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'The Butler' Will Now Be Called 'Lee Daniels' The Butler' - MPAA Rules On Title Arbitration

Photo of Tambay A. Obenson By Tambay A. Obenson | Shadow and Act July 20, 2013 at 11:26AM

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"The Butler."
"The Butler."

UPDATE 7/20/13, 11am.

Finally, an end to this saga... at least we hope so.

In yesterday's update, Harvey Weinstein had enlisted the civil rights leader trio comprised of Jesse JacksonNAACP president & CEO Ben Jealous, and National Chairman of the Congress of Racial Equality, Roy Innis, in his fight against Warner Bros. over the use of the title The Butler. And also, attorneys for both sides made further appeals in a hearing of the MPAA’s Title Registration Bureau. Thus far, Warner Bros has been on the winning side of every previous ruling on the matter.You can read that full story after this new update, below.

This morning brings word that, in a ruling by the MPAA, The Weinstein Co. can use some form of 'The Butler' in the title of the Lee Daniels-directed movie, BUT as part of the title, and not as the only words in the title.

And with that, the new title of the film will be... drumroll... Lee Daniels' The Butler. Sort of like Tyler Perry's [Insert every Tyler Perry film name here].

In addition, TWC will have to pay $400,000 (and more) in fines for violating the July 2 MPAA ruling, and they will also have to change all the marketing materials for the film to reflect the new title.

As Variety notes:

TWC will have pay a fine of $25,000 a day, dating back to July 2, or $400,000 for violating the initial ruling, and face stiffer penalties if it refuses to change its marketing campaign. The fine will increase to $50,000 a day if the studio fails to issue new digital materials (trailers, TV ads) by July 26 and new print materials by Aug. 2. TWC will also have to pay $100,000 to the Entertainment Industry Foundation and up to $150,000 to cover Warner Bros.’ legal fees. 

Interestingly, as Variety reports, TWC had already registered “Lee Daniels’ ‘The Butler’” as a title of the film, back in June with the MPAA. So apparently they were prepared for this ruling in advance.

We are now ‘Lee Daniels’ The Butler’ – we are thrilled,” said TWC spokeswoman Dani Weinstein

So there you have it.

Lee Daniels' The Butler opens in just under a month - August 16th

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UPDATE 7/19/13 4:30pm.

I was hoping this had been put to bed already, since I hadn't read any updates in a little while. But it's still very much in play.

In short, the most recent update, courtesy of THR, states that Harvey Weinstein has enlisted the civil rights leader trio comprised of Jesse JacksonNAACP president & CEO Ben Jealous, and National Chairman of the Congress of Racial Equality, Roy Innis, in his fight against Warner Bros. over the use of the title The Butler.

Throwing their support behind Harvey Weinstein and the Lee Daniels-directed film, the trio released the following statement:

"We are all watching and waiting for the results of today's arbitration and hoping that Warner Bros. and the MPAA make the right decision on this important movie about civil rights."

The arbitration referred to above involves The Weinstein Co.'s lawyer David Boies, making another attempt today to secure the title for the upcoming movie (which opens in just under a month - August 16th), in an appeal hearing of the MPAA’s Title Registration Bureau. Thus far, Warner Bros has been on the winning side of every previous ruling on the matter.

My question is, what exactly are Jackson, Jealous and Innis going to do here, and why would Harvey Weinstein enlist their help? How much influence do they have with the MPAA? With Warner Bros.? Or is their plan to have this case instead tried in the court of public opinion, making public, rousing speeches, and calling their flock to rise up against this *injustice*?

This entire thing is becoming sillier to me. Somebody has to give eventually... and thus far, The Weinstein Company is losing.

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UPDATE 7/5/13, 3:30pm.

And the beat goes on... I don't know about you guys, but I'm really dying to see how all of this ends.

