trademark Office as single creative works are live performances by musical bands, television and radio series, and educational seminars, because they are presumed to change with each presentation.
Special sections of the TMEP deal with the titles of radio and television programs, which state that the title of a continuing series of presentations may constitute a service mark for either entertainment services or educational services. The record must show that the title sought to be registered is more than the name of a single presentation, performance, or recording. Series titles have even been protected against unauthorized exploitation in different media, as in the National Lampoon, Inc. v. American Broadcasting Cos., Inc. case, where the National Lampoon, which published a magazine and had as radio series was able to enjoin the ABC network from using the words “National Lampoon” or even “lampoon” in a television series.
Since trademarks identify the source of goods, a movie title which has a planned sequel can be registered as a series, and evidence must be submitted that the title has been used on at least two different creative works. Use of the title on collateral goods such as posters, mugs, bags or t-shirts does not establish a series. Similarly, format changes such as the printed version of a book and the recorded version do not establish a series. Another section of the federal trademark law allows the registration of marks on an “intent-to-use” basis, which requires a “bona fide intention to use a mark in commerce under circumstances showing the good faith of such person.” This could allow a filmmaker to file his movie title as a planned series, which gives him more time to file specimens of actual use. During the pendency of the ITU application third parties would be deterred from using the title, though they cannot be enjoined from use until the registration is issued. The filmmaker’s bona fide intent to create a series of movies may include legitimate research into the market for such a series, the possibility of promotional activities to gauge consumer demand and financier interest. Even if the ITU application expires, it will still show up in clearance reports which will serve as notice to others of the ownership of the mark. The title of the first movie created may have already achieved secondary meaning under Section 43(a) of the Lanham Act, making it incontestable, unless it is challenged as generic.
With this information in mind, does a filmmaker who has the title of his movie but has not yet planned for a sequel have any chance of registering his title as a trademark? Several writers have suggested different ways that may work in circumventing the system, or advise using different legal approaches. The class of goods under which a movie title application is made could lead to registration success, if an aggressive approach is used by the filmmaker applicant. International Class 9, which includes “recording discs”, has been successfully used in the registration of several movie series, including the Harry Potter series, which lists the goods as “Digital versatile discs (DVDs) and for “motion picture films” in both Class 9 and Class 41, for “entertainment services.” That of course is a series and registrable, but there are several movie titles registered in Class 9 which have not had even one sequel, prequel or spinoff, which use the same description of DVDs of films. Reservoir Dogs used as its specimen a photo of a DVD box cover. The Blair Witch Project is also registered in Class 9, as is Judge Dredd, which is also lists use in Class 41. Since the Trademark Office does not require that the identification of goods reflects their series nature, and the applicant is not required to mention that its trademark may be barred under Section 2 of the Trademark Act by the single work title rule. This strategy of applying to register a single work title despite the rule is risky, but some leading trademark treatises approve such a challenge to the rule.
The Lanham Act provides in Section 43(a) for protection of some single work titles under federal unfair competition law, but this method, which requires that the registrant show the title as achieved secondary meaning, is difficult and expensive. Significant advertising expenditures, media coverage, consumer surveys, and other evidence must be shown to meet the burden of proof set by the Trademark Office. The appellate judge in the National Lampoon case noted that the trial judge justifiably found that ABC “had deliberately attempted to exploit National Lampoon’s well-known name and reputation in directing preparation of the pilot program”. The case included voluminous items of proof that the trademark “National Lampoon” had achieved secondary meaning, including the magazine’s history, contents, circulation, and sales figures, as well as information about the radio series and an off-Broadway play put on by the National Lampoon.
These kinds of expenditures are not usually in the budget of an independent filmmaker who may not have released his movie yet. State trademark laws in some cases may offer more protection, or a more difficult path for cancellation of the mark after it is registered. Ohio’s trademark registration scheme requires the filing of a civil action for unauthorized use or reproduction of a registered trademark or service mark. State registration also provides a deterrent to infringers when listed in a trademark and title report. However, the Ohio registration requirements mirror the federal rules, which exclude registration of “merely descriptive” marks. Many states rely on federal Lanham Act case law in the interpretation of their own trademark laws , and may impute the rule against single work title registration. One more difference in state trademark laws, including Ohio’s, is that they do not allow for intent to use registrations. The definitional section of Ohio’s law describes the `use’ requirement as “the bona fide use of a mark in the ordinary course of trade and not the making use of a mark merely to reserve a right in a mark.” State unfair competition laws are no better, as they also require that the title be strongly identified with the underlying work in the public’s mind, and that unauthorized use of the title in another work would confuse the consumers, the standard for a Lanham Act § 43 action, which forbids false designations of origin and false descriptions. Protection under California’s Unfair Competition Law is limited, and does not permit enjoining an infringing title, but requires a disclaimer. The Ohio laws on Deceptive Trade Practices, O.R.C. Chapter 4165, prohibit the “passing off” of goods and services as those of another, or causing the likelihood of confusion as to the source, sponsorship, approval or certification of goods or services, and use the same definitions of “trademark” and “service mark” as in the federal law.
