In the entertainment industry, documenting a film’s chain of title is extremely important. It’s how you show the putative owners of the film rights do in fact own those rights, and it is essential to securing “errors and omissions,” or E&O insurance. And because a film is comprised of a number of elements, a number of things must be documented, such as: (1) that the underlying rights to the source material were validly acquired, whether the source material be a book or a play or a song or an original screenplay or otherwise; (2) that all the people who appeared in or worked on the film did so as a work for hire; (3) that all the music, still images, and film clips in the motion picture were purchased or appropriately licensed; (4) that the ownership of the completed film was clear and undisputed; and (5) that any entity with a right to derive revenue from the film, or make a substantive decision regarding the film has been identified and documented.
The last thing a producer, financier, or anyone exploiting the film in any way wants is for some third party to come out of the woodwork on the eve of release, asserting heretofore unknown rights and threatening interfere with the release of the film. Timing is crucial for film projects, and a last-minute delay (e.g., via injunction) can spell the difference between success and failure.
Most chain-of-title analyses focus, appropriately, on the copyright to the film (and any elements thereto). Because of the Berne Convention, for practical purposes, copyrights are international and technically do not need to be registered to be effective. As we have written, though, registration is often highly advisable in order to enforce a copyright, particularly in China.
Most chain of title analyses will include a title report, which will include a list of trademarks that are identical and/or similar. But making sure that your title doesn’t run afoul of any trademarks is not the same as actually registering trademarks, and many film producers never register their title as a trademark. For most films, the title does not serve the purpose of a trademark, i.e., a way to identify the source of goods. (The main exception to this is with film franchises.) And in the U.S., you don’t need to register a film’s title as a trademark in order to exploit the film. Looking at the top 10 films in the U.S. from the past weekend, only Goosebumps had a trademark registration. None of the following had film-related trademark registrations or pending applications before the USPTO: Halloween, Venom, A Star Is Born, First Man, The Hate U Give, Smallfoot, Night School, Bad Times at the El Royale, The Old Man & The Gun.
Unlike copyrights, trademarks are country-by-country, so what is true in the U.S. is irrelevant in China. Could a trademark squatter register a trademark for a film and prevent it from being released in China? I don’t know that anyone has tried yet, not least because by the time a film’s title is announced, there’s usually not enough time to secure a trademark registration in China. But that may not always be true, and from my perspective, this falls into the “why risk it?” category.
Having your film prevented from being exhibited in China is the worst outcome, but it’s not the only risk. The film’s title could also be registered by a third party attempting to capitalize on the film’s popularity by selling branded consumer products. If the film is at all popular, this is almost certain to happen — and we have seen it more than once. And although this may not affect the film release directly, it could certainly affect merchandising or other ancillary revenues. Instead of making money from consumer products, film producers could find themselves having to spend money in the hopes of squelching counterfeit lunchboxes.
If you’re releasing a film in China, it’s cheap insurance to register the film’s title as a trademark, and also to have the registration cover all of the goods that you either want to release yourself, or don’t want to see someone else release using the title as a brand name.
Last but not least, you’ll need to register both the English and Chinese versions of the film title.