Discuss the extent to wich the application of Intellectual Property Law within the entertainment business achieves an appropriate balance between the interests of the creators, owners and users of entertainment products

Introduction “It is the task of the law to secure the peaceful living together and to harmonize the different activities of the members of society. In a word: the law offers the basis of social order, which can be achieved only by a just balance of the different interests.” [1] This article focuses on film industry. To simplify the analysis I presume that a film creator is a writer, author of a book, underlying literary work on which the film is based; the owner is the producer, who acquired the right to adapt the novel and make a film; the user is the public. I try to point out the protection accorded by copyright law, trademarks and the law of passing off with regard to words – titles, phrases, names – in books and film. Then I am going to verify the balance of the interests granted by Intellectual Property Law (IP). The Crucial Issue: Guarantee of a Just Balance of Interests in using phrases or words (or better said “Sauce for the Owner Goose Should be Sauce for the User Gander Too.” [2]) Books and films are formed by a story differently made and told – by images and sound in film – but still recognizable from its title, characters and names. It is undoubtedly that most of them became popular because of certain key words or catchy phrases, which have come to be associated by the public with a certain book or film. Indeed, the choice of a title is likely to be a matter of market research even prior to a book or film’s release. So what is the IP protection according to titles, phrases, names or even words in books and film? It’s not so different, even if these two entertainment products are very dissimilar. In general in the UK [3] titles and names are not protected as such by copyright [4] basically because they can be protected, under certain conditions, by copyright in an artistic work [5], trademark law [6] and the tort of passing-off [7]. In relation to books, “copyright in an artistic work” means that titles are protected like part of the copyright work consisting in the whole book. Titles alone and by themselves cannot properly be considered as a “literary work”, subject of copyright under the Copyright Act. Words become part of a “literary work”, regulated and protected by the Act, when they are embodied in the story, yet they are still part of it and only the novel can be protect as a composition. Thus it has to be verified whether a person that copies the title of a book infringes the copyright in the whole work, because only actions that take place in relation to the whole work – or a substantial part – infringe copyright in a work. In determining whether the use of a copyrighted work is permitted (fair dealing), Courts have to verify the amount and substantiality of the portion borrowed in relation to copyrighted work as a whole: taking one sentence from a five hundred page book is more likely to be considered fair than taking a sentence from a ten line poem [8]. These comments appear to suggest that there may be a tactical advantage to be gained by arguing that individual words forming the title are part of a larger work forming the novel, rather than by claiming copyright in the title itself or words as such. In short, it is not necessarily safe to assume that using a group of words cannot amount to an infringement merely because those words, taken alone, are unprotected. However, it’s very rare that the act of copying the title from a work will be the reproduction of a substantial part of it [9]. Names and titles (or even titles of a series of books) may be registered and protected as trademarks and consequently the use of them may then be a trademark infringement. The objective of title protection is to ensure that another writer does not use a specific title in a way that will create a likelihood of confusion regarding the source of the publication in the minds of the purchasing public [10]. Also the use of unregistered names or titles may be seen as passing off, but only when a title of a book acquires goodwill (reputation) [11], its use by another person and can be a form of misrepresentation [12]. In the motion picture industry, titles have been treated as primary products, commodities to be bought and sold like any other, but as part of the whole product [13]. It is not unknown for a film company to purchase what they regards as the rights to a title alone quite independently of the work from which it is derived. There is instead a long tradition by which song titles have been traded for use in films of the same name [14]. Like in the case of books, film titles are generally not eligible for trademark protection. Only a series of products from a single source, such as sequels or a television series can be protected under trademark law. However, for a one-shot project like a movie, the title would not be protected [15]. The use of existing film titles or similar titles in new ventures may a run the risk of a passing off claim [16]. A film’s title cannot be generally protected under copyright: copyright law protects film in its whole and integrity, so the producer can prevent others from copying and distributing it and for that reason film titles are not eligible for copyright protection [17]: because “copying” in relation to an artistic work means reproducing the work in any material form, as a whole or any substantial part of it. The determination of exactly what amounts to a substantial part of a work is a question, which will clearly depend on the facts of the individual case [18]. In determining whether a substantial part of a work has been taken, academic opinion unanimously say that it has to verify “the degree to which the use may prejudice the sale, or diminish the profits, direct or indirect, or supersede the objects of the original work.”