When it comes to intellectual property, filmmakers tend to overlook the importance of trade marks and focus all of their attention on the marginally sexier world of copyright. This is understandable but could prove costly, particularly given the evolving nature of the film industry with respect to ancillary revenue opportunities. What follows, therefore, is a brief overview regarding the basics of trade marks law and its value to the film industry's brand management efforts.
| "A trade mark is a sign which distinguishes the goods and/or services of one trader from those of another." |
First off, what is a trade mark? In layman's terms, a trade mark is a "sign" which distinguishes the goods and/or services of one trader from those of another. This sign can take the form of words, logos, pictures, letters, designs, numerals and even smells and sounds (for example, the "Intel Inside" jingle), either by themselves or working in tandem. It's crucial to point out right away that trade marks can be either registered or unregistered and that not all "signs" are capable of trade mark registration. In order to be capable of registration the sign must:
- Be distinctive;
- Not be deceptive;
- Not only serve to designate the kind, quality, intended purpose or geographical origin of the goods/services;
- Not be identical or confusingly similar to any earlier mark(s) related to the same or similar goods/services.
A trade mark is easily distinguished from a copyright by the element of registration; the full legal effect of copyright arises automatically upon the creation of the relevant "work" (i.e., script, sound recording, film, etc.). Copyright also has a limited duration. Registered trade marks, on the other hand, do not arise automatically and must always be registered at the relevant Patent/Trade Mark office. Once registered, the right can last forever (assuming it is properly renewed). However, this does not mean that unregistered trade marks are completely devoid of value. A reputation that attaches to the name of a business or product, built up over time, is a valuable thing in and of itself. What's more, no one has the right to confuse the public into thinking that his goods are the goods of another (or vice versa), whether a trade mark is registered or not. The important thing to know is that absent registration, the damage to a company's goodwill and reputation that occurs by way of such confusion may only be remedied via the law of "passing off." This can be a difficult cause of action to bring and maintain.
For this reason it is almost always preferable to register trade marks (across one or more "classes" of goods and/or services) with respect to any long-term, film-related branding objectives. This obviously includes registering a trade mark for your production company name, especially if you have the ambition to be a powerful, recognisable brand. Another relevant illustration exists vis-Ã -vis film names: there would be little point in registering the name of a film as a trade mark if in all likelihood the film will go straight to video, or will enjoy only a small period of cinema exploitation before banishment to the back catalogue. Such a product has little to gain from being registered as a trade mark (it should also be borne in mind that the registration process can often take up to 12 months). However, if you have a reasonable expectation of long-term exploitation, a sequel or merchandising opportunities then registering a trade mark of the film title could be well worth it. Depending upon the circumstances, trade marks could also be secured for the names of certain characters and story elements (i.e.,"Harry Potter" as well as "Quidditch," both registered trade marks belonging to Time Warner, as are the names of current and potential Harry Potter books and films).
| "If you have a reasonable expectation of long-term exploitation, a sequel or merchandising opportunities then registering a trade mark of the film title could be well worth it." |
The merchandising royalties that can be garnered by registering trade mark rights (with respect to numerous classes of goods and/or services) and then licensing out such rights are enormous, as one can only dream about in the case of the Harry Potter dynamo. Some of the classes of registration relevant to the film industry are:
- Class 9 – cinematographic apparatus and instruments, apparatus for recording and reproduction of sounds and images
- Class 16 – paper and cardboard
- Class 21 – figurines
- Class 25 – clothing
- Class 28 – toys
- Class 38 – telecommunication, e.g., distribution of online audio/visual works
- Class 41 – entertainment services
- Class 42 – software and interactive services
So let's say that you have a registered trade mark. When is it infringed? Infringement occurs when someone:
- Uses an identical mark in relation to identical goods/services;
- Uses an identical mark in relation to similar goods/services and there is a likelihood of consumer confusion;
- Uses a similar mark in relation to identical goods/services and there is a likelihood of consumer confusion; or
- Uses an identical mark in relation to dissimilar goods/services and this use takes unfair advantage of the reputation of your registered mark.
This has been only a brief description of trade marks law and its relevance to the film industry; there are many more layers to explore. If you are interested in obtaining registered trade mark protection, your first step should be to go ahead and start attaching the ™ symbol to all depictions of the relevant name, logo, title etc., which will serve to indicate that you are claiming unregistered trade mark rights (never attach the ® symbol prior to registration as that is a criminal offence). Your second step should be to speak with a specialist IP lawyer and/or trade marks agent to discuss the registration process.
If you're not interested in obtaining registered trade mark protection, keep in mind that you should still attach the ™ symbol to indicate your unregistered right in the mark. And remember that you always have a "passing off " action to fall back upon if another trader begins to appropriate your name or reputation. In order to prove "passing off " you'll have to establish that:
- You trade in the goods/services to which a particular mark applies and the public associates this mark with the goods/services you provide;
- You have a reputation and goodwill in those goods/services;
- There is a likelihood of deception and misrepresentation (whether or not intentional) such that it is likely that the public will believe that someone else's goods/services are in fact your goods/services (or vice versa); and
- You have suffered, or are likely to suffer, actual damage to your goodwill and/or reputation as a result of the other party passing off with respect to your mark.
And finally, keep in mind that others have registered and unregistered trade marks as well as related rights in their business reputations and goodwill. Always take proper precautions to guard against infringing upon those rights. If you are ever in doubt about the potential consequences of a contemplated course of action, consult an IP lawyer.