6 Legal Protection for Literary Titles A Marxist Case Study Terence P. Ross 946 was a great year for the motion Our Lives – are on the American Film In- picture industry in the United States and stitute’s list of the 100 Greatest Movies. But for movie goers. With the repeal of the at least ten more films from 1946 would be wartime excess profits tax, total net industry recognized by critics and film-goers of today 1profits after taxes soared from $89 million in as classics, still well worth viewing.2 These 1945 to $190 million in 1946. Equally impres- include: sive, 4.7 billion movie tickets were sold in the Alfred Hitchcock’s Notorious, starring United States, making 1946 Hollywood’s all- Cary Grant and Ingrid Bergman; time peak attendance year.1 And, although John Ford’s My Darling Clementine, some might be tempted to attribute these starring Henry Fonda; increases to the expansion of the movie- Charles Vidor’s Gilda, starring Rita going public with the return of soldiers, sail- Hayworth and Glenn Ford; ors and marines from overseas, the more Tay Garnett’s The Postman Always likely reason is simply the phenomenal qual- Rings Twice, starring Lana Turner and ity of movie offerings in 1946. John Garfield; Two films released in 1946 – Frank Cap- Clarence Brown’s The Yearling, starring Gregory Peck and Jane Wyman; ra’s Christmas classic, It’s A Wonderful Life, and William Wyler’s drama of war veterans King Vidor’s Duel in the Sun, starring Joseph Cotton, Gregory Peck and Lio- adjusting to civilian life, The Best Years Of nel Barrymore; Terence Ross is a partner in the Washington, DC, office of Gibson, Dunn s Crutcher LLP engaged in the practice of intellectual property law. In his free time, he watches a lot of movies and studies the history of film. 1 At the time, the total population of the United States was only approximately 140 million. By way of contrast, in 2004, with a total population of more than 293 million, only 1.5 billion movie tickets were sold in the United States. 2 In contrast, 1945 saw the release of arguably only a single memorable film – Billy Wilder’s The Lost Weekend, starring Ray Milland and Jane Wyman in a story of an alcoholic’s mental collapse. Although some might add National Velvet, starring Elizabeth Taylor, and The Bells of Saint Mary’s, starring Bing Crosby and Ingrid Bergman, to this list. Terence P. R oss Howard Hawk’s The Big Sleep, starring Yellow Camel Company, and Harpo, playing Humphrey Bogart and Lauren Bacall; Stubel’s mute valet, help Kornblow to thwart Robert Siodmak’s The Spiral Stair- the Nazis and recover the stolen property. As case, starring Dorothy McGuire and a parody of wartime melodramas, A Night in George Brew; Casablanca fails miserably. Indeed, with the Michael Powell’s A Matter of Life and exception of the song “Who’s Sorry Now?,” Death, starring David Niven and Kim several sight gags by Harpo and the immor- Hunter; and tal line, “Play it again, Sam,” the film is merely Walt Disney’s partially animated Song a pale imitation of the Marx Brothers’ clas- . of the South sics from the 1930s.4 1946 also saw the return to Hollywood Setting aside the artistic merits of the of the Marx Brothers. They had been absent film, however, A Night in Casablanca does from the silver screen since their very forget- open a window on one of the great anoma- table “farewell” movie, The Big Store, in 1941. lies of intellectual property law – literary Chico’s gambling debts, however, had be- titles.5 For, as it turned out, the Marx Broth- come so large that he implored Groucho and ers’ selection of A Night in Casablanca as the Harpo to agree to a reunion as the only way name of their reunion film was not without to generate enough money to pay off his card controversy. And that controversy serves as losses.3 They agreed and A Night in Casa- an excellent case study of legal protection for blanca was the result. literary titles. A Night in Casablanca takes place in Literary titles have traditionally been the North Africa at the Hotel Casablanca just orphans of intellectual property law. It is a after the surrender of Germany to the Allies long-standing rule of copyright law that pro- in World War II. Escaped Nazi war criminal tection is unavailable for literary titles. For Heinrich Stubel has hidden looted jewels example, in Osgood v. Allen,6 the court, in a and art treasures in a secret room in the ho- dispute over a magazine title, observed that tel, and he must reclaim them before fleeing “no case can be found, either in England or to South America. The only way Stubel can this