Protection of Titles under Copyright Law and Trademark Law – Knud Wallberg

‘This article first appeared in World Trademark Review Yearbook: A global guide for practitioners 2021/2022, a supplement to World Trademark Review, published by Law Business Research – IP Division. To view the guide in full, please go to www.WorldTrademarkReview.com.’

“A title is designed to catch the eye and to promote the value of the underlying work” (Mattel Inc v MCA Records Inc, 296 F.3d 894 (9th Cir 2002)). In other words, titles of books, games, films and other literary and artistic works are important. The rights holder of a work therefore has a natural interest in being able to protect the work’s title, so that it is associated only with that work and not with the works of others.

On the other hand, titles or parts of titles may also have an independent commercial value. They can be used and registered as trademarks, which can then be used in contexts other than in direct connection with the original work, not least, for example, in merchandising (“Trademarks and their relation with literary and artistic works”, WIPO SCT 16/5, 2006, pages 8 and 20f).

This chapter deals with the protection of titles under copyright; and the protection of titles as trademarks.

Copyright protection of titles:

The Berne Convention

The purpose of the Berne Convention is to safeguard “the authors’ rights to their literary and artistic works”. Although the convention does not contain a more detailed definition of what is regarded as a ‘work’, the concept of ‘literary and artistic works’ is described in Article 2(1) as “every production in the literary, scientific and artistic domain, whatever may be the mode or form of its expression”. The provision contains a non-exhaustive exemplification of what such works may consist of, including books, writings and other works of the same kind, musical compositions and cinematographic works.

With such a broad definition, it cannot be excluded that a title – understood as the name of a book, film, game, television or streaming series, or another literary or artistic work – may also in itself be a protected work. The addition of Article 15 to the Berne Convention was proposed, but was not adopted at the Brussels Conference in 1948: “No title of a literary or artistic work may be utilised by third parties to designate another work in any country of the Union in which the first mentioned work has become so well-known under that title that the use of the title for the other work would give rise to confusion between the two works.” Some parties to the convention have nevertheless implemented specific provisions on the protection of titles, with texts similar to the proposal.

The detailed requirements that a work must meet in order to obtain copyright protection are not explicitly regulated by the convention. The convention implies that a work must be an intellectual creation (Article 2(5)), meaning that it must be man-made and have a certain originality or individuality (Jørgen Blomqvist, “Primer on International Copyright and Related Rights”, Edward Elgar 2014, page 82).

This is also recognised by the European Court of Justice (ECJ) in Case C-5/08 Infopaq. The ECJ had the opportunity to interpret the Berne Convention and stated (paragraph 34): “It is, moreover, apparent from the general scheme of the Berne Convention, in particular Article 2(5) and (8), that the protection of certain subject-matters as artistic or literary works presupposes that they are intellectual creations.” A requirement which, in paragraph 37, is expressed as the “originality” requirement.

Originality requirement in EU copyright

The requirement that, to enjoy copyright protection, a work must be original (in the sense that it must be the result of the author’s own intellectual creation), follows directly from three of the copyright directives:

• Article 3(1) of the Database Directive (EU Directive 96/9);
• Article 1(3) of the Computer Programs Directive (EU Directive 2009/24); and
• Article 6 of the Copyright Duration Directive (EU Directive 2006/116).

However, on the basis of Infopaq, it is assumed that the originality requirement is ‘horizontal’ and that the requirement therefore applies to all copyright-relevant works. The question is therefore whether titles, in principle, can meet the originality requirement. The ECJ has not yet had the opportunity to rule on precisely this issue; however, its ruling in Infopaq provides a clear indication that such protection is possible.

Infopaq reproduced a sequence of 11 words from other publications and, in different ways, sent these summaries to their customers based on, and targeting, the individual customer’s specific area of interest. The ECJ answered the relevant questions: “An act occurring during a data capture process, which consists of storing an extract of a protected work comprising 11 words and printing out that extract, is such as to come within the concept of reproduction in part within the meaning of Article 2 of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society, if the elements thus reproduced are the expression of the intellectual creation of their author; it is for the national court to make this determination.”