[19]. Instead the Courts have recognized that it would be unreasonable to restrict the test of substantiality to a quantitative measure alone. Accordingly, an assessment will also be usually made of the qualitative significance of the material derived from the copied work. In relation to that, it’s interesting to observe how a group of words or a sentence could be essential in a film. Examples of such “slogans” might include “Just when You Thought it was Safe to go Back in the Water” (“Jaws”) [20] or “In Space no one can Hear You Scream” (“Alien”) or “I’ve seen things you people wouldn’t believe” (“Blade Runner”) [21] or – my favourite one – “This whole world’s wild at heart and weird on top.” (“Wild at Heart”) They are memorable quotes or catchy phrases, which can usually be said to be part of the literary work from which they derived, yet the same is not necessarily true of a film. They form no part of the scripts as such, but they are only phrases able to capture something of the spirit of a film. They also tend, on the whole, to be more substantial than titles in qualitative and quantitative terms and therefore their potential for protection could be greater, but still they are not protected by copyright. It has sometimes been recognized that a taking is more likely to be regarded as substantial if (for example) two analogue films are competing with each other in the relevant market and something more than an isolated phrase has been lifted. Yet besides competition, it is necessary to have more elements and criteria for determining any copyright infringements, like similarities in the story and animus furandi. There is also no unanimity in courts about what is meant by “competition”, which is generally interpreted in its very broad significance [22]. Also, in the context of audio-visual media, the concept of analogy is blurred. It might by analogy between a documentary and a feature film? Or only two feature films of the same genre are capable to compete with each other? With regard to character names, they cannot be copyrighted.  There are a number of English cases, which have indicated that character names, both invented and non-invented, cannot be the subject of copyright. However, these cases should be viewed with caution because they essentially concerned issues of passing off and the matter of copyright was considered only on a marginal and secondary basis [23]. As above mentioned, character names as such are not protectable under English copyright law, although they can be registered as trademarks to distinguish them as a separate brand. James Bond and 007 for example come to mind as film titles and characters that gained widespread market value, originating from books written by Ian Fleming [24]. What about invented words or names in a film? Can they be protected by copyright due to the fact that they have a kind of originality and uniqueness? Apart from their possible application in songs, perhaps a more likely context in which to find created words and names in the entertainment film world is within the genre of science fiction or fantasy stories [25]. Generally they are not protected by copyright. Courts will continue to insist on some minimum characteristics, which invented words will not qualify for protection. Apart from originality, under English law the main question is: can they be regarded as “literary works”? Do the names in question possess “substance and meaning”? Or can they be said to provide “pleasure in the form of literary enjoyment?” Although invented words or names often have a certain linguistic appeal, it seems likely that they would not satisfy the above criteria. Even in the case of two or three invented words rather than one, it would probably still be necessary to ask whether those words, taken as a whole, pass a minimum standard for gaining protection [26]. The same of what has been said concerning invented words will equally be applicable to the protection of existing words. There is, however, a certain distinction because in this case, there is a clear danger that existing modes of expression could be snatched from the public domain. The above scenario is the analysis of the IP protection accorded to the writer and the producer in relation to their works of arts (books and film), but what about users (the public)? Which are their interests in the entertainment products above mentioned? Is any balance achieved by IP between their interests and the interests of writers and producers in protecting their products? From the above analysis it has arisen that generally IP doesn’t recognized any copyright protection for titles, group of words or famous sentences like catchy phrases, names or even single words, invented or non invented, written in books or said in film, but all these elements can sometimes and under certain circumstances be protected by trademark and passing off law. Conclusion It can be concluded that IP laws, excluding the copyright protection for words in books and film, have achieved