Copyright vs. Trademark! “Ocean’s 11” Blocked the Registrations

Valeriya Teptiuk
Trademark Counsel for IPR GROUP

Attorneys of IPR Group assisted globally known copyright holder in a compelling IP dispute in Georgia to successfully prevent the registration of the word trademarks “OCEAN’S ELEVEN” and “OCEAN’S 11”. The victory was secured on an argument rooted in long-standing copyright law, providing a powerful lesson for brand owners in the entertainment industry. While the expected ground of bad faith appeared to be ineffective.

 Background of the Dispute

The case began when on April 1, 2024, an applicant filed applications No. 127636/3 and 127637/3 for registration of the word marks “OCEAN’S ELEVEN” and “OCEAN’S 11” in Georgia. The trademark applications were filed for the services in Class 41, specifically related to casinos, gambling, and gaming services.

Upon the results of the substantive examination, the decisions of registration for the disputed applications were issued by the National Intellectual Property Center of Georgia (SAKPATENTI), leading Warner Bros. Entertainment Inc., the owner of the globally renowned “Ocean’s” film franchise, to appeal to the Chamber of Appeals of SAKPATENTI.

Attorneys of IPR Group prepared and filed appeals against the decisions on registration of the trademarks under applications No. 127636/3 and 127637/3 after they were published for the 3-month opposition period in the Official Bulletin on November 11, 2024.

 A Note on the Legislation in Georgia

This case illustrates the practice of a trademark examination by SAKPATENTI during the substantive examination and third-party appeal.

During the substantive examination, SAKPATENTI examines an applied mark according to the Article 5 of the Law on Trademarks, in particular whether it is identical to a trademark or a design, registered in the name of a third party, having earlier priority; examination as to existence of a prior copyright registered in the name of a third party is not provided. This explains that the applications for the word marks “OCEAN’S ELEVEN” and “OCEAN’S 11” initially received decisions on registration.

Article 16(4) of the Law on Trademarks provides that within 3 months from the date of publication of the application data in the Bulletin, a decision on trademark registration may be appealed against at the Chamber of Appeals based on the grounds listed in Article 28 of the Law on Trademarks.

Crucially, this includes provision Article 28(1)(e) of the Law on Trademarks, which states that a trademark registration may be annulled at the request of a third party, if the registration of the trademark and/or use of the trademark violates the copyright of a third party, originated before the priority date established for the trademark.

This specific ground – not considered by the examination but available to an appellant – became decisive in this case.

A Tale of Two Arguments: Bad Faith vs. Copyright

The appeals were built on a two-claim strategy: bad faith registration and a prior copyright infringement.

1. The Bad Faith Argument: An Unsettled Practice of Consideration

The Attorneys of IPR Group argued that the applications No. 127636/3 and 127637/3 for the word marks “OCEAN’S ELEVEN” and “OCEAN’S 11” were filed in bad faith. The reasoning was based on the prior rights of Warner Bros. Entertainment Inc., including a European Union Trademark (EUTM) for “OCEAN’S 11” (No. 003945681) registered on November 04, 2005, for similar services in Class 41. This registration is prior to the applications No. 127636/3 and 127637/3 of the applicant by nearly 19 years, suggesting the applicant was attempting to unfairly capitalize on an Ocean’s Eleven film by exploiting the fame of a copyrighted work of art, and also to unlawfully appropriate part of the economic effect from its creation, advertising and the personal fame of the actors who took part in its creation.

However, the applicant presented a defense argument. They claimed to be acting under a license agreement dated January 22, 2024, with a U.S. company, OCEAN’S 11 CASINO, LLC (US). Crucially, this licensor owned a U.S. trademark registration No 2221282 for “OCEAN’S ELEVEN CASINO” registered on February 2, 1999.

Attorneys of IPR Group contested the legitimacy of this defense argument. The license agreement, which had not been recorded with SAKPATENTI, could not justify filing in bad faith, especially since the licensor possessed no registered trademarks’ rights in Georgia. The license was limited to the use of trademarks already registered in the United States, and the provision allowing the licensee to register new trademarks in any other jurisdictions was not binding on SAKPATENTI. This provision did not create rights for the trademarks, as it contradicts the requirements of national legislation that protects the priority rights of the right holders, as well as the interests of society (consumer) as a whole, preventing misleading and unlawful exploitation of the reputation and associations related to the applied marks.

