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SPECIAL TO THE NATIONAL LAW JOURNAL “The purchaser of a book, like the purchaser of a can of peas, has a right not to be misled as to the source of the product.” So wrote the 2d U.S. Circuit Court of Appeals in 1989. Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989). However, such is currently not always the case. A book publisher or motion picture producer is currently unable to obtain a trademark registration for the title of a book or motion picture, absent a showing of established secondary meaning, even if it meets all of the other requirements for registration and the title is functioning as a trademark, that is, the designation of the source of the good. Therefore, while “Tide” may be registered, The Prince of Tides may not. This situation is due to what is often referred to as the single-title rule, a doctrine promulgated by the U.S. Patent and Trademark Office (PTO) and enforced by the courts, which forbids the registration of single-title motion pictures and book titles. “Single title” in this context means those books and motion pictures that are not part of a series, such as the Harry Potter series of novels or the Rocky series of motion pictures. The PTO’s stated policy is not to allow the titles of “single creative works”-most notably, books and motion pictures-to be registered as trademarks on either the Principal Register or the Supplemental Register. Trademark Manual of Examining Procedure � 1202.08 (3d ed. June 2002). A book or motion picture title may only be registered as a trademark if it is the title of a series of books or films or if the owner of the title demonstrates use of the title sufficient to create an association in the minds of the public between the title and the owner’s goods, i.e., that the mark has gained secondary meaning. There is no other class of goods for which it is necessary to prove secondary meaning or have an entire series of the goods before one is able to obtain a federal registration for a trademark affixed to such goods. Court decisions as old as one from 1921 ( International Film Serv. Co. v. Associated Producers Inc., 273 F. 585 (D.N.Y. 1921)) and as recent as one from September 2002 have upheld these guidelines, including a decision by the Court of Customs and Patent Appeals in a seminal opinion from 1958. In re Cooper, 254 F.2d 611, cert. denied, 358 U.S. 840 (1958). In Cooper, the court agreed with the PTO’s refusal to register Teeny-Big as a trademark for a children’s book. The court held that the title of the book was not functioning as a trademark-i.e., it did not identify the source of the product, but merely described the particular book at issue. As the court explained: “The purchaser of a book is not asking for a ‘kind’ or ‘make’ of book. He is pointing out which one of millions of distinct titles he wants, designating the book by its name. ” Id. at 614-15. The ‘Herbko’ decision Just last year, the Federal Circuit confirmed that the court’s reasoning in Cooper is still the law, noting that “regardless of the actual relation of the title to the book, this court’s precedent has treated all single works, such as single book titles, as ‘inherently descriptive’ at best and ‘inherently generic’ at worst.” Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 1164 (Fed. Cir. 2002). In Herbko, the Federal Circuit reversed a decision by the trademark board that had cancelled the trademark “Crossword Companion” registered to Herbko for crossword puzzle systems based on prior use of the same mark by Kappa Books as a book title. In doing so, the court confirmed that “the title of a single book cannot serve as a source identifier.” Id. at 1162. To establish priority, the court said, Kappa Books would have to show that its use of the mark created an association in the minds of consumers between the mark and its products. The underlying assumption in Cooper is that consumers always seek a specific book or film, and thus that specific book or film is a distinct product class unto itself. As a result, the public does not associate the particular book or film with its source. In re Cooper, 254 F.2d at 613. But one could argue that a consumer visiting a bookstore is just as likely to ask to see a category of books-such as mysteries, biographies or romances-as he or she is to ask for a specific title. Similarly, a consumer entering a video store or perusing the entertainment section of the paper will often search for types of movies-comedies, action/adventure, new releases, etc.-rather than search for a particular film or video. Consequently, one could make the argument that there is no more basis for categorizing a particular film or book as a class unto itself than there is for categorizing Tide as a class of detergents unto itself. The title of the book or film thus serves an important function in that it allows a consumer to identify a specific product within a class of goods. For instance, once the consumer finds the drama section at the local video store, the titles of the films in this section will enable him to find The Prince of Tides, the movie he loved so much when he first watched it at the local cinema. In short, the title could be said to act as a trademark. Further, even if, as the Cooper court held, consumers always seek to rent or buy a particular film or book, an argument can be made that the consumer should be protected so that he or she does not buy or rent the wrong film or book. A consumer looking for a specific film title for example, has in mind one particular film, i.e., one made by a particular studio even if the consumer does not know the name of the particular studio that produced that film. Thus, just as the average consumer looking for his favorite laundry detergent wants Tide, which is made by Procter & Gamble, even though he may not know that Procter & Gamble makes Tide, the consumer, when looking to buy or rent the motion picture The Prince of Tides wants The Prince of Tides released by Sony, even though he may not know Sony released the film. If multiple films were named The Prince of Tides, and the consumer asked for a film by this title, he could very well end up purchasing or renting the wrong film. In this way, the title of a single motion picture functions as the detergent brand name, that is, to protect the consumer and ensure that each different product bearing the same trademark will be of the same level of quality. Just as the consumer is assured that every time he buys a box of Tide, the quality of the detergent will be the same, the argument could be made that the