a certain balance between the interests of writers and producers on one hand and users (the public) on the other hand for the following reasons. Let’s consider that if the Courts were recognized the copyright protection of words (or, indeed, short literary phrases and titles) there would be a danger that the public interest might be jeopardized. The rights of a copyright owner would appear to be stronger than those possessed by the owner of a registered or unregistered trademark. A copyright owner has the exclusive right: (i) to copy the work in question; (ii) to perform, show or play the work in public; (iii) to issue copies of the work to the public; (iv) to broadcast the work or include it in a cable programme service; (v) to make an adaptation of the work or to do any of the above in relation to an adaptation. The owner of a registered or unregistered trademark cannot assert rights in the same broad circumstances. If a word can be regarded in law as an “original literary work”, and till now it never happened, then it ceases to be part of the public domain and comes within the exclusive control (even if it will be for a limited period of time) of an individual person. The social dimension of the law would be progressively disappearing in favour of a strictly individualistic conception; the balance between different interests within the system would be threatening to tip in favour of the investors; copyright would evolve more and more into an investment protection mechanism, where the industrial right and the producers’ investment, instead of the public, would have become the reasons for protection. It may be argued that this approach, if adopted under English law, would restrict the growth of the language. The fear is that invented words could, in both a metaphorical and literal sense, be barred from the dictionary and that even existing words might, in effect, be rendered unusable through inclusion in newly protected literary phrases. Many of the same considerations would apply to the public’s use of invented words originally incorporated in book or a company’s films or other audio-visual products. The public interest in freedom of expression should not be shackled by the courts unless there is some fair commercial reason, on the part of the copyright owner, for doing so. Nevertheless IP recognized to writers and producers other kind of protection- trademark or passing off or unfair competition – that permit them to adequately defend their properties. “It has in fact been asserted that copyright protection for individual words would be inappropriate where those words are registrable as trade or service marks or where the words are capable of forming the subject of a passing off action.” [27]. As a practical matter, it is important bearing in mind that the laws relating to registered and unregistered trade marks may well offer a more uncomplicated means for the creator of a mark to control the uses to which that mark may be put by other persons. The premise is presumably that, if words or literary phrases are subject to these very distinct and separate legal principles at the same time, the protection afforded will be immoderate – there had been an overprotection – and therefore damaging to the public interest, but that is not the case in reality. Courts have always denied any copyright protection to words as such and through this exclusion they have maintain a fair balance between the right of the public to express and to use any kind of language and any words, even if they clearly belong to a book or a film. The admission of the opposite situation would be the beginning of a words monopoly [28] where creators or owners could control others authors, owners, even users in the utilization of same expression or even single word.  I clearly can see the evidence of this situation: a growing number of authors no longer will identify with the system; more and more voices will argue about against a law that would be considered to be “overprotective.”[29]. Reference [1] “Introduction a la theorie generale et la philosophie du Droit”, by C. Du Pasquier [2]Prof. David Vaver, 2009, Reforming intellectual property law: an obvious and not-so-obvious agenda. [3] Their protection may lead to a monopoly of “part of the English language” and get to the copyright holder the control “on the use of the words; see Rose v. Information Services Ltd. [1978] FSR 254; Exxon Corporation v. Exxon Insurance [1982] RPC 69. [4] A trade marked name may be protected by copyright, as a “literary” or “artistic” work (ss. 3(1) and 4(1) CDPA). Section 16 of the CDPA sets out the “acts restricted by copyright”, which include, among others, copying the work, issuing, and communicating, copies of the work to the public and making an adaptation of the work. There are also certain “fair dealing” provisions, which allow the use of a copyright work without infringement for the purpose of “criticism or review” (s.30(1)) and for “the purpose of reporting current events” (s.30(2)), provided in both cases that such use is accompanied by sufficient acknowledgement and, in respect of “criticism and review”, that the work has been made available to the public. These so-called “fair dealing defences” are often narrowly interpreted by the courts. [5] Generally British courts have excluded titles from copyright protection held that names and titles “lack a sufficient degree of skill, knowledge and creative labour in order to be ‘original’ works” or that titles