Monday, June 20, 2011

Atlas Productions Lost WIPO’s Arbitration Case

Adaptation of novels and stories for movies is not a new concept. It has been in existence for decades. However, not all adaptations are free from disputes. In fact entertainment and media industry disputes are rising all over the world.

Such entertainment and media industry disputes are also increasing fast in India and other Asian countries. However, the disputes of entertainment and media industry in Asian countries, including India, are mostly settled in a court of law and not through alternative dispute resolution (ADR) or online dispute resolution (ODR) mechanisms.

Strangely, Asian countries are almost always “respondents” when it comes to fighting such disputes at international organisations like World Intellectual Property Organisation (WIPO). This is contrary to the position in developed countries where persons or institutions approaching international institutions are petitioners or complainants. WIPO follows the Uniform Domain-Name Dispute-Resolution Policy (UDRP) of ICANN for resolving various domain name related disputes.

One such entertainment industry case that has recently come before WIPO was filed by Atlas Productions. The case involved the movie adaptation of Atlas Shrugged novel. Last year its production began and Atlas Shrugged: Part 1 was showed in select theaters earlier this spring.

Shortly after the opening, Atlas Productions, a New Jersey company, filed for UDRP arbitration against the owner of the domain name, claiming that it had acquired the exclusive movie rights to Atlas Shrugged by assignment in 1992. Unfortunately, the company, represented by Loeb & Loeb, LLP, was unable to provide never a copy of that assignment to the WIPO Panelist who arbitrated the dispute. Moreover, it was unable to prove that the owner had registered the domain in bad faith; notably, the domain was registered more than five years before Atlas Productions began to promote the movie.

Ultimately, the WIPO Panelist denied the complaint. The Panelist also held that “Evidence, not allegations, is necessary. And nothing is more fundamental to a Policy proceeding – or more within a complainant’s control – than its right to enforce the trademark upon which it bases its case. If Complainant did acquire trademark rights by contract, documentary or other evidence of such rights was surely available to it. Absence of such evidence raises real doubt about Complainant’s entitlement to bring this proceeding.”

This is a good decision as evidence is the core of any complaint and if evidence itself is missing the complaint is frivolous and deserves to be set aside. Since entertainment and media industry disputes would further increase in the future, Perry4Law and Perry4Law Techno Legal Base (PTLB) suggests that media houses must have a clear cut policy in this regard.