Protection of catchphrases from films and TV shows | In Principle

Catchphrases are intriguing not only as a phenomenon of social communication. They can also develop an economic dimension if they have marketing appeal. Consumers eagerly purchase T-shirts and gadgets decorated with amusing sayings, as a medium for expressing their own personality and preferences. What counts in this situation is to be the first to register the phrase.

Quotes from films and TV shows have become popular and entered the vernacular as clever sayings. They have been incorporated into mass culture, and not just in speech. They are commonly known as catchphrases or bons mots.¹

Another source of catchphrases is comments by celebrities, and by hosts and guests on TV programmes. Many funny, clever or original sayings become permanently fixed in viewers’ memory. Often they are used in internet memes, in ads, or as legends on T-shirts or other items. Catchphrases are typically composed of just a few words, often with a surprising twist or using wordplay. They may have originated spontaneously, unscripted, as situational humour, capturing the personality of the author. Other times they are deliberately crafted. But do catchphrases enjoy legal protection? If so, what sort of protection?

Can a catchphrase be a creative work?

Some sayings, even if comprising just a few words, may be treated as a creative work. But not every saying by a well-known figure, even if it gains huge popularity, will be protected by copyright. As funny, clever or refined as a saying may be, it must possess the features of originality and individuality. Rarely will a catchphrase display sufficient creativity by  a specific person when examined in legal terms.

For example, an ad in Poland used a slight variation on the opening of the cult 1984 Polish film Sexmission (“Darkness, I see darkness”). The court examining a challenge to this use of the phrase admitted that it was identified with the film, but regarded it as only an idea or theme. The creative effect of the words from the script were reduced to a rhetorical figure so general that it was no more than an abstract notion, lacking the originality required for copyright protection, notwithstanding its artistic value (Kraków Court of Appeal judgment of 5 March 2004, case no. I ACa 35/04).

In denying protection, the court held that from the perspective of copyright law, a set of words must create a logical whole, a conceptual cohesion commonly linked with a single identified creator. The court also said that it is not so much the length of a set of words that qualifies it as a work, but a certain qualitative whole (brief works of art such as limericks are for example protected). The court reasoned that it is essential to exclude brief fragments of another’s creative work from the operation of copyright law. Limiting the scope of copyright regulations is required not so much by conscious paraphrase as by the high likelihood that such a phrase will be used in other works of art unconsciously.

Similarly, the court allowed a short phrase from the lyrics to a pop song to be used in a beer ad, where the phrase was banal and only provided an inspiration for the creators of the ad. Overly protective treatment of creative turns of phrase would tend to create isolation of thoughts and prevent the exchange of views, leading to disappearance of works of art referring to earlier works making up part of the common cultural heritage (Warsaw Court of Appeal judgment of 14 May 2007, case no. I ACa 668/06).

Catchphrases as personality rights

It is worth considering whether catchphrases can be treated as a form of personality rights. Generally, personality rights are intangibles concerning the intellectual and physical integrity of a person and commonly regarded as significant in the society. Examples indicated by lawmakers include scientific and artistic creativity. It must be borne in mind that personality rights are an attribute of every individual, strictly tied to the person and inalienable. In this sense, this could offer an attractive form of protection for the authors of catchphrases.

The court cases cited above include reasoning suggesting a rather optimistic view of this possibility. The designated personality rights in the case of catchphrases could be the individual’s renown, popularity, or creativity, in the sense of the creative process and its result, but ultimately qualification as a “creative work” within the meaning of copyright law is not necessarily required.

While admitting the possibility of turning to the legal regime for protection of personality rights in the case of catchphrases, it must be acknowledged that this is just the beginning. An analysis of the specific case will not necessarily lead to the conclusion that use of a catchphrase authored by someone else in an ad or on a gadget will infringe the personality rights of the author.

Or perhaps a trademark?

An aphorism or apt saying can be registered as a trademark (verbal, verbal-graphic or sound). Unlike the model for protection of copyright or personality rights, the right to a trademark arises upon fulfilment of procedural requirements and timely payment of applicable fees. Nonetheless, it may prove the most advantageous form for protection of rights to catchphrases.

By registering a trademark in Poland, the owner obtains an exclusive right to use the mark for commercial or professional purposes throughout the country for a period of 10 years (with the possibility of extension for further 10-year periods). This exclusivity also entitles the owner to prohibit third parties from using an expression similar to the registered mark, to the extent that it would cause a risk of confusion.

Just as not every catchphrase can be protected as a creative work or personality rights, so not every saying can be registered as a trademark. While it is not necessary for a series of words to have artistic value in order to qualify as a trademark, it should in some respect be fanciful, inventive or surprising, for example through wordplay or an unusual juxtaposition. This is required for a trademark to fulfil its basic function of distinguishing goods or services on the market. In this respect, protection of a catchphrase as a trademark will not always be possible. Much also depends on the nature of the goods or services for which the given trademark is to be protected.

From the start, the possibility of registering sayings comprised solely of elements that have entered everyday language, or are customarily used in fair and established commercial practice, must be questioned. Such phrases, like idioms or adages, belong to the public domain. This furthers the principle that no single entity can monopolise expressions that everyone should have a right to use. Thus a simple saying from ordinary language, only used in a different context or meaning, or spoken in an original manner by an actor or public figure, may not obtain such protection.

For example, registration of the phrase Gorąco Polecam (which simply means “I warmly recommend”) as a trademark for foods was denied because it had poor distinctiveness when it came to identifying the origin of the goods. In other words, customers would not tie these words to a specific manufacturer but would regard it as an ordinary phrase functioning in the public domain.

However, in the case of well-known TV shows, undoubtedly there are many amusing, clever or original sayings by actors that could be registered as trademarks. Typically such sayings are associated with a specific programme or channel, enabling the trademark to serve its basic function of indicating the origin of goods or services.

It would be a separate issue to determine who owned the catchphrase—the TV channel or the author of the saying—and consequently who could seek protection of such a mark. In such instances, the production contract should provide for passage of intellectual property rights to works created during the cooperation in production and broadcast of TV shows.

Whether a trademark is registered by the TV channel or an individual, the mark must be used in commerce. But this does not mean that the owner of the mark must pursue such trade personally. Granting a licence, for example by a TV channel for production and sale of products bearing the trademark, would suffice to demonstrate commercial use of the trademark.

Anna Pompe, adwokat, Monika Wieczorkowska, patent attorney, Intellectual Property practice, Wardyński & Partners