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By David McAfee
May 1 — Intellectual property attorneys from Twentieth Century Fox Film Corp., Walt Disney Co. and other media companies and law firms gathered April 30 to discuss how to best protect and license film and television industry IP today and in the future.
Lynn Jordan of Kelly IP LLP, who spoke at the American Intellectual Property Law Association's spring meeting, said the first case to really address the balance between trademark rights and the First Amendment was Rogers v. Grimaldi, 875 F.3d 994, 10 U.S.P.Q.2d 1825 (2d Cir. 1989). The case was brought by actress, dancer and singer Ginger Rogers.
“There was a fictional film about a fictional singing and dancing duo in Italy and, in the film, they were called the ‘Fred and Ginger of Italy,’ ” Jordan told conference attendees. “The Second Circuit developed a balancing test in that case, which is a two part test: the first part looks at whether the title has any artistic relevance to the work … the second part of the test is to look at if there is anything about the use of that element that is explicitly misleading.”
Rogers concluded that the film was not false advertising of sponsorship or endorsement and the title was not a disguised advertisement for the sale of goods or services.
The Rogers standard created in that case was later applied to Lanham Act and trademark claims against works of artistic expression and fully adopted by the Ninth Circuit, according to Lynn.
Since 1989, a number of intellectual property cases have been determined using the Rogers test to decide if a creative work was infringing the rights of others. Lynn says the test is now law in the Second, Fifth, Sixth, Seventh, Ninth and Eleventh circuits.
“It's also been adopted by many other district courts,” Lynn said on April 30. “And really I'm not aware of any courts specifically rejecting Rogers.”
Bryce Coughlin of Fox Entertainment Group said when clearing titles for movies and television series the Rogers test does apply. There are some special considerations when it comes to films, however, including that single-title works can't yet receive trademark protection.
“That might be changing, actually. There was a recent unpublished decision that hinted that maybe you could acquire distinctiveness in a film title or a title of a single work,” Coughlin said at the Thursday morning session. “But to date that hasn't happened and it was an unpublished decision, so we'll have to see how that shakes out.”
Coughlin referenced Fox's “Avatar” as a single-title film that could potentially acquire distinctiveness over time. “Avatar,” which had a worldwide box-office gross of more than $2.7 billion, is the highest grossing film of all time.
A title of a single film is not typically granted trademark protection, but it is currently possible for a title of a film series to become a trademark.
Coughlin said Fox's animated “Ice Age” franchise—the original movie and three sequels—is “starting to become a trademark.”
Coughlin also said that TV series can become trademarks as well and that Rogers applies in those cases.
Coughlin also stressed the importance for executives and companies to focus on what's going on outside of the U.S. For him, he said, that's because much of the Rogers framework is rooted in the First Amendment.
“That doesn't really carry over outside of the U.S. Some countries don't recognize titles as trademarks no matter what,” Coughlin said. “You have to be familiar with your audience—where you think this film is going to be big. And you have to adjust titles in various markets for legal or cultural reasons.
Jeremy Kaufman, a vice president at Fox who handles copyright and rights of publicity issues, said trademark and copyright law tend to be predictable and favorable towards authors. But rights of publicity, he said, “tends to be unpredictable.”
“There are 50 different regimes guiding publicity law—one for each state,” Kaufman told the audience, adding that it is generally favorable to authors. “But the ground is shifting, he said, “driven by technology's ability to recreate people in ever-more-accurate ways”.
Kaufman said the world of publicity rights is changing in part because the filmmaking technology has advanced so much so that creators can “capture all the characteristics of an actor and put them into play virtually.”
“The Screen Actors Guild is very particular about this,” Kaufman said. “They fear that filmmakers will be able to use, basically, computer simulations of actors and have them perform without the consent of the actors. … This is here now.”
Kaufman offered “Furious 7”—which was completed after Paul Walker's untimely death—as an example of filmmakers using technology to recreate an actor's performance.
Tom Cruise also had himself digitally scanned so that movie creators could make better use of his movements, Kaufman said.
Switching from the artistic side to the business of movies, Schuyler M. Moore of Stroock & Stroock & Lavan LLP made a prediction about the future of film distribution.
Within the next two years, he said, a Chinese company will buy a U.S. studio and begin doing English language co-productions produced in China “at a fraction of the cost.”
“They're going to get through the Chinese quota system because they're co-productions. They're going to get 42 percent of the box office instead of 25 percent,” Moore said during a discussion panel on “Licensing Issues in the Film and Television Industry.”
“And they're going to be made for the worldwide audience—they're going to play throughout the world.”
Moore said that China “used to be a footnote to us,” but today it should be “at the front of our minds” every time a film is given a green light.
One reason China is ahead of the curve is that the country has eliminated its piracy problem, according to Moore.
“So much content is now free, ad-supported, so why would people commit piracy just to avoid ads?” Moore asked.
“I think that's where the market is going to go.”
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