Recent discussions in PubWrite and in the social media circles over the cease and desist filed against an indie author by a black-light acrobatics group (of recent notoriety on a reality show) prompted me to ask John to share some thoughts on trademarks.
He will be making periodic appearances here to discuss matter of interest and importance in the evolving publishing world.
So take it away, Counselor!
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Time to be creative, time to inspire, and time to be
original! You get your glass of wine,
find your stimulating view, sit by the window pane, light the candles, and look
to begin another adventure with your favorite literary characters. However, as you begin to sit down and write
your novel, this little guy with a briefcase and glasses jumps up into your
window and yells, “make sure to protect yourself, legally.” You question, why do lawyers need to be
involved in everything? Was Shakespeare
wrong when he penned “first thing we do is kill all the lawyers” as a
compliment?
As an artist you may question the need to protect
yourself legally. What does that mean?”
Most writers might be aware that they must copyright an original piece
of work to prevent infringement and flat out stealing, but how can an author be
sued for trademark infringement?” What
does a trademark protect against?
The Supreme Court ruled in 1995 in the case of Qualitex
Co. v. Jacobson Products Co, U.S. Supreme Court (1995), that "trademark
law prevents others from copying a source-identifying mark, it 'reduces the customer's
costs of shopping and making purchasing decisions,' for it quickly and easily
assures a potential customer that this item -- the item with this mark -- is
made by the same producer as other similarly marked items that he or she liked
(or disliked) in the past. At the same
time, the law helps assure a producer that it (and not an imitating competitor)
will reap the financial, reputation-related rewards associated with a desirable
product."
Ok so what does that really mean? Legally it means that you cannot title your
book, for example, “Coca-Cola” or even “Coke” as the Coca-Cola® Company has
that trademarked. Notice the ® or a ™ after
the name - these are both considered trademarks and both legally protect the
one who has the original trademark. The ®
means the trademark is registered while the ™ means it is in the process of
being registered. Even the shape of a
Coca-Cola® glass bottle is trademarked because once you see the bottle you know
the product inside the bottle is Coca-Cola®.
Copyrights and trademarks can often be
confused. A copyright is granted as soon
as the piece of work is created, while a trademark might take time for
recognition before it is actually trademarked.
Furthermore, as copyrights eventually end after 70 years plus the life
of the author, a trademark can be renewed indefinitely.
In the literary world, if a purchaser looks at your
book title and might identify it with a trademarked product, believing both
could be produced by the same company or individual, there can be an
infringement.
Just think of finally having the title of your book,
the one you thought about night after night, and subsequently getting your
cover art for the book – then receiving a cease and desist order from the one
who holds the trademark for the same or even a similar mark! Legal awareness must be considered as soon as
you create something. According to the
Trademark Dilution Act of 1995, the owner of a trademark can stop another from
using its trademark if there is a resemblance, similarity, or the title of your
book might harm the trademark owner of its full value of the trademark. “Unlike
copyrights that deal with the marketplace of expressive ideas, trademarks deal
with the marketplace of goods and services” (Jassin, 2012).
Nevertheless, keep the legal issues in mind when
creating your work. Laws are involved in
everything we do and wherever we go. You
have the right to have your work protected and after all your hard work and getting
your creative juices down on paper, it would be a shame to see someone else get
the credit you so rightly deserve.
Keep writing!
John A. Bermingham, Esq.
John A. Bermingham is an Attorney at Law who
specializes in entertainment law, contractual transactions, and intellectual
property. He can be reached at (732)
500-2081 or johnabermingham@aol.com.
Additionally, Facebook friend me at www.facebook.com/people/John-Bermingham/172801692
Here is a great website to give you information on
trademarks and copyrights: http://www.uspto.gov/trademarks/basics/trade_defin.jsp.
Reference
Jassin, L.J.(2012). CopyLaw.com. Retrieved from
http://www.copylaw.com/new_articles/trademrk.html
Thanks John for stopping by today. A quick question: A trademark is not just the words, right? It is the entire design?
ReplyDeleteUsing the indie author situation I referred to above and the fact that there are several book's carrying the same title, as well as a rock band that pre-dates all. How does something like that work?
Another example: A rolling stone gathers no moss is a come idiom. How and what does Rolling Stone trademark?
Hi Karen:
ReplyDeleteThanks for your questions. Yes, a trademark is a word or group of words that identifies a company, an individual or even your book! If a design is used for your book, that can and should be trademarked. Trademarks can also be symbols, think of a symbol that represents a company such as the McDonald’s Arch. Trademarks can be phrases, such as “Just Do It®” – trademarked by Nike. Even devices can be trademarked.
If there are several books carrying the same title, the first individual, hopefully you, to obtain the trademark will be the one who has rights to it. That individual, again hopefully you, will have to show that the other book titles, with the same title, are confusing consumers who might think they are buying your book.
As to your question whether the Rolling Stones could claim they own the phrase “a rolling stone gathers no moss” would be difficult because it would depend if consumers believe that this phrase and how it is being used will confuse customers that they are actually buying something that is being released by the band, the Rolling Stones. Rolling Stone is also a magazine. How come the Rolling Stones do not sue Rolling Stone magazine? This is because they are two separate products and entities that cannot be confused. However, I am sure Rolling Stone magazine ran it by their lawyers to get permission from the band as well.
I hope I have answered your questions. I am here to answer any others you or anyone else might have.
Happy writing!
John A. Bermingham, Esq.
Wonderful post, John and thank you Victoria. It is my understanding that-- not in the title-- but in the contents of a book one can use song titles, book titles and other potential trademarked items without fear of infringement. Is that true.
ReplyDeleteI know that's meat for another post and I also think it would be a good one.
Thanks so much for making my day interesting. I'll be sure and check out your writing, John.
I have the same question as Danniehill here. I know it's been a while since this post, but is John around? :)
ReplyDeleteHi Leona:
ReplyDeleteSorry for not answering the question. Yes you can use song titles and other copyrighted/trademarked materials in the contents of the book under the Fair Use Doctrine.
If the purpose and use of the trademarked/copyright material involved is used for creating something new like your story it can be used under the Fair Use Doctrine. As long as you are not taking the material word for word, or using the trademark for the sole purpose of profiting from the trademark it can be used. I hope that answers both your questions!
Best regards,
John Bermingham, Esq.