Contract law is another method that a filmmaker may us to protect a movie title, but of course it would only apply to the parties to the agreement. To help alleviate some of the infringing activities involving the use of single film titles, the Motion Picture Association of America has established a private system of movie title registration. The Title Registration Bureau of the MPAA allows its members, which includes all the major film studios and independent producers who apply, to register their film titles. If a title is confusingly similar to another subscriber’s title and the subscriber objects, the dispute is referred to a MPAA arbitration panel, which holds a hearing and issues a decision resolving the dispute. The studios and producers who use this registration have agreed to be bound by the panel’s decision, but the general public is not bound by their agreement. Currently there are over 400 subscribers to the Bureau’s registry.
Some foreign countries, including Canada, allow trademark registration for single work titles. The Canadian Trade-Marks Guide lists among the things you cannot register as “clearly descriptive marks”, but has no prohibition against registration of single work titles as long as they are not “word[s] that describe an inherent feature of a product or service”. Canada’s Trade-Marks Act does not include any marking requirements, unlike those used by trademark owners in the United States (R – trademark, TM – registered trademark, SM – registered service mark.) Since many U.S. films are released in the unitary “domestic territory” of the United States and English-speaking Canada for marketing and contractual purposes, a registration in Canada will have the effect of blocking a third party from using a confusingly similar title in the United States as well as Canada, and the studio will probably want to market the film under the one title in the domestic territory.
The Lanham Act has two provisions that implement two major trademark treaties – the Paris Convention and the Madrid Protocol. These are designed mainly for the benefit of foreign registrants, nationals of or domiciled in a country that is a signatory to one of the treaties. There is an exception for U.S. entities that have a “real and effective industrial or commercial establishment” in the foreign country. The requirement for establishing your country of origin is a written statement by the applicant that it has “a bona fide and effective industrial or commercial establishment in the relevant country”. If evidence in the record indicates that the applicant does not have such a bona fide establishment in the country, the examining attorney will require that the applicant set for the specific circumstances and of such a claim, with relevant factors such as the presence of production facilities, business offices or personnel in that country. The sale of goods or services outside the United States will not, by itself, establish the country of origin. Although the registration rules for the Madrid Protocol and the Paris Convention, including the single work title prohibition, are supposedly the same as those in the United States, it seems the Trademark Office does not always enforce this rule for foreign trademark registration. One example of a single work title getting through the registration process is the musical Mamma Mia!, which is based on songs by the Swedish pop group Abba. This registration is in, among others, International Class 9 for “theatrical musical performances,” and under Class 41 for “entertainment services, namely production of musicals, theatrical production and motion picture films.” Another bonus for internationally registered marks is that unlike with United States registrations, a mark not entitled to be registered on the Principal Register can nonetheless be registered on the Supplemental Register, and once it is registered there, the registered trademark symbol ® can be used in connection with the mark, giving notice globally and a deterrent effect from the mark showing up in trademark and title searches.
Protection of your movie title against the numerous possible infringers in the U.S. and around the world on “rogue websites” and elsewhere is not an easy task, but the more notice you spread around, the less likely someone will want to steal and use it. It is worth a try to apply to register the mark using some of these techniques, as many will at least protect your title until you can decide if you want to make a sequel or series out of your original single film. A title registration can also be a companion to registrations made for your film’s logo’s use on promotional goods such as metal badges and pins (International Class 006), t-shirts (I.C. 25) or toy action figures (I.C. 28). Don’t forget to register your domain name with the title as well, since internet searches will pick it up and provide more notice to the online world that you own the title.

©2012 Mary Ellen Tomazic

Mary Ellen Tomazic to speak at Cleveland On the Rise CLE