Monday, December 13, 2021

Trademark Registration and the Single Book Title

A single book title cannot be registered as a trademark, unless it is used for a series of creative works, which raises the question, how do I protect the first book in a series?  


The Single Title Rule

The catch-22 of book title protection is that a single book title cannot be registered as a a trademark unless it has been used on a series (e.g., the work is labeled "volume 1," "part 1," or "book 1"). 

So how do you protect a book title while you are waiting for book number two to be published in what you hope will be the next Hunger Games trilogy or What to Expect series? 

Problem Solved

The solution is to file an “Intent to Use” trademark application for that book title with the United States Patent and Trademark Office. By filing an Intent to Use application, you are planting a flag in the ground.

While the first book in a series cannot be registered (explained by later), the Trademark Office will allow you to file a trademark application on an Intent to Use. Assuming your application meets the minimum filing requirements, when the second book in the series is published, and a Statement of Use is filed, the Trademark Office will re-evaluate the application. The key benefit of filing on this basis is that an Intent to Use application will temporarily block other later filed trademark applications for identical (or confusingly similar) marks for related goods, including series titles.  

When you obtain the registration for your title, the original filing date will serve as the date of first use. That gives you priority over those who began using the trademark after your filing date.

If you are already using the mark for an established book series, a slightly different process is involved. In either instance, to obtain a federal registration, you will need to publish book two in the series.   
 
How To Protect a Single Book Title
 
While you can't register a single book title, you can register the trademark used by the business behind the book. If consumers would reasonably assume that a business or blog owner gave permission to publish a book with a confusingly similar title, but they didn’t, that deception may rise to the level of unfair competition. 
 
Comment. While conventional wisdom says you can't compare apples to oranges, the fact they are both grown in orchards, are considered fruit, and sold in the same section of your local supermarket, make them related for purposes of trademark law.  To put it differently, trademark infringement is not simply a book-to-book, blog-to-blog, or app-to-app comparison. 
 
Unfair competition law is commonly used as a cudgel to go after bad actors who try to deceive consumers into falsely believing their goods (including books, blogs and businesses) have been approved or endorsed by others. Even where a trademark has not been registered, it’s a violation of unfair competition law – and commercial morality -- to misrepresent the source or approval of a creative work.


In a case involving the Ralph Lauren Polo brand, a court permanently stopped the unauthorized use of the name Polo for a lifestyle magazine. In granting the injunction, the court rationalized that both the magazine and Ralph Lauren’s Polo brand were associated in the public’s mind with fashion, elegance, and affluent lifestyles. While the First Amendment will allow you to write a book about Ralph Lauren and the fashion brand’s cultural significance, you cannot ride on Ralph Lauren’s designer coattails to boost your business by falsely implying an association when none exists.

Pro Tip. If you are a business owner with a single book title associated in the public's mind with that business, that title may be protected if consumers were to see an unauthorized book with a confusingly similar title and reasonably believe it was associated with your business.  

Why Can’t a Single Title Be Registered?
 
Unlike copyright which offers finite protection, a trademark can endure for as long as it is used.
The premise of the “single title rule” is that once a book enters the public domain, the book should stay in the public domain and the public have the right to call it by its name. 
 
Can I Use this Title?

The central question when doing a title clearance or trademark search is whether the public will believe your book was published or otherwise approved by someone else. The Trademark Office's free online database of every federal trademark that’s been registered or applied for in the U.S. is an invaluable tool for identifying obvious conflicts – identical or similar marks for related goods or services. Known as TESS (Trademark Electronic Search System), the database is located at http://tmsearch.uspto.govIf the title you’ve selected is already registered by someone for related goods or services, absent a First Amendment defense, soldier on and select another. If they cared enough to register their mark, there’s a good chance they are prepared to fight to protect it. 

CAUTION. TESS search results are not a reflection of the real world. They do not include unregistered marks. If registration is contemplated, a full search, including state trademark databases and internet sources, by a professional trademark search firm is recommended.

Keep in mind that not every use of a trademark (or similar title) without permission is an infringement. There are many legitimate reasons to use a particular word or phrase in the title of a creative work that doesn’t have anything to do with trading on the goodwill, fame, or reputation of another party. For example, words that merely describe the contents of a work are - at best - weak trademarks and receive no protection without proof that consumers associate it with a particular source. By “source” the Trademark Act refers to the source of the physical or virtual goods, rather than the author. While single titles are not entitled to trademark registration, if a single title attains secondary meaning -- a level of commercial magnetism associated with runaway bestsellers -- it can be protected. Generic titles (100 Best Science Fiction Movies) standing alone are not entitled to trademark protection.­­­­   In analyzing whether a title infringes a trademark or another title, courts balance the right to speak freely against the rights of the trademark owner. While using a disclaimer (the subject of a future post) is not a magic bullet, a prominent disclaimer can help reduce the potential for consumer confusion.