In other words, the verbatim reproduction of 11 words from copyrighted work may constitute a copyright infringement if these 11 words per se meet the originality requirement.

In paragraphs 44 to 46, the ECJ sets up a number of criteria to establish when such ‘elements’ meet the originality requirement – paragraph 45 is the most relevant: “Regarding the elements of such works covered by the protection, it should be observed that they consist of words which, considered in isolation, are not as such an intellectual creation of the author who employs them. It is only through the choice, sequence and combination of those words that the author may express his creativity in an original manner and achieve a result which is an intellectual creation.”

Since a title is a part of an otherwise copyrighted work, there can be no doubt that if the 11 words that were reproduced formed the title, or were part of the title, of a copyrighted work (eg, the title of an article in a newspaper or magazine), that title would be protected, provided that the originality requirement was met. Reference is also made to Newspaper Licensing Agency v Meltwater ([2010] EWHC 3099 (Ch) and [2011] EWCA Civ 890 (CA)), in which the court stated that headlines: “involve considerable skill in devising and they are specifically designed to entice by informing the reader of the content of the article in an entertaining manner. In my opinion headlines are capable of being literary works, whether independently or as part of the articles to which they relate.”

A title, therefore, enjoys copyright protection if it meets the originality requirement. However, it is not always easy to assess specific cases and, in practice, there is considerable uncertainty in connection with the clearing of titles of upcoming films, streaming series and games, among others.

Titles are often, by their nature, short texts, as well as being descriptive. If a title is made of several words, and all the words in the title are common, it must be assessed whether the ECJ’s requirements established in Infopaq, pursuant to which “the choice, sequence and combination of those words… achieve a result which is an intellectual creation”, are met (the Danish Supreme Court confirmed in its decision published under U 2013.1782 H, that a sequence of 11 words can meet the originality requirement).

Although the number of words is not mentioned as an explicit factor, it is natural to consider this aspect in the assessment. However, long titles are unusual, and are rarely interesting for others to use or misuse, so the issue regarding shorter titles is more interesting to address.

If a title of more than one word contains not only ordinary words but also fanciful words, typically the invented name of the main character (eg, Harry Potter and the Chamber of Secrets), but it can also be a trademark (eg, The Devil Wears Prada), it must be presumed that, due to the presence of such fanciful word, the title must be regarded as an original work. The question is whether a title consisting of a single word can meet the originality requirement. This can hardly be excluded if the word in question has the character of a fanciful word such as ‘Supercalifragilisticexpialidocious’ (Life Music Inc v Wonderland Music Company, 241 F Supp 653 (SDNY 1965), the court seems to recognise the possibility that the title of the plaintiff’s song could in principle be protected by copyright).

Titles and trademarks

It often happens that a title of a copyrighted work goes from being ‘just’ a title of a work to functioning as a designation of commercial origin (ie, a trademark). The registration of titles as trademarks must be treated according to the general principles of trademark law. There are no specific rules for the protection of titles as trademarks in trademark law according to the Paris Convention, the EU Trademark Regulation or the Trademark Directive.

One of the fundamental requirements for a sign to be protected as a trademark is that it must have distinctive character, meaning that the sign must be capable of “distinguishing the goods or services of one undertaking from those of other undertakings” (Article 3(a) of the Trademark Directive).

The distinctiveness requirement implies that a title must be both distinctive and non-descriptive.

Many titles are merely descriptive of the work’s content (eg, ‘Birds of Europe’ or ‘Norse Gods and Giants’) and such titles cannot therefore be protected as word marks for goods and services related to publishing and other forms of exploitation of the work (ie, certain goods and services in Classes 9, 16 and 41).

