Q: I’m in the process of wrapping up a movie. I just discovered that the title we’ve been using, and the title I love, was the title of a little known [major studio] film from back in the 70s. Can I still use the title?

A: Faithful readers, it’s so nice to be with you again. You may have noticed that the last few blogs from our Q&A team may have contained a few stale references. You may have asked yourself “why are these guys trying so hard to be pop culture relevant by bringing up A Prophettwo years after it was released?” Or “what’s up with the German broccoli references?” Or (for our more avid readers) “I’ve memorized every brilliant word written by these brilliant minds and I know I’ve seen this brilliant blog before!” Well, faithful readers, we were tired of watching all you independent documentarians and shoestring filmmakers line your fat pockets with millions based on our legal advice without seeing anything but pathetic adoration in return. We took a cue from our football and basketball brethren and decided a little work stoppage was in order. We’re transactional attorneys, dammit! If we can’t kill a good thing with overzealous unrealistic negotiating, we’re not doing our jobs! So we’ve been holding out… I’m happy to report we’re now banking 13 peanut M&M’s per blog (peanuts removed). (In reality, we were kinda just busy hanging out on the couch.)

In honor of an historic event like this (I love saying “an” before “historic”), I wanted to entitle this blog The Comeback – The Day the Screaming Stopped. But wouldn’t you know it, some jerk already took that title. Which so nicely brings us back to your question.

I believe it was Joe Eszterhas who once wrote “what’s in a name?” From a legal perspective, what’s usually in a name is a trademark. Trademark law allows a party to reserve a name for itself for use in connection with particular goods or services. If I own a company that uses the mark CINCO as a brand of toys, you can’t come around and use that same mark or any confusingly similar mark (like SINCO) for toys because not only would you be making money off of my hard work (by confusing consumers into buying your products thinking they were mine) but you’d be doing harm to the consumers themselves (who would be stuck not with my ingenious creations but with your inevitably crappy ones). In sum, when you get to issues of whether or not you can call something by a particular name, it’s usually trademark law that comes into play. (Note: you can’t “copyright” a title. Copyrights are meant to protect works of authorship like movies, artwork and books, not product names, short slogans or titles.)

“So is it that simple? I can’t use the title because someone else already has and thus must have trademark rights in the name?” Simple? Of course not. That would be even more boring than this already is. See, there’s a twist. Trademarks generally do not protect a singular title of one work. Therefore, the minds behind a A Gnome Named Gnorm may not have any clear trademark rights in that title. It’s a different story if we’re talking about the title of a series (such as a series of movies, books or TV shows). In other words, the geniuses behind A Gnome Named Gnorm may have acquired trademark rights in the title if they had just kept that gravy train rolling (and we may have been blessed with films such as A Gnome Named Gnorm II: Gnobody Move, Gnobody Get Hurt and A Gnome Name Gnorm III: Gno Means Gno).

“So is it that simple? I can use it because the studio doesn’t have trademark rights in its title?”Come on, now! I may be 0-4 in my office fantasy football league and drinking a lot more because of it and growing distant from my family and questioning God’s hatred of me, but I am still coherent enough to painfully draw out a blog answer. See, there’s another twist. There’s an exception to the NTRIASTR (No-Trademark-Rights-In-A-Singular-Title-Rule): if a title has acquired “secondary meaning,” the owner of the film may be able to prevent the use of that title by others even if it’s not the title of a series. Secondary meaning is another way of saying a lot of average people know that title and immediately associate it with a specific movie. If I say “Midnight Cowboy,” unless you’ve been stuck in front of the Disney Channel your whole life watching self-assured 13 year old millionaires plugged into factory created television shows, you’re probably going to think of MGM’s uplifting little tale about “a naive male prostitute and his sickly friend struggling to survive on the streets of New York City” (well done with the short summary, IMDB). If I tried to produce a movie called Midnight Cowboy, people are bound to be confused into thinking it’s related to the classic, even if it’s really just about that fateful night I ran into Francine Dancer outside of the Saddleback Ranch on the Sunset Strip. Even though MGM only produced one movie with the title Midnight Cowboy, because that title has secondary meaning, MGM could and probably would come after me.

“So wait, does that mean I can’t use the title? Dammit, just give me an answer you idiot!” Hey man, it’s not my fault the law rarely gives good black and white answers. The answer to your question is that it depends on whether that title of the studio film as secondary meaning. You say it’s “little known” and over 30 years old. That tells me that no one has probably ever heard of the film so you may be okay.

“So I’m okay? Awesome. Thanks for the help!” Hold on there! If you’ve learned any lesson from our blogs, it’s that the law doesn’t really matter much of the time (meaning I’ve wasted most of my adult life and shall continue to do so). If the studio wants to play hardball, it’s going to threaten to come after you by claiming its title has secondary meaning, even if it doesn’t. I’m sure you don’t want to pay me to defend you in a case that centers around something so nebulous. Plus, an E&O insurer may not cover claims based on a preexisting title it knew about. So you may not even have your insurer at your back. Is it worth the risk? Look, the studio may not care about an old movie that did nothing at the box office. But if it does care, or just feels like pushing you around because it’s bored, you’re going to have a problem on your hands.

One final thing to consider: apart from the law, you also have to consider issues arising due to the MPAA Title Registration Bureau. This offers a process under which MPAA members (the six major U.S. motion picture studios) and numerous other “subscribers” reserve titles and agree to not use other pre-registered titles in the registry. If you want to distribute your picture through a member/subscriber, you may run into issues if the studio reserved its old film’s title.

In short, you may be able to use the title but the potential headache that would come with using a preexisting title may not be worth the risk.

This blog was originally published as part of Legal Ease, Film Independent’s weekly column on legal matters pertaining to the entertainment industry. To see other LEGAL EASE columns please click here.

Legal Ease