A Warning Before You Start Your Search

Trademark Registration of Book TitlesBecause of the malleability of trademark law, evaluating a search report is as much an art as it is science.  Put another way, the decision to move forward may come down to how much risk you are willing to take, which is a business decision informed by the quality of the search and the legal analysis. When in doubt, consult a trademark attorney. Your trademark attorney will advise if your mark is even registerable as a trademark.  Additionally, they will help you navigate the trademark registration maze. 


How Do I Establish Ownership of a Title? 

Once you have selected your mark, you, or your attorney, can file either an Intent to Use trademark application, or one based on actual commercial use, online at www.uspto.gov.  Assuming your application meets the minimum filing requirements, it will be assigned to an examining attorney for review. If there are irregularities with the application, the examiner will issue what’s called an Office Action. An Office Action states the legal basis for a refusal to register. Some refusals are relatively easy to overcome, e.g., unacceptable specimens refusals, and improper description of goods and services.

Substantive refusals include confusingly similar to a mark in an existing registration or pending application.  Since a trademark must be distinctive, another common refusal is the mark merely describes an ingredient, quality, characteristic, function, feature, purpose or use of the goods or services covered in your application. Refusals to register are par for the course. Some can be overcome by cogent legal arguments. Those with fatal flaws cannot. If the objection is minor, the trademark examiner may call you, or send you an informal email requesting information.  But, because trademark examiners cannot provide legal advice, the Trademark Office recommends that you use the services of a law firm that is familiar with Trademark Office practices. 

Keep Track of Trademark Office Deadlines

A trademark registration can last forever, provided timely renewal applications are filed, and the mark continues to be distinctive for the goods or services it is linked to. The following is a brief United States Patent & Trademark Office overview on how to maintain your trademark:

For a trademark registration to remain valid, an Affidavit of Use (Section 8 Affidavit) must be filed: (1) between the fifth- and sixth year following registration, and (2) within the year before the end of every ten-year period after the date of registration.  The registrant may file the Section 8 Affidavit within a grace period of six months after the end of the sixth or every tenth year, with payment of an additional fee.  The registrant must also file a Section 9 renewal application (Section 9 Renewal) within the year before the end of each successive 10-year period following the date of registration, or within a grace period of six months thereafter, with payment of an additional fee.  Assuming the Section 8 Affidavit and Section 9 Renewal are timely-filed as indicated above, the registration will be renewed for a 10-year term.  If the Section 8 Affidavit and Section 9 Renewal are not timely filed, the registration will be cancelled.  Registrations cancelled due to the failure to file a Section 8 Affidavit and Section 9 Renewal cannot be revived or reinstated.

Trademark Notices

Federal registration allows you to use the ® symbol. If your mark is unregistered you may use a superscript ™ after the mark. While trademark notices are not legal requirements, they have legal significance. Like a "No Trespassing" sign, a trademark notice gives notice of your rights. That makes it more difficult for a trademark infringer to assert a good faith defense. While willfulness is not a precondition to a profit award, willful infringers are treated more harshly than innocent ones, including, in exceptional cases, awarding attorneys’ fees.

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TITLE CLEARANCE CHECKLIST

1.  Avoid titles that would confuse people into mistakenly believing that your work is associated with, endorsed by, or licensed for use by another party.    

2.  Likelihood of confusion (the test for trademark infringement) isn’t just about confusion between similar literary titles. Protectable titles in one media (movies, video games, podcasts) may be protected in different media (books, sound recordings) if there is likelihood of confusion.

4. In evaluating search results consider the following:   

            Has the term or phrase achieved widespread public recognition? 

            How similar are the marks? 

            Is the mark used on related goods or services?

5.  To be protectable a trademark must be distinctive. Registration is not required.

6.  Goods / services can be related if they are in a competing field, are marketed through the same trade channels and sold to the same class of consumers, or if it’s reasonable for consumers to believe the trademark owner approved the use of the title. 

7.  Use only so much of a mark as is reasonably necessary to describe the trademarked goods or service and do nothing in conjunction with that which would imply sponsorship or endorsement, such as using the same style of lettering or layout.   

8.  Descriptive terms that have not achieved public recognition as a result of widespread media attention and vigorous sales are not protected under trademark law and cannot serve as the basis of an infringement claim. 

9.  Courts compare the total image of products and their packaging (size, format, lettering, distinctive words, illustrations, coloration, and layout) to ascertain if there’s a likelihood of confusion.

10.  The mere use of a trademark in a title is not an infringement if the title is  (a) artistically relevant to the underlying work and (b) no explicit suggestion is made that the trademark owner endorsed, sponsored or approved the work.  See #9.

11. title of a single creative work is not entitled to trademark registration unless it’s used for a series of creative works. (see #12 for exception to the single title rule).

