Die Hard and John MacLane’s destiny – how movie titles function as trade marks

It is not really Christmas, until Hans Gruber falls from Nakatomi Plaza, and that festive sentiment seems to have led to this pending Australian trade mark application for “A Very Die Hard Christmas”.

Twentieth Century Fox Film Corporation has been the registered owner of the Australian trade mark “DIE HARD” (AU TM 701725) since 1996, and its registration is almost certainly blocking this pending application. Here is an extract of the studio’s registration:

A movie title is not generally regarded as being capable of functioning as a trade mark in Australia, but “DIE HARD” is an exception, because the concept has evolved into a franchise. In Twentieth Century Fox Film Corporation v Die Hard [2001] ATMO 43 (25 May 2001), the hearing officer noted (rather amusingly):

“The evidence shows that the Die Hard films belong to the action thriller comedy genre in which the hero (John MacLane who is played by an American actor called Bruce Willis) is likely to be beaten up badly by a single villain in a fist fight, yet will prevail against a whole building full of villains armed with automatic weapons. Ms Gillies gives a brief plot synopsis of each of the Die Hard films. They are very similar: a synopsis of the first two might read, `John MacLane must save his wife and family from their accidental ensnarement in the clutches of terrorists’.”

On whether “DIE HARD” functions as a trade mark, the hearing officer said:

“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. Here the evidence shows that there is a DIE HARD series of films and that the series is only associated with Fox – it is difficult, for example, to see how the word DRACULA could be a trade mark in respect of motion pictures since the word is associated with the motion pictures of many different people. The evidence shows that the public have come to expect a certain `action movie’ content, style and level of production value, violence, graphical stunt and propensity to use swear words within the DIE HARD movies – I refer again to the evidence that movie critics use the words DIE HARD as a touchstone. The public, thus, understands the words as indicating the character, quality and source of the goods. The Gillies declaration refers to a possible future Die Hard motion picture. The name of the series of motion pictures is not descriptive of their content and each motion picture, while incorporating the words in its title, and (the evidence shows) being generally referred to by the public as Die Hard I, Die Hard II and Die Hard III, has its own title.

I therefore accept that the evidence supports Fox’s submission that the words DIE HARD, as used by Fox in respect of certain of its movie pictures, function as a trade mark.”

This is as accurate a description of the position at law in Australia of how movie titles function as trade marks. Yippee ki-yay.

David Stewart

Principal / Head of Intellectual Property Law

Disclaimer: The information published in this article is of a general nature and should not be construed as legal advice. Whilst we aim to provide timely, relevant and accurate information, the law may change and circumstances may differ. You should not therefore act in reliance on it without first obtaining specific legal advice.

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