were usually “too unsubstantial to be protected as literary works”, however, it was said that “in particular cases a title may not be on so extensive a scale, and of so important a character, as to be a proper subject of protection against being copied.” See Bently/Sherman, 55; artistic work‚ Karo Step’ Trade Mark [1977] RPC 255, a pictorial mark may qualify as an artistic work. [6] Trade marks: under the TMA it is an infringement to use a “sign” in the course of trade which is identical to a registered trade mark in relation to goods or services which are identical to those for which it is registered (s.10(1)). It is also an infringement to use a sign which is identical to a registered trade mark in relation to similar goods or services, or which is similar to a registered trade mark in relation to identical or similar goods or services, where there is a likelihood of confusion on the part of the public or the association of the sign with the trade mark (s.10(2)). Section 10(3) TMA also prohibits the use of a sign identical or similar to the trade mark, where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. See Brand issues in film and television: product placement and rights infringement, by Jonathan Blair. [7] In order to succeed in a passing off claim, a claimant must meet a three-stage, as established in Reckitt & Colman Products Ltd v Borden Inc. It must be proved that: (i) the claimant’s goods or services have acquired a goodwill in the market and are known by some distinguishing name or mark; (ii) there is a misrepresentation by the defendant (whether or not intentional) leading or likely to lead the public to believe that goods or services offered by the defendant are goods or services of the claimant; and (iii) the claimant has suffered or is likely to suffer damage as a result of the erroneous belief engendered by the defendant’s misrepresentation. [8] Writers should be more cautious in borrowing from novels and other fictional works. In one case, the author of the book “Welcome to Twin Peaks: A Complete Guide to Who’s Who and What’s What,” was found to have infringed the television series “Twin Peaks.” The book contained detailed plot summaries and extensive direct quotations of at least eighty-nine lines of dialogue. See http://www.marklitwak.com/articles/general/adopt_position.html [9] It has for instance been held in Francis Day and Hunter Ltd v. Twentieth Century Fox Corp Ltd where a person used the title of the song ‘The Man Who Broke the Bank at Monte Carlo’ as a film title, that ‘the use of the title […] is too unsubstantial on the facts of this case to constitute infringement’. [10] See http://www.copyrightservice.co.uk/copyright/p18_copyright_names. [11] Goodwill is often thought to be synonymous with reputation, but conceptually it has a wider scope. Lord MacNaghten defined goodwill as: “the benefit and advantage of the good name, reputation and connection of a business, the attractive force which brings in custom, and the one thing which distinguishes an old-established business from a new business at its first start.”Goodwill can have particular significance in terms of franchising, as a substantial amount of brand awareness and reputation will have been built up in that franchise. In a film franchise situation, attempts to take advantage of the reputation of the franchise by adopting a similar name or get-up of film packaging, or any attempt to imply a link between the separate products may be liable in an action for passing off. [12] The test for passing off claim (see footnote 6), is also used in false endorsement cases. In his judgment on liability in Irvine v TalkSport Ltd, 8 upheld by the Court of Appeal, Laddie J. stated as follows: “… there is nothing which prevents an action for passing off succeeding in a false endorsement case”, however to do so the claimant needs to prove two interrelated facts: (i) that at the time of the acts complained of he had a significant reputation or goodwill, and (ii) that the actions of the defendant gave rise to a false message which would be understood by a not insignificant section of his market that his goods have been endorsed, recommended or are approved of by the claimant.” The case involved TalkSport radio station using a photograph of Irvine holding a mobile phone, which they had manipulated to look like he was holding a small radio to his ear with the station’s logo emblazoned on it, in a brochure for an advertising campaign. Irvine successfully claimed that the brochure falsely represented that he had endorsed the radio station. [13] The title ‘Heaven can Wait’ was sold separately from the play of the same name; and the book Sex and the Single Girl was, in effect, purchased for the use of its title by Warner Brothers for $200,000. Refer to Bernstein, “Who Owns the Audio Visual Work?’, [1991] 14 Copyright World 40, at 43. See Copyright protection for titles, character names and catch-phrases in the film and television industry, by Reuben Stone, Ent. L.R. 1996, 7(5), 178-187. [14] Examples are ‘Alexander’s Ragtime Band’ and ‘With a Song in my Heart’. [15] See http://www.marklitwak.com/faq/titles.html [16] Although most titles will be registered trade marks and therefore it is more likely that a claim would be brought for trade mark infringement: it is easier to prove an infringement of a proprietary right than it is to prove the three-stage test set out for passing off claim. [17] It may be appropriate to mention the legendary