12. While a single title (book, movie, sound recording) cannot be registered as a trademark, if it becomes broadly popular and associated  with a single source, especially when it starts generating spin-offs, and merchandise licensing tie-ins, it may be protected under unfair competition law.  

13.  It’s fair use to use a trademark in its descriptive sense to truthfully describe the trademark owner’s goods or services, provided there's no suggestion made that the trademark owner endorsed, sponsored or approved the work.

14.  Search for registered trademarks using the Trademark Office’s free database located at https://tmsearch.uspto.gov.  Next, search for common law (unregistered) marks using your favorite search engine. 

15.  Marks only need to be confusingly similar, not exactly alike. Don’t ignore descriptive marks that have become associated with a single source over time.   

16. Protectable titles in one media may be protected in different media if there is likelihood of confusion.

17. While title clearance search and trademark searches are similar, it’s best to work with a trademark attorney when attempting to register a mark.  They can tell you if the mark is registrable and if it is, improve the chances of registration.


Related Posts 

Trademark Law and Book Titles

Common Copyright Permission Myths

 

 © 2022 Lloyd J. Jassin  COPYLAW is a service mark of Lloyd J. Jassin

 DISCLAIMER: This article discusses general legal issues of interest and is not designed to give any specific legal advice pertaining to any specific circumstances.   It is important that professional legal advice be obtained before acting upon any of the information contained in this article.


Friday, December 10, 2021

12 Common Copyright Permission Myths

Though you may not believe all twelve of these myths, familiarity with them can keep your book or blog free from legal hassles. Get it wrong and an aggrieved copyright owner can block or remove your work by filing a simple online take down notice -- all without filing a complaint in court.  Worse still, it can spark costly and time-consuming litigation.  

1.       There's no copyright notice, so no permission is required.    

Not true.  Since March 1, 1989 copyright notice has been optional. Before that date, copyright notice was mandatory and a work published without a notice risked loss of copyright protection if not promptly and adequately corrected.

2.       If I give credit I don't need permission.

Not true. Giving credit means you can look at yourself in the mirror and say you are not a plagiarist. However, attribution is not a defense to copyright infringement, which, unlike plagiarism, is a legal offense. Copyright infringement is the violation of one of the exclusive rights granted to copyright owners.  By contrast, you can plagiarize material not protected by copyright simply by taking credit for it.

3.       Since I'm only using a few words I don't need permission.

Not necessarily. How much you can borrow is a legal gray area. Sometimes even a small (but important) portion borrowed from a larger work can infringe. Keeping with the view that copyright law should encourage creativity and innovation, not unduly suppress it, courts may excuse certain socially productive, but unauthorized uses. Those uses are called fair uses.  Fair use is defense against the rigid application of copyright law. It is determined on a case-by-case basis. It considers what's been borrowed, how much was borrowed, how it was used, its importance, and the economic impact it has on the original.  If you borrow the "heart" of a work, it weighs against fair use. Creative works are less amenable
to a fair use defense.    
 
4.       I don't need permission because I'm going to adapt the original work.

No. You can't make a work your own by adapting it.  Copyright law grants  copyrights owners the exclusive right to control modifications to their work.  If you add, or even delete,  material from someone's work without permission, you have created an unauthorized derivative work. 

5.       Since the work is in the public domain, I don't have to clear permissions.

Not necessarily.  A book or motion picture, for example, may have fallen into the public domain for technical reasons, but there may still be copyrights to contend with. While a book may be in the public domain, photos or other materials that appear in the book may remain legally protected.  Similarly, the composer of an in-copyright soundtrack, to an otherwise public domain film, can restrict the exhibition of that film by claiming a right to the music within.  If a character falls into the public domain, the former copyright owner may still be able to stop the commercial use of of that character if the use falsely implies their support of the use.         

6.       My publisher will handle the permissions.

Probably not.  Most publishers place that burden of clearing and paying for permissions on the author's shoulders.   

7.       I can always obtain permission later.

Later may be too late. Copyright owners have the unfettered right not to grant you permission.  It is better to know now than later, that a critical component of your work cannot be cleared for use.    

8.       Since I'm planning to use my work for nonprofit educational purposes, I don't need permission.

Not necessarily.  The issue isn't the user, it's the manner of use. If the use is falls outside the bounds of fair use -- even a nonprofit educational institution can be held liable for copyright infringement.  

9.       I don't need permission because the work I want to use is more than 75 years old.

Not necessarily. For works published after January 1, 1978, copyright protection lasts for the life of the author plus another 70 years.  For a pre-1978 work by a sole author, the maximum term of copyright protection is 95 years from the date the work was published or registered.  For a work created by an employee within the scope of their work, or a specially commissioned work, copyright persists for 95 years from the date of publication or 120 years from the date of creation, whichever expires first.

10.      The material I want to quote is from an out-of-print book. Out-of-print means that the work is in the public