The latest is a lengthy letter that attorneys for Warner Bros sent to attorneys for The Weinstein Company, in response to TWC attorney David Boies' letter on behalf of the company, and director Lee Daniels’ personal appeal to Warner Bros, to allow the to keep the title. My update on that letter happened 2 days ago and can be read immediately after this new update.

There must be some real bad blood underneath all of this; it looks like one wants to teach the other a lesson.

Here's the incendiary letter, courtesy of Deadline:

July 4, 2013

David Boies, Esq.

Boies, Schiller & Flexner LLP

333 Main Street

Armonk, NY 10504

Re:The Weinstein Company/The Butler

Dear Mr. Boies:

We represent Warner Bros. Pictures (WBP) and Warner Bros. Family Entertainment (collectively, “Warner”). I write in response to your July 3, 2013 letter on behalf of The Weinstein Company’s (TWC). TWC’s cries of unfairness and its threats to sue Warner are unproductive and unwarranted responses to a situation that TWC alone has created.

Your letter conspicuously omits to discuss the actual course of events in this case. That is no oversight, of course, because TWC has flagrantly and repeatedly violated the rules of the Title Registration Bureau (TRB) of the Motion Picture Association of America, Inc. (MPAA). For many years, TWC (including its affiliates and its predecessor in interest, Miramax Film Corporation) has subscribed to the TRB rules and procedures. The TRB functions as the central registration bureau for its subscribers’ film titles of U.S. theatrical motion pictures. TWC is a voluntary subscriber to the TRB. In other words, TWC chooses to avail itself of the many services and benefits the TRB provides. In exchange, TWC, like anyone else who voluntarily elects to participate in the TRB process, agrees to be bound by the TRB’s rules and procedures. Over the years, however, TWC and its principals have operated in the TRB process with breathtaking hypocrisy. They have used the TRB rules and procedures to extract concessions from, and initiate arbitration against, other subscriber companies in order to advance TWC’s own interests. See, e.g., Phoenix Pictures/Miramax-Dimension Arbitration (Oct. 5, 1999) (awarding the Weinstein-controlled Miramax relief against Phoenix’s release of “Got To Be You”); New Line Productions/Miramax-Dimension Arbitration (Dec. 17, 2003) (awarding the Weinstein-controlled Miramax relief against New Line’s “Curse of the Mask”). At the same time, TWC has flouted those same rules if and when they have happened to conflict with TWC’s interests.

As TWC is well aware, TRB subscribers must register each and every one of their film titles and cannot use a title for which they do not have the rights under the TRB rules. See TRB Rules 3.1 and 5.1.2. Pursuant to TRB Rule 3.7.2.2, each subscriber may designate up to five hundred (500) titles as “Permanent Original Releases.” WBP chose to add its title, “The Butler,” to this list in May of 2010. Where, as here, a subscriber submits a title for registration that is identical to the title of a Permanent Original Release, TRB Rule 4.4.2.2 clearly provides that registration will be denied unless a waiver is obtained from the subscriber with the protected title. If a waiver is not obtained, the subscriber seeking to register the identical title can instead register a variation of that title. If the subscriber with the similar permanently protected title protests, the subscriber seeking to use the similar title can request an arbitration, and a panel of arbitrators then decides, based on numerous factors, including equitable considerations, whether or not there is “harmful conflict” between the titles, such that the party seeking to use the permanently protected title should be precluded from doing so.

These are the rules and procedures — among many others — which have been in place for decades, with which TWC is intimately familiar, and which TWC has invoked many times for its own benefit. And yet, as it has also done several times in the past, TWC has chosen to proceed in reckless disregard of the rules, apparently relying on a self-spun “Weinstein exception” to the rules whenever and wherever those rules do not solely favor TWC.

