Do Trademarks Protect Movie Titles and Characters?

Movie titles and fictional characters in most countries can typically be protected by copyright if they are original works of authorship. They can also be protected by trademarks, however, trademark protection isn’t automatic or guaranteed and in practice it can be difficult to secure or enforce. Despite the existing challenges the number of registered trademarks associated with the film industry is substantial. For example, Disney owns over 27,000 trademarks and HBO owns about 3,000, including film titles and pictures or character names.

Why copyright protection alone may not be sufficient

1. Copyright protection is time-limited to ensure that works eventually enter the public domain, allowing everyone to use them for free. Typically, copyright lasts for the life of the author plus 50 to 70 years after the author’s death, depending on the country. Registered trademark rights on the other hand most commonly last for 10 years and can be renewed perpetually.

   
   

2. In most countries besides the US, there is no formal registration for copyright, meaning there is often no public record of ownership. This makes copyright more difficult to protect compared to trademarks that benefit from registration certificates.

   
   

3. Trademark protection is often better suited for safeguarding movie titles and characters when they are used on merchandise. That is because copyright protection generally prohibits others from reproducing, distributing, performing and publishing works without copyright holder’s permission. Trademarks, in turn, generally prohibit others from using identical or similar signs in relation to identical or similar goods or services.

   
   

4. Copyright protection is also subject to exceptions like parody, which isn’t applicable to trademark infringements, making the trademark protection harder to circumvent.

Key considerations for trademark protection

There are several aspects that need to be taken into account when considering trademarking movie titles and characters.

1. Trademark registration may be refused

   In order to be registered a trademark must not be descriptive of the goods or services it is applied for. Crucially, it must be also distinctive, meaning that consumers should perceive it as a brand or a sign that identifies the commercial origin of a product.

   
   

   For example, in 2014, in case R0118/2014-1, the EUIPO rejected “THE JUNGLE BOOK” trademark application because it didn’t consider the sign to be distinctive enough. The EUIPO noted that “THE JUNGLE BOOK” is best known as the title of Rudyard Kipling’s collection of stories and numerous adaptations and that the consumers would associate it with the story and wouldn’t identify it as trademark for goods or services. Similarly, in 2015, “PINOCCHIO” sign was found to be non-distinctive by the EUIPO in case R1856/2013-2 for a number of goods and services including films, toys and entertainment services.

   
   

2. Trademarks must be actually used as trademarks

   Character names and film titles must be genuinely used as trademarks in commerce to qualify for or maintain protection. It is generally not sufficient just to use them descriptively or as an artistic reference.

   
   

   In 2019, in case R1505/2019-1, the EUIPO invalidated the “MONEYPENNY” trademark because it didn’t consider that there was an actual presence of the “MONEYPENNY” branded goods or services on the market so that the mark could exercise its essential function, which is to identify the commercial origin of the goods or services. The evidence of use submitted by the owner of “MONEYPENNY” mark, wasn’t found to be sufficient, because, among other things, it referred to the use of the name in movies, which doesn’t constitute trademark use.

   
   

   Nevertheless widespread and consistent use of a sign in the course of trade over a period of time can give rise to robust trademark rights. “GAME OF THRONES” succeeded because extensive use made it identify the producers and their services. This shows that if a title or character name is repeatedly placed on products, advertising or merchandise in a way that communicates the source of origin of goods or services, you can build robust trademark rights.

   
   

3. Seek trademark registration as early as possible

   To obtain exclusive rights to a trademark it must be registered. Ideally, this should be accomplished prior to the character or film becoming famous otherwise it is easy for the title or character to become disassociated with the source of origin behind the goods and services that the trademark seeks to protect.

Conclusion

Trademark protection for movie titles and characters isn’t always straightforward, but when they’re used commercially as a brand (indication of source of origin), effective protection is often possible. Careful planning and actual business use would be essential for securing lasting rights.