Movie title used to describe an invitation

[Florida Dare]

What is the name of your state (FL)?

Am I able to create and sell party invitations which would use a movie title in the description? For example, can I describe one as a "Gone with the West party invitation"?
What confuses me is that Circular 34 says that Titles of Works can not be copyrighted, but what about trademarks?

 

[FlyingRon]

Titles and Names can not be protected by copyright.

Titles and Names can indeed be trademarked. Movie titles certainly frequently are and using them in commerce on your own could very well be infringing. I'd especially stay away with the particularly litigious stuff like Disney and the late release WB stuff like Harry Potter.

 

[quincy]

What is the name of your state (FL)?

... What confuses me is that Circular 34 says that Titles of Works can not be copyrighted, but what about trademarks?

Even when not registered as a trademark with the USPTO, titles to creative works (books, films) can be protected by trademark laws and under unfair competition laws.

Even when registration of a trademark is not required in the US to have protection for a name or logo or slogan that is used in commerce as an identifier for a product or service, many creators of book series (like A Series of Unfortunate Events and Harry Potter), and many creators of films (like Frozen and Despicable Me), will register their titles. The titles will used as identifiers for product lines connected with the books/films.

Here is a link to the Trademark Manual of Examining Procedure (TMEP) section that applies to titles:
http://tmep.uspto.gov/RDMS/mashup/html/page/manual/TMEP/Oct2012/TMEP-1200d1e2517.xml

Following are two cases that illustrate what a court will consider in a trademark infringement/unfair business practices suit when a title-owner sues for infringement a user of the same or similar title.

This first link is to a complaint filed by Disney over the use of the word "frozen" in a Phase 4 Film's movie title. As FlyingRon noted, Disney is not a company whose rights you want to challenge, unless you are prepared to spend a lot of money in court.

Disney Enterprises, Inc. v. Phase 4 Films, Inc, et al:
http://www.scribd.com/doc/201663060/Disney-v-Phase-4-Films-Frozen-Complaint

This second link is to a case filed by McGraw-Hill over what the book company claimed was a book-title infringement by competing book company Random House. The book titles discussed in this suit were McGraw-Hill's "PT-109: John Kennedy in World War II" and Random House's "John F. Kennedy & PT-109."

http://scholar.google.com/scholar_case?case=2336184104931723927&q=McGraw-Hill+Book+Company+v.+Random+House,+Inc&hl=en&as_sdt=80000006

 

[Florida Dare]

A large corporation filed a trademark infringement notice with the online store where I sell my invitations. When I pointed out that the claim was incorrect (because I was not using their trademarked term, but a similar term to the movie title) the corporation's infringement team agreed with me and asked the online store to revoke its claim.
In the meantime, however, the online store told me that they are going to shut down my storefront due to infringement if they are notified again.
Do I have any recourse here, or is there a way to prevent that corporation from making false future claims against me (they admitted that the words I used to describe my invitation, although close to their trademark, was actually permitted since it was not a trademark of theirs).
I'm concerned now that my online store will close my account due to an errant claim.

 

[quincy]

A large corporation filed a trademark infringement notice with the online store where I sell my invitations. When I pointed out that the claim was incorrect (because I was not using their trademarked term, but a similar term to the movie title) the corporation's infringement team agreed with me and asked the online store to revoke its claim.
In the meantime, however, the online store told me that they are going to shut down my storefront due to infringement if they are notified again.
Do I have any recourse here, or is there a way to prevent that corporation from making false future claims against me (they admitted that the words I used to describe my invitation, although close to their trademark, was actually permitted since it was not a trademark of theirs).
I'm concerned now that my online store will close my account due to an errant claim.

If you read the case I linked on Disney/Phase 4, you saw that even using a "close to" trademark can result in a lawsuit that can be lost.

Trademark law centers on consumer confusion. If a consumer can mistake one trademark for another (due to appearance, sound, whatever), then a notice can be sent to the alleged infringer and a lawsuit can be filed.

Trademark holders are responsible for policing the marketplace for infringers on their marks. If they allow for others to use their marks, they stand to lose all rights in their mark. That is why more notifications of infringement may be sent than are justified.

As to the online store and their decision to close down your storefront if another infringement notification is received, they can close down your storefront even if NO infringement notification is received. Whom they allow to sell on their site is their choice.

If one of your invitations attracted the attention of a company's lawyers to the point of an infringement notification, you might want to seriously consider having all of your product designs personally reviewed by a professional prior to sale.

Good luck.