The Chinese film industry has experienced explosive growth in recent years. Movie franchises, merchandise, theme parks and online integration have greatly altered the film industry’s release cycles and profit models. In the past, film titles were rarely registered as trademarks, yet now there is an increasing number of cases where the Trademark Law’s first to file doctrine is exploited to pre-emptively register well-known film titles because of their brand effect. There is also an emergence of cases where producers are sued for infringement of exclusive rights to use a trademark when their films have identical titles.
Existing legal framework does not have clear provisions on these types of conflicts. Some authorities have held that protecting film titles lacks legal basis and thus refused protection. Others have afforded titles a certain degree of protection, but were left scratching their heads at the wide gap between the legal basis and judgment rationale. Happily, the Supreme People’s Court has offered a ray of hope in resolving these conflicts in a set of draft interpretations which were recently circulated for public comment.
Foundation for protection
A film title is usually a broad description of the film, as well as an embodiment of the film’s brand and worth. However, past practice has shown that whenever a film title has been illegitimately used, the concerned party typically encounters the awkward situation of there being no clear basis for protecting their rights.
Superficially, the Trademark Law provision that “an application for the registration of a trademark may not damage the prior rights of any third party” would seem to provide the legal foundation for a party to protect their rights. However, the general opinion in legal circles is that here “prior rights” refers to such rights as copyright, design patents, right to one’s name and right to one’s image, and not the title of a film.
The Regulations on Certain Issues Concerning Hearing Civil Disputes over Conflicts Between a Registered Trademark or Enterprise Name and Prior Rights, issued by the Supreme People’s Court in 2008, similarly does not include film titles among its illustrative list of prior rights.
Given that the Copyright Law protects cinematographic works, can it protect a film title as well? The answer is again negative. In the dispute over the title of the film Five Golden Flowers and a registered trademark, the court at first instance held that “Five Golden Flowers” does not cover the part of the work that is an original creation and does not possess any of the attributes of a work, therefore it should not be protected by the Copyright Law.
The case ultimately went to mediation, but the view that the title of a film cannot be accorded protection on the basis of the Copyright Law came to be widely accepted in legal circles.
The Law Against Unfair Competition contains a provision on the protection of the “name exclusively used by a well-known good”, but a film title would face significant obstacles to satisfy the relevant conditions. In particular, this provision is not easily used in resolving conflicts over confirmation of trademark rights.
In short, the lack of a clear legal basis has resulted in the majority of trademark challenges by film producers based on the titles of their films to come to naught.
There have been a number of ground-breaking cases granting protection to film titles, but the legal bases and arguments have been inconsistent.
In the Harry Potter case, the Trademark Review and Adjudication Board cited the Trademark Law’s catch-all provision that the mark “had some other adverse effect on society” to deny the registration of the opposed trademark.
In the 007 and James Bond case, the appellate court found that a well-known character’s name and title should be protected as a prior right. Industry circles are generally of the opinion that this was the first time that a Chinese court had included merchandising rights within the scope of an existing prior right.
In the Kung Fu Panda civil infringement case, the court artfully resolved the conflict from another angle. The court held that “Kung Fu Panda” is a description of the film – namely, it is a film about a panda that knows kung fu. “Kung Fu Panda” was not used in the nature of a trademark, thus the use of “Kung Fu Panda” would not constitute infringement of another’s registered trademark.
These innovative interpretations should be praised, yet how the cases were handled is inconsistent. Further, China does not have a system of case law, so individual cases have no general binding force. This means that existing trademark conflicts over film titles or character names are unable to be resolved through one or two individual cases.
A ray of light
In 2014, the Supreme People’s Court issued a draft of the Regulations on Certain Issues Related to Trials of Administrative Cases Involving the Grant and Confirmation of Trademark Rights for public comment. Article 17 of the draft regulations sets out that “the titles, character names, etc. of creative works do not constitute creative works but do possess a relatively high degree of notoriety, and if their use as trademarks for relevant goods easily misleads the relevant public into believing that they have been licensed by the original work’s rights holders or that they have some other type of specific relationship with the original holders of the rights in the works”, then the court will uphold a party’s claim that the works’ title or characters constitute a prior right protected by the Trademark Law.
The breakthrough significance of this provision is that it is the first piece of legislation that sets out that the titles of works and the names of characters are prior rights, making it possible for film titles to rightly and properly stand on an equal footing with the trademarks with which they come into conflict.
The draft has not yet been adopted, but the title reveals that it will only be applicable to administrative cases involving the confirmation of trademark rights. The authors would argue, however, that establishing an independent legal position for civil rights and interests can effectively hinder the pre-emptive registration of well-known film titles in the administrative cases on the confirmation of trademark rights. This may serve as a powerful weapon for parties conducting a defence of non-infringement in tort cases. The adoption of the draft is something to await.
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