A careful choice of an original title for a film is often a recipe for success. A catchy title will attract viewers but also increasingly often carries a huge merchandising potential, especially in the case of films for children and young audience. Revenues from merchandising licenses, e.g. for clothes and toys, provide the best proof that securing legal protection for a film title is definitely worth the investment.

But how do you do that? Reliance on copyrights will in most cases be insufficient. Much as a film is considered a piece of creative work subject to copyright protection, its title alone is not necessarily so. The motion picture industry knows many very short titles, sometimes containing just one word, which are not always original enough to become copyrightable works in themselves (e.g. Chłopi or The Pianist). On the other hand, the creativity behind other titles can sometimes prompt us to regard them as works separate from the films themselves. This could be true for such titles as The Silence of the Lambs or The Green Mile, although it is equally true that their status under copyright law can be open to debate.

The best way to protect your film title is to register it as a trade mark. To do so in Poland, you need to file an application with the Patent Office. But it is advisable to first search the trade marks register (provided free of charge on-line by the Polish Patent Office and the European Union Intellectual Property Office) for any similar or identical trade marks that have been registered earlier and are protected in Poland. Although the Patent Office’s decision takes some time, the trade mark is protected from the filing date (on condition of course that it is successfully registered). When planning to register your trade mark, remember that registration rights are territorial so if you file with the Polish Patent Office, the mark will be protected only in Poland. Thus, in the case of a wider trade mark strategy, it is desirable to consider filing your title also in other countries. The ideal solution is to use the Union trade mark system where a single registration offers protection in all the Member States.

How a film title can be profitably commercialised is well illustrated by Star Wars. The title was registered as a trade mark with the Polish Patent Office both in original and in the Polish version Gwiezdne Wojny for a wide range of products. Anyone wishing to use the mark on a hat, pen or even a Christmas tree ornament will need to ask the exclusive rightholder, LUCASFILM ENTERTAINMENT COMPANY LTD. LLC, for a license for which they will have to pay a fee. The title is similarly protected in a host of other countries.

Among Polish film titles registered as trade marks in Poland are iconic Polish comedies such as Kiler [1] and Seksmisja. Note that titles of series are also protectable (in Poland, registration has been obtained for such titles as Alternatywy 4, Czterej pancerni i pies [2], Na dobre i na złe etc.) as are titles of children’s stories (e.g. Smerfy and Kubuś Puchatek). There are a number of titles currently awaiting registration in Poland, including Ucho prezesa and Chłopaki nie płaczą. Interestingly, filmmakers seek legal protection not only for the titles but also for the characters and heroes. Examples of such trade marks include Rodzinka Boskich (the family that is the collective protagonist of the Rodzinka.pl series) and Star Wars characters Obi-Wan Kenobi and Anakin Skywalker.

But can trade mark registration be obtained for just any film title? Well, first of all, producers must understand that the primary requirement of such registration is for the title to be capable of graphical representation and to have what is called distinctive character, i.e. to be sufficiently characteristic and non-trivial so as not to confuse viewers about its origin. Generally, film titles can be divided into those which, owing to their uniqueness and originality, have a strong distinctive force (e.g. Pulp Fiction or Edward The Scissorhand) and those which are less distinctive due to their being commonplace or descriptive (e.g. Pokój (The Room) or Katedra (The Cathedral)). However, the latter cannot be denied registration as trade marks if, despite being prima facie non-distinctive, they have acquired distinctiveness as a result of use, which means the films have become popular and attracted interest after launch. A point to note when creating a film title: the more recognisable the title is, the easier it is to prove that it is registrable. But registration may be problematic if the title contains words considered vulgar or offensive. For example, the German title Fack ju Göhte was denied registration by EUIPO on ground that it is in breach of accepted principles of morality. The matter reached the European Union Court, which ultimately decided that the words fack ju are so vulgar that they cannot be protected.

The owner of a registered trade mark may forbid others to use it in any unauthorised manner. This remedy was sought, for example, by Warner Brothers Entertainment, the owner of the Hobbit trade mark, when it applied for interim relief against the distributor of the film entitled Age of the Hobbits. The court held that the title created a risk of confusion among viewers and prohibited any further screening of the film.

Registering a film title as a trade mark is undoubtedly a worthwhile effort. The more characteristic the title is, the more chances it has of being registered. Remember also that the filing should cover as broad a range of goods and services as possible. The success stories of registered titles prove that protecting a film title as a trade mark simply pays off.

 

[1] The registration of the Kiler word and figurative trade mark expired in 2008.

[2] The registration of the Czterej pancerni i pies word and figurative trade mark expired in 2009, but the word-figurative-sound mark Czterej pancerni i pies Deszcze niespokojne continues to be protected.