dispute, which arose over the use of the title ‘Casablanca’. During the filming of the Marx Brothers comedy ‘A Night in Casablanca’ the production team received an ominous letter. Jack L. Warner, the head of Warner Brothers, was threatening to sue over what he regarded as a blatant attempt to capitalise, by the choice of title, on the success of the classic 1942 film starring Humphrey Bogart and Ingrid Bergman. Groucho Marx responded by pointing out that the Marx Brothers had been in business longer than Warners, and that if Warners persisted in using the word ‘Brothers’ in their company name then Marx would sue them. Needless to say, Jack Warner quietly dropped the matter. [18] Francis Day & Hunter v Bron [1963] Ch. 587; EMI Music Publishing Ltd v Evangelos Papathanassiou [1993] EMLR 308; Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273; Ravenscroft v Herbert [1980] RPC 193; L.B. (Plastics) Ltd v Swish Products Ltd [1979] FSR 145. [19] Copinger & Skone James on Copyright, Sweet & Maxwell, 1991 (13th edn), at 175. [20] Directed by Steven Spielberg and released in 1975. [21] Directed by Ridley Scott and released in 1979 and 1982. [22] “In Ravenscroft v Herbert a novel called The Spear was found to have infringed copyright in another work entitled The Spear of Destiny. Both works were based on the alleged mythical qualities of a lance. There were also other significant resemblances between the two books. In finding that an infringement had occurred, Brightman J took into account factors in addition to those similarities. He was of the view that, although The Spear was a work of fiction and The Spear of Destiny a semi-historical book, the two publications could be said to be in competition with each other. This seems to be a very broad interpretation of that word” See Entertainment Law Review 1996 Copyright protection for titles, character names and catch-phrases in the film and television industry, by Reuben Stone. [23] In Wombles Ltd v Wombles Skips Ltd, copyright in the word ‘Wombles’ (describing the television characters of that name) was denied. Similarly, in Tavener Rutledge Ltd v Trexapalm Ltd the name ‘Kojak’ was said to be incapable of copyright protection. [24] Other current examples include the Simpsons, Bart Simpson, Harry Potter, Batman and Thomas The Tank Engine. Older examples include the Turtles, Elvis Presley, and the Wombles. [25] Films (and also television programmes such as those of the Star Trek series) owe much of their appeal to the imaginary places and alien creatures on which the plots are based. [26] It may be helpful to mention briefly at this point the American case of Life Music Inc. v Wonderland Music Co. The dispute concerned the word ‘Supercalafragilisticexpialidocious’ which was claimed to be an infringement of the plaintiff’s word ‘Supercalafajalistickespeealadojus’. Unfortunately, since an interlocutory injunction was denied, the case provides no real guidance on the copyright status of this most interesting example. The court recognised that liability for copyright infringement in the plaintiffs’ word would be ‘conceivable’ on different facts. It is difficult to think of a more deserving candidate for protection than this 14 syllable creation. [27] See Copyright protection for titles, character names and catch-phrases in the film and television industry, by Reuben Stone, Ent. L.R. 1996, 7(5), 178-187. [28] Against Intellectual Monopoly: Michele Boldrin and David K. Levine. [29] See “Constitutionalising” Intellectual Property Law? The influence of Fundamental Rights of Intellectual Property in the European Union, by C. Geiger, in ICC, International Review of Intellectual property and Competion Law, volume 37, No 4/2006, p. 371-500. Bibliography Articles • Brand issues in film and television: product placement and rights infringement, by Jonathan Blair. • “Constitutionalising” Intellectual Property Law? The influence of Fundamental Rights of Intellectual Property in the European Union, by C. Geiger, in ICC, International Review of Intellectual property and Competion Law, volume 37, No 4/2006, p. 371-500. • Entertainment Law Review 1996 Copyright protection for titles, character names and catch-phrases in the film and television industry, by Reuben Stone. • Prof. David Vaver, 2009, Reforming intellectual property law: an obvious and not-so-obvious agenda. Books • “Who Owns the Audio Visual Work?’, [1991] 14 Copyright World 40, at 43 • Against Intellectual Monopoly: Michele Boldrin and David K. Levine. • Introduction a la theorie generale et la philosophie du Droit, C. Du Pasquier. • Copinger & Skone James on Copyright, Sweet & Maxwell, 1991 (13th edn), at 175. From websites • http://www.copyrightservice.co.uk/copyright/p18_copyright_names. • http://www.marklitwak.com/articles/general/adopt_position.html. • http://www.copyrightservice.co.uk/copyright/p18_copyright_names Cases • Rose v. Information Services Ltd. [1978] FSR 254. • Exxon Corporation v. Exxon Insurance [1982] RPC 69. • Bently/Sherman, 55. • Reckitt & Colman Ltd v Borden Inc [1990] 1 All E.R. 873. • Karo Step’ Trade Mark [1977] RPC 255. • Francis Day & Hunter v Bron [1963] Ch. 587. • EMI Music Publishing Ltd v Evangelos Papathanassiou [1993] EMLR 308. • Ladbroke (Football) Ltd v William Hill (Football) Ltd [1964] 1 WLR 273. • Ravenscroft v Herbert [1980] RPC 193; L.B. (Plastics) Ltd v Swish Products Ltd [1979] FSR 145. • Wombles Ltd v Wombles Skips Ltd. • Life Music Inc. v Wonderland Music Co. • Irvine v TalkSport Ltd, 8