TWC’s violation of the rules in this case include the following:

(1)TWC began promoting its film in September 2012, two months before TWC even attempted to register the title with the TRB;

(2)TWC attempted unsuccessfully to register the title in November 2012, and continued to use the title without authorization for eight months after its registration was denied

(3)TWC delayed for four months seeking a waiver from WBP, during which time TWC continued to make unauthorized use of the title;

(4)TWC failed to timely register a similar title, that Warner would likely not have protested and, even had the matter gone to arbitration, would likely have resulted in TWC’s being able to use the similar title; and

(5) TWC continued to use the title for months after Warner declined to grant a waiver.

In light of the severity of TWC’s transgressions, it is unsurprising that the arbitrators ruled as they did. Indeed there was ample precedent for their ruling, including TWC’s own disturbing pattern and practice of flagrant TRB rules violations. For example, in 1997, the Weinstein-controlled Miramax released the motion picture “Scream” without having cleared the title in conformance with TRB rules. After the subscriber who protested Miramax’s unauthorized use sought arbitration, the panel, as the panel did in this case, enjoined Miramax from any further use of the title; prohibited Miramax from using the word “scream” in any form; awarded damages and attorneys’ fees to the opposing party; and ordered monetary sanctions for any prospective violations of the arbitration award. Similarly egregious violations of the TRB rules by your clients in connection with the motion pictures “Il Postino” (“The Postman”) and “Control” resulted in the imposition of similar injunctions and sanctions.

When viewed in light of the complete factual background, TWC could not reasonably have expected the arbitration in this matter to yield any result other than the arbitrators’ ruling. On the contrary, given TWC’s extensive experience with the TRB and intimate knowledge of the rules, it is truly astounding that TWC chose once again to flout the rules, especially when there were so many opportunities for TWC itself to obviate the harm that TWC now claims. Had TWC timely sought to register the title and timely sought a waiver from Warner, there would have been ample opportunity for TWC to register a clearly similar title if Warner denied the waiver. TWC could have registered any number of alternative titles featuring the word “Butler.” In fact, TWC registered the title “Lee Daniels’ The Butler,” which Warner did not protest and which TWC could easily have used. Instead, TWC insisted on continuing to use an unregistered, uncleared, protested title, giving Warner no choice but to bring an arbitration against TWC, not only to defend Warner’s own rights in this case but to defend the integrity of the TRB rules and procedures.

I also note that, as your client is well aware and contrary to what you have written in your correspondence, Warner never agreed that TWC could copy Warner’s protected title. TWC attempted to make this argument at the arbitration hearing and it was soundly rejected by the arbitrators. The evidence was clear and unambiguous that Warner expressly rejected TWC’s request for a waiver — including at least twice in writing — and that TWC continued to use the title in willful disregard of Warner’s rights and in violation of the TRB rules.

In light of the complete background, it is obvious that the accusations your letter makes are both baseless and fruitless, and that TWC is trying to twist this dispute into something it is not. Warner is in no respect trying “to restrict the marketing and distribution” of TWC’s motion picture. The fact that TWC is now using a campaign of misinformation about those rules and procedures to gin up publicity for the film is not lost on anyone. Indeed, the New York Times noted just yesterday that TWC is following its well-worn path of creating “well-publicized controversies” on the eve of a film’s release. http://artsbeat.blogs.nytimes.com/2013/07/03/its-weinstein-vs-warner-brothers-over-use-of-the-title-....

