In the recent Trade Marks Office decision of Long Way Home Holdings Pty Ltd v Saroo Brierly Enterprises Pty Ltd  ATMO 109, the issue of whether a film title functions as a trade mark has again been discussed.
The decision concerned a film called Lion, which is based on the story of young Indian man, Saroo Brierly, who grew up in Australia. At the age of five, he lost contact with his family in India when he was at a train station waiting for his brother, who never returned. After surviving three weeks in Calcutta by himself, he was placed in an orphanage and subsequently adopted by an Australian family. He then spent the next 25 years living in Tasmania, Australia. He then went searching for his natural parents in India, eventually being re-united with them and discovering that his original name was Sheru, meaning Lion.
The book, which was called A Long Way Home, received wide acclaim and a film adaptation called Lion, was subsequently produced. The film starred Dev Patel and Nicole Kidman and was nominated for six Academy Awards.
The story was written by Mr Brierly, with some editorial assistance, and he licensed the film rights, but kept musical and theatrical rights separate.
The holder of the licensed film rights, See Saw Films Pty Ltd (“See-Saw”) wished to produce a stage show, but was not granted rights by Mr Brierly, who applied for registration of the trade mark LION in respect of a range of theatre and musical services in Class 41. Long Way Home Holdings Pty Ltd (“LWHH”), a subsidiary of See-Saw then opposed that application.
According to the evidence, See-Saw decided to change the name of the title of the film from A Long Way Home, to Lion. According to them, Mr Brierly was not approving of this name.
In brief, the Hearing Officer found that LWHH did not have any good basis for opposing the acceptance of Mr Brierly’s application because its use of Lion as a film title was not use as a trade mark.
On the further issue of whether Mr Brierley’s application was filed in bad faith, because it was filed at a time when he was negotiating with LWHH concerning theatrical rights, the Hearings Officer decided:
Mr Brierley has rights in the story contained in that book which he may choose to licence to others, or not, as he sees fit. Mr Brierley chose to grant rights to See-Saw to produce a film based on the story in his story. A film was made and was entitled LION—this is not some random title but the meaning of a phonetic equivalent of his first name. Whether Mr Brierley decided on that title for the film or was happy with that title or not is of little import here. Mr Brierley was approached by See-Saw to produce a stage show based on his memoir. That Mr Brierley might have seen monetary value in a trade mark and/or sought, through the Applicant, to improve his bargaining position in negotiations in respect of rights he owns by applying to register LION as a trade mark seems a natural approach, rather than behaviour which is likely to be seen as unscrupulous, underhand or unconscientious in character by persons adopting proper standards. This is especially so in the light of my finding that the Opponent has, at no time, used LION as a trade mark.
Cases concerning Film Titles
Superficially, film titles seem just like trade marks. They are names used to identify a particular product. However, the nature and types of titles vary considerably, as does their function.
In some cases, the film title is derived directly from a prior publication, in others, it directly describes what the film is about. In other cases, it is at best suggestive. The function of names in the title also vary to an extent depending upon whether it is indicative of a series of releases, or a one-off film.
There are few judicial decisions in Australia on this issue. The two that most readily spring to mind concern Disney’s Hunchback of Notre Dame and a television program called Discover Downunder.
In the case concerning Disney’s Hunchback of Notre Dame, it was alleged that Disney’s proposed use of Hunchback of Notre Dame in respect of a musical production was an infringement of a trade mark registration for Hunchback of Notre Dame. As might be expected, the Court found that the word “Disney’s” functioned as a trade mark but that “Hunchback of Notre Dame” was simply being used to describe a musical based on a book commonly referred to as The Hunchback of Notre Dame. Hence there was no infringement.
In the case of Discover Downunder, it concerned an application to register that trade mark in respect of the “production of television programs”. In that case, the Court did not need to decide whether Discover Downunder functioned as a trade mark. This is because it decided that use and intended use as the name of a television program was not intended use for the “production of television programs”. The business of producing television programs was to be carried out by the production company, whose name was Evergreen, not Discovered Downunder.
With this paucity of judicial consideration, it is useful to look at decisions at the level of the Trade Marks Office. Here we find that film and television program titles have not typically been considered use as a trade mark. Decisions in respect of Braveheart, Veronica’s Closet, Thirtysomething and Matrix, found no use as a trade mark. However, Die Hard was distinguished on the basis that it was a name used to identify a series of productions.
In the case of Braveheart, an opposition to registration of BRAVEHEART THE MUSICAL, in respect of theatre musical production services, was nevertheless successful on the basis that, while Braveheart was not considered to have been used as a trade mark, use of the name by a third party would connote an association with the film by virtue of its reputation.
Also, in the Twentysomething case, the Hearings Officer commented that:
By analogy, the television series name is just that. It is not an indicator of the trade source of the goods. Had the opponent applied the name, or licensed others to apply the name, ‘thirtysomething’, to merchandised goods sold in Australia then I would have no hesitation in finding that there was use of the name as a trade mark in relation to those goods.
In the Die Hard case the rationale was explained:
I think that motion pictures, if there is a series of them, fall into the same genus of publication as the newspapers, sound recordings, magazines and newspapers referred to above. By analogy, therefore, the titles of motion picture films should also be capable of functioning as trade marks. Whether particular movie titles do function as trade marks, will, naturally, depend on the evidence how such indicia have been used and whether such indicia have, in fact, developed trade mark significance.
As regards the decision in the Matrix case, as at the relevant date, only one Matrix movie had been released.
Whether a film title, or words in a film title function as a trade mark, depends upon the circumstances. Currently, it seems that a one-off film title will not usually be considered use as a trade mark. However, where there is a series, for example Harry Potter and Star Wars, the identifying name used consistently across the series will usually function as a trade mark.
There is also likely a distinction to be drawn between use in respect of films and use in respect of merchandise, and the merchandising of a film title may also enhance its prospects of being considered a trade mark, even in respect of the film.
Similar considerations are relevant in respect of book titles and song titles, and it is worth noting that even if the title is not being used “as a trade mark”, there may still be protectable property, as indicated by the decision in the Braveheart case.
 Christodoulou v Disney Enterprises Inc  FCA 1401 (4 October 2005).
 Bauer Consumer Media Ltd v Evergreen Television Pty Ltd  FCAFC 71 (3 May 2019)
 Twentieth Century Fox Film Corporation v Michael F Durkan  ATMO 5 (19 January 2000).
 Time Warner Entertainment Company LP v Cosmopolitan Enterprises Pty Limited  ATMO 83 (6 September 2001).
 Metro-Goldwyn-Mayer Studios Inc v Andrea Margaret Higgs  ATMO 44 (6 August 2007).
 Time Warner Entertainment Company LP v Just Spectacles Pty Ltd  ATMO 43 (29 July 2003)
 Twentieth Century Fox Film Corporation v Die Hard  ATMO 43 (25 May 2001).