A particular variation of this issue is a situation where the titles of existing works, which are not directly descriptive of the content of the work, are applied for as trademarks (eg, The Jungle Book by Rudyard Kipling, The Nightingale by Hans Christian Andersen and Animal Farm by George Orwell). The EUIPO has refused registration of The Jungle Book for goods and services in Classes 9, 16 and 41, since the title is not distinctive “when the sign applied for is purely understood as a reference to the author’s work or type of story without any additional element which could impart distinctive character to the sign indicating the business origin” (18 March 2015, R 118/2014-1, paragraph 24). Along the same lines, the Danish Patents and Trademarks Office has refused to register a number of trademarks consisting of the titles of fairy tales by Hans Christian Andersen for similar goods and services.

A graphic design of a self-descriptive title can be registered as a figurative mark if the figurative element is distinctive. The logo will achieve protection, thereby rendering possible its use as trademark by the owner or by its licensing to others.

If the title is inherently distinctive, it can be registered both as a word mark and as a logo. Often it is the logo that is used in connection with merchandising, as in the case of the STAR WARS and HARRY POTTER logos. The titles of all the Harry Potter books are registered as EU trademarks, and that the same applies to the titles of a large number, if not all, of the electronic games based on the Star Wars universe.

A trademark consisting of a single word or two words can undoubtedly be distinctive. This means that it is possible to register both short titles such as Die Hard and The Godfather, as well as parts of titles used; for example, to register the names of the characters that appear in the titles (and in the works themselves), such as ‘Asterix’, ‘Indiana Jones’, ‘James Bond’ and ‘Pippi Longstocking’. Precisely this possibility is important, as the legal protection of names of figures, or ‘characters’, appearing in copyrighted works is otherwise questionable (Jan Klink, Titles in Europe: Trade Names, Copyright Works or Title Marks? EIPR 2004, page 290). In addition, these names are often also registered as figurative marks.

In most cases, titles and names of characters are registered in:

• Class 9, which encompasses recorded films, music recordings and computer games;
• Class 16, which encompasses books and comics;
• Class 28, which includes all kinds of toys; and
• Class 41, which encompasses entertainment services, including film production and online games;
• Class 25, which encompasses clothing;
• Class 3, which covers perfumes; and
• Class 14, which includes jewellery and watches, are often added.

Unresolved issues

In its latest decisions concerning trademarks consisting of the titles of fairy tales by Hans Christian Andersen, the Danish Patents and Trademarks Office was called to consider whether the principles stated by the Court of Justice of the European Free Trade Association States in Vigeland (Case E-5/16, 6 April 2017) can be applied to such cases. In Vigeland, the court interpreted Article 3(1)(f) of EU Directive 2008/95, in force at that time, which provides for the possibility of rejecting applications for trademarks that “are contrary to public policy”. The court established that works for which the copyright has expired do not fall automatically under this prohibition, and therefore, in principle, can be registrable as trademarks (paragraph 88), but registration of a sign may be refused “if the sign consists exclusively of a work pertaining to the public domain and if registration of this sign would constitute a genuine and sufficiently serious threat to a fundamental interest of society” (paragraph 102). The Danish Patents and Trademarks Office has discussed the matter with the Danish Ministry of Culture but has not yet reached a conclusion.

The Fifth Board of Appeal of the EUIPO has referred the case concerning the application for registration of the title of George Orwell’s book Animal Farm to the Grand Board. The Board of Appeal pointed out that the EUIPO and the Board of Appeal have issued diverging decisions with respect to the registrability of titles of books and names of well-known characters of artistic works, and that it is therefore up to the Grand Board “to assess whether the title of a famous and well-known book – as such – will merely be perceived as an indicator of the content or subject matter of books, films, games or entertainment services in Classes 9, 16, 28 or 41, thus being descriptive and devoid of distinctive character pursuant to Article 7(1) (b) and (c) EUTMR [EU Trademark Regulation] or to the contrary there must be present additional factors in order to reach the aforesaid conclusion”.

The issue of the protection of titles as trademarks is not a settled matter.