Despite these counter-arguments, the Chamber of Appeals focused primarily on the chronology of the trademarks’ rights. Since the licensor’s U.S. trademark (1999) was registered earlier than EUTM No. 003945681 of Warner Bros. Entertainment Inc. (2005), the Chamber of Appeals concluded that bad faith on the part of the applicant could not be definitively recognized. We believe this conclusion is not perfect. The insufficient practice of identifying the application of the “bad faith” article and considering such cases leaves room for such decisions that cannot be called indisputable.

In this case the conclusion of the Chamber of Appeals rendered the bad faith argument ineffective, shifting the entire weight of the case to the copyright claim.

2. The Copyright Argument: The Winning Move

The decisive argument in the case became the second one: the registration of the disputed marks violates the prior copyright in the “Ocean’s 11” film franchise. This claim was substantiated with:

• U.S. copyright registration certificate for the original 1960 film “OCEAN’S 11”.
• U.S. copyright registration for the 2001 remake “OCEAN’S ELEVEN”.

The Chamber of Appeals fully endorsed this position, basing its final decision on Article 28(1)(e) of the Law of Georgia on Trademarks, which provides the annulment of a registration if it infringes on a third party’s copyright that arose prior to the trademark’s priority date.

The Chamber of Appeals reasoning was meticulous:

• Priority of Copyright: The copyright for the audiovisual work “OCEAN’S 11” was established in 1960, which is prior to all other rights in the dispute by decades – 39 years before the licensor’s U.S. trademark and 64 years before the applications No. 127636/3 and 127637/3 for the word marks “OCEAN’S ELEVEN” and “OCEAN’S 11” were filed in Georgia.
• International Recognition: As both the USA and Georgia are members of the Berne Convention, the U.S.-registered copyrights are automatically protected in Georgia without the need for local registration or other formalities.
• Originality and Association: The Chamber of Appeals recognized that the combination of “OCEAN’S” and “ELEVEN” or “11” is an original, distinctive creation tied to the film’s main character, not a generic term. Furthermore, since the films’ plots famously revolve around casino heists, registering the marks for casino and gambling services would create a direct and undeniable association in the consumer’s mind, allowing the applicant to unfairly profit from the film’s established fame.

 The Decisions and Key Takeaways

Ultimately, the Chamber of Appeals issued decisions No. 160-3/2024 and 161-3/2024, satisfying the appeals and annulling the decisions on registration of the word marks “OCEAN’S ELEVEN” and “OCEAN’S 11” in the name of the applicant in Georgia.

This case provides several critical insights for IP practitioners and brand holders in Georgia:

1. Copyright is a Powerful Shield in Trademark Disputes: A prior copyright can be a definitive weapon, especially for famous creative works. It can succeed where more traditional trademark claims, like bad faith, may falter.
2. The Timeline is Everything: The ultimate success of Warner Bros. Entertainment Inc. hinged on the fact that their copyright from 1960 was the oldest right in play. This “first-in-time, first-in-right” principle was paramount, overriding later trademark claims.
3. Bad Faith Claims are Highly Contextual: The existence of a third-party’s older trademark, even in another jurisdiction, can be enough to defeat the bad faith argument by providing a plausible justification for the applicant’s actions.
4. Thematic Association Matters: The Chamber of Appeals placed significant weight on the strong thematic link between the applied services (casinos) and the subject matter of the copyrighted work (a casino heist). This association was seen as a clear attempt to trade on the goodwill and reputation of the famous films.

In conclusion, this victory for Warner Bros. Entertainment Inc. is a powerful reaffirmation of the strength of copyright law. It serves as a crucial reminder to right holders in the creative industries to leverage their entire portfolio of intellectual property, recognizing that a decades-old film copyright can be the key to protecting a modern brand identity.