TWC’s attempt to re-litigate a case it lost in arbitration – whether in the press or in court – will never succeed. The TRB rules make it abundantly clear that TRB arbitration is the sole and exclusive remedy for resolving any and all title disputes. The courts do not allow parties like TWC to “sit idle through an arbitration procedure” and then collaterally attack that process in a lawsuit “when the result turns out to be adverse.” Marino v. Writers Guild of America, East, Inc., 992 F.2d 1480, 1484 (9th Cir. 1993). Your suggestion that the TRB rules that TWC voluntarily elected to subscribe to violate the antitrust laws is specious. See Guichard v. Mandalay Pictures, 2005 WL 2007883, at *4 (N.D. Cal. Aug. 22, 2005) (rejecting claim that TRB rules violated antitrust laws); Guichard v. Universal City Studios, 2007 WL 1750216, at *7 (N.D. Cal. June 15, 2007) (rejecting analogous claim that TRB rules were unfair business practices). And, your insinuation that there is some irreparable injury in TWC being subject to sanctions of $25,000 per day for continuing to flout the rules is meritless. If TWC believes that sanction is unwarranted, TWC can make that argument to the arbitration panel or in the appeal process that TWC has voluntarily decided to avail itself of. In all events, the idea that a sanction of $25,000 per day will cause some catastrophic harm to a corporation with the immense resources of TWC and the Weinsteins is self-evidently absurd. TWC’s litigation threats are just more hollow posturing by a party that does not have the facts, law or equity on its side. Let me assure you that Warner will vigorously defend any attempt by TWC to circumvent rules and procedures to which it has voluntarily subscribed and to which it is indisputably bound. It should go without saying that we expect TWC to preserve all relevant documents.

The foregoing is not a complete recitation of all of the facts and law pertaining to this matter, nor a waiver of any of Warner’s rights, remedies, defenses and positions, all of which are expressly reserved.

Very truly yours,

John W. Spiegel

JWS:rcp

cc:John Rogovin, Esq.

Henry Hoberman, Esq.

Floyd Abrams, Esq.

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UPDATE 7/4/13, 10am.

The latest on this is that The Weinstein Company plans to fight the arbitration decision, and have hired high-powered attorney David Boies, who recently successfully challenged Prop 8 in the Supreme Court.

And on top of that, director Lee Daniels has sent a letter to Warner Bros. Entertainment’s CEO Kevin Tsujihara, essentially pleading with him to let them keep the title. Here's a piece of the letter, which is now public:

"I have spent the last four years of my life working on the film, The Butler, and it is the proudest moment of my professional career. I am heartbroken as I write this letter to you. I made this film so I could show my kids, my family, and my country some of the injustices and victories African-Americans and their families have experienced in the fight for Civil Rights. Through the eyes of this loving and hard-working family, the film tells the story of the Civil Rights Movement from the sit-ins and the Freedom Riders, to Selma, Martin Luther King's assassination, and the election of the first Black President.

I am so proud of this movie. Every member of our cast worked for almost nothing so that this story could be told with only our very small budget. If we were to change the title a mere six weeks before we open, it would most certainly hurt the film by limiting the number of people who would ultimately see this important story. This movie is not a blockbuster, nor did we intend it to be. We just wanted to tell the dark and beautiful story of our nation's racial history, where we came from, and how far we have come."

Daniels then goes on to offer to arrange a private screening for Tsujihara. No word yet on whether he's accepted, and whether there has been any progress, so stay tuned...

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UPDATE: 7/2/13, 8:16pm. 

Say it ain't so! And I thought the entire thing was a fiasco that would end very differently than what's transpired tonight! 

According to VarietyWarner Bros. (WB) has won an arbitration over The Weinstein Company (TWC) over its use of the title, The Butler, for the upcoming drama which is already set for an August 16th release.

This means that TWC will have to select another title for the movie! Incredible! I didn't see this coming at all! 

Did I mention that the film is out in just over a month, and, needless to say, marketing materials for it (posters, trailers, clips, and more) already have "The Butler" imprinted all over them. Not to mention that, assuming this holds, the film's title and end credit sequences would have to be edited with whatever new title TWC comes up with.

From where I'm standing, this sounds like it could get very expensive for TWC, unless I'm just missing something.

I'd guess that some other kind of agreement will be reached between the two companies soon, so that TWC can keep the title as is. What exactly would make the WB happy in this case, I'm sure TWC probably has some ideas, since I'm guessing both companies previously discussed the matter privately at some point.

So here's the million dollar survey question ladies and gents: assuming this ruling holds, and TWC doesn't strike some sort of deal with the WB, what should TWC change the film's name to? 