purchaser/ renter of videos/DVDs and books should be afforded the same level of assurance. Alternative means One argument consistently made by opponents of single-title trademarks is that there are other ways of preventing potential confusion and avoiding duplication of titles. However, proponents of such trademarks argue that these alternatives fail to provide adequate protection for book publishers and motion picture producers. The seven major motion picture studios-MGM, Paramount, Warner Bros., Universal, Sony, Fox and Disney-are all members of the Motion Picture Association of America. As members of this association, these companies are required to subscribe to the Title Registration Bureau (TRB). The TRB regulates the use of titles for motion pictures released theatrically in the United States. Without going into the complexities of the rules and regulations of the TRB, simply put, each subscriber company must receive permission from the TRB before a title can be used for a motion picture released theatrically in the United States. Along with the major motion picture studios, 362 other theatrical motion picture distributors also subscribe to the TRB. Thus, the majority of the motion picture product that is released theatrically in the United States is governed by the rules of the TRB. While this system may seem to obviate the need for the granting of trademark registration for a single-title motion picture, as it would seem that this system would prevent the use of similar or identical motion picture titles, it does not do so for the following reasons. First, while the TRB regulates the titles used for motion pictures released theatrically in the United States, it does not regulate titles for motion pictures released “straight-to-video,” that is, those motion pictures that are never released theatrically but rather show up for the first time at the local Blockbuster or Target. The percentage of straight-to-video titles available for sale or rental is ever increasing. Therefore, it is quite possible that the consumer shopping for a particular motion picture could happen upon several films with the same title sitting side by side on the shelf of the video store or retail establishment. Second, while most theatrical motion picture retailers are subscribers to the TRB, many are not, including those companies that only distribute straight-to-video titles. The TRB does not regulate the movies released by these entities. Finally, there are often times when a motion picture is released theatrically with one title, and then released on home video with a different title. For example, the film Mad Dog Time became Trigger Happy for the home video release. While the studio/distributor that releases the movie with a different title on home video may have been bound by the TRB rules and regulations for the theatrical release of the film, it is not so bound with regard to the home video release of the film. Unfair competition law The law of unfair competition allows single titles to achieve trademark protection when there is a showing of secondary meaning. A title gains secondary meaning when consumers recognize a title as being associated with the thing it describes-here, the particular book or film. Lutz v. De Laurentis, 211 Cal. App. 3d 1317, (1984); Sugar Busters LLC v. Brennan, 177 F.3d 258, 259 (5th Cir. 1999). Motion picture studios and book publishers have successfully used this law to protect single titles of films and books from unfair copying. In Allied Artists Pictures Corp. v. Friedman, 68 Cal. App. 3d 127 (1977), the owner of the rights in the French film O that was based on the well-known novel Histoire d’O, was able to enjoin a company from using the title The Journey of O for its film. And in Metro-Goldwyn-Mayer Inc. v. Lee, 212 Cal. App. 2d 23 (1963), the plaintiff MGM obtained an injunction against the use of the advertising slogan that read “A Wonderful World of the Grimm Brothers is depicted in ‘Grimm Brothers Grimms Fairy Tales’ ” because the court found that it was likely to lead to confusion with MGM’s film title The Wonder World of the Brothers Grimm, which had acquired the necessary secondary meaning among consumers. The need to resort to the law of unfair competition, however, offers motion picture and book owners an unequal substitute for the full trademark rights accorded to others. Why should Sony be forced to prove secondary meaning and consumer recognition in the title The Prince of Tides, the argument goes, when no such burden is placed on Procter & Gamble, the maker of Tide? After all, establishing that the public associates a title with a particular film or book can be a difficult and expensive undertaking, often requiring costly consumer surveys or other such proof. A practical difficulty in allowing trademark registration for single-work titles lies in its potential conflict with copyright law. Unlike trademarks, which may be renewed indefinitely, copyrights exist only for a statutory term. 17 U.S.C. 302-304. As a result, if trademark rights were afforded to single-book and single-film titles, an anomalous situation would result where the underlying literary work would fall into the public domain at expiration of the copyright, while trademark rights in the title would remain with the original owner unless and until abandoned or transferred. A person would be free to reprint the work, but would be unable to use the original title. Commentators have suggested, however, that this problem could be remedied by noting on the face of the trademark registration for the single work title a duration limitation that corresponds to the expiration of the copyright. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition � 10:12 (4th ed. 2002). In the trademark title fight, Tide wins hands down over The Prince of Tides because the single-title rule places The Prince of Tides into an inherently weaker position with regard to those rights afforded it under trademark law. At a minimum, it would be helpful if courts and the PTO provided a consistent and justifiable basis for treating film and book titles differently from other trademarks, and did not continue to apply mechanically this principle to the detriment of one class of distributors of goods. William A. Molinski is a partner in the Los Angeles office of Orrick, Herrington & Sutcliffe and represents clients in intellectual property litigation, including trademark, copyright and trade secret matters. Michael B. Moore heads the intellectual property legal group of Metro-Goldwyn-Mayer Studios Inc.

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