country, in which, under the law of copy- do this without notice, however, is to take right, courts have protected the title alone, control of the hotel. Groucho, playing Ron- separate from the book which it is used to ald Kornblow, is hired as the new hotel man- designate.” The court concluded that the title ager after Stubel kills the two previous man- “is a mere appendage, which only identifies … agers and no one else is willing to take the the literary composition.”7 Accordingly, the job. Chico, playing Corbacchio, owner of the court held that literary titles were not copy- 3 Chico was addicted to poker for much of his life. One of many anecdotes about Chico’s gambling is that a large check of his was found in the wallet of mobster Bugsy Siegel at the time of his murder in 1947. When the police questioned him about the check, Chico told them that it was for repayment of gambling debts. 4 The line, “Play it again, Sam,” was never spoken inCasablanca , although it is frequently misattributed to that movie. 5 The term “literary title” is used in the law “to encompass the titles of books, periodicals, newspapers, plays, motion pictures, television series, songs, phonographs, records, cartoon features and the like.” J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair Competition § 10:1 at p. 10-4 to 10-5 (2005). 6 18 F. Cas. 871 (D. Me. 1872). 7 Osgood is the oldest reported decision from a federal court in the United States I have found that actually held a literary title not to be entitled to copyright protection. In the much earlier case of Jollie 162 9 G REEN B AG 2 D 161 L e gal Prote cti on for Literar y Titl e s rightable. In Black v. Ehrich,8 the rationale for a previously registered title, it could file an this rule was explained more fulsomely in objection with the Title Registration Bureau. language frequently cited in subsequent early The company registering the new title could decisions.9 then withdraw the registration or negotiate Neither the author nor proprietor of a resolution of the title dispute directly with a literary work has any property in its the objecting company.12 If negotiations be- name. It is a term of description, which tween the disputing companies did not pro- serves to identify the work; but any per- duce a resolution, the title dispute could then son can with impunity adopt it, and ap- be taken to binding arbitration.13 ply it to any other work, or to any trade Use of MPAA’s Title Registration Bureau commodity, provided he does not use was a condition of membership for member it as a false token, to induce the public companies of the MPAA. Other production to believe that the thing to which it is companies could use it on a voluntary basis applied is the identical thing which it originally designated. by becoming a party to the Bureau’s title reg- istration agreement. By entering into the title As a result of “the absence of copyright registration agreement, each participating protection on the title itself and the expense company undertook to refrain from using a and delays of litigation to establish usage previously registered title. In exchange, a par- rights,” the Motion Picture Association of ticipating company’s registered title was pro- America (the “MPAA”) (known before Sep- tected against use by any other participating tember 1945 as the Motion Picture Produc- company. Of course, in the event of the use ers and Distributors of America) initiated in of a registered title by a non-participating 1925 a Title Registration Bureau which al- company, a lawsuit for trademark infringe- lowed member companies and independent ment was available. producers to reserve specific film titles for When producer David L. Loew registered their exclusive use.10 This self-regulatory ser- the title, A Night in Casablanca, in the spring vice was intended to prevent duplication of of 1945 with the Title Registration Bureau, titles and the likely accompanying confusion Warner Brothers noted the registration and in the marketplace.11 filed a formal objection with the MPAA. The MPAA intended that its Title Reg- Warner Brothers argued that registration of istration Bureau operate as a clearinghouse its 1942 Casablanca pre-empted the Marx for film titles. Each participating company Brothers’ ability to use A Night in Casablanca received a daily report of all title registra- as a title. The MPAA would have informed tions. If a participating company noted a Loew of this objection and declined to regis- new registration that was arguably similar to ter the title. v. Jacques, 13 F. Cas. 910 (S.D.N.Y.