Your picks, so dig in... maybe I'll get things rolling. How about: All About The Butler? The Butler Unchained? Precious Butler? Or maybe Butler Confidential? Or That Movie Set In The White House With All Those Celebrity Cameos & Starring The Guy From Ghost Dog. Or maybe just simply B. Or The B.

But first, if you're just joining us, catch up on what prompted the arbitration in the first place below:

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As Mike Fleming Jr, who reports on this for Deadline, notes, this does seem rather petty.

Warner Bros is the latest Hollywood company seemingly trying to use trademark law to stop another company from releasing a film with a title similar to one in its library.

According to Fleming, the story goes:

A title fight is brewing between The Weinstein Company and Warner Bros over The Butler, the Lee Daniels-directed drama that stars Forest Whitaker, Oprah Winfrey and David Oyelowo, with a stellar cast playing small roles as the occupants of the White House during Cecil Gaines’s tenure as butler for eight presidents. Warner Bros is trying to block Harvey Weinstein from using the title The Butler on the film, and it seems like a real “screw you.” Warner Bros is claiming it has rights to the title because of a 1916 short silent comedy called The Butler. That one was produced by the Lubin Manufacturing Company and released by General Film Company, and is now in the Warner Bros library. This sure sounds petty, and there is a high level of outrage at The Weinstein Company, I’m told. Particularly because within just the past few weeks, TWC raised a challenge to the Warner Bros film The Good Lie because it is close to the TWC title The Good Life. When Warner Bros lawyers called, TWC demurred and gave Warner Bros the necessary clearance. I’m told that TWC’s attempts to coax Warner Bros included appealing to them on the grounds this prestige film is the last from the late producer Laura Ziskin, the Spider-Man producer who was well liked in town. There have also been appeals made by director Daniels, to no avail. I’m not sure if Winfrey has reached out or not. This will go to arbitration shortly, and each side seems dug in.

Fleming adds that TWC is determined to use that title, so we can only guess that they'll do whatever is necessary to make it so, even if it means placating the WB in some way. 

Hollywood certainly has a long history of recycling movie titles, although I doubt that TWC was thinking about the WB's 1916 short film, when it acquired The Butler from Sony Pictures.

Interestingly, as I learned, one of the earliest similar *title fights* also involved the WB - when the Marx Bros., set to release A Night in Casablanca, in 1946, faced objection from Warner Bros., who argued that their title was much too similar to the WB's Casablanca, released 4 years earlier. 

Groucho Marx reportedly stated, humorously, that he "had no idea that the City of Casablanca belonged exclusively to Warner Brothers." TWC must be thinking something similar about "The Butler."

Most recently, last year, in a *title fight* that wasn't between two Hollywood film titans, but between an indie distribution company and a celebrated author, Curtis 50 Cent Jackson’s Mario Van Peebles-directed sports drama, All Things Fall Apart, got a name change from the original Things Fall Apart, when the film's distributor, Image Entertainment faced push-back from the late Chinua Achebe - all in an effort to avoid further confusion, as some assumed the film was an adaptation of Achebe's seminal literary work, Things Fall Apart, which wasn't at all the case.

My research tells me that the MPAA does have an internal procedure to settle title disputes among studios. I also learned that titles are not copyrightable, and that these title cases usually instead rely on arguments of unfair competition, alleging that a film's identical title might "confuse, mislead and deceive the public" into believing that the new film is related to or affiliated with the earlier one - especially if the subject matter is similar.

Unfortunately, I can't tell you what the WB's 1916 short film, The Butler, is about, because I couldn't find anything on it online. It does have an IMDB page, with cast and crew listed, but no synopsis. Maybe one of you reading this knows something I don't...

But I'm sure this *title fight* between the WB and TWC will be settled in time for TWC's release of The Butler, which is just about 1 1/2 months away - August 16th. And I doubt it'll end in a title change.

This article is related to: Forest Whitaker, Oprah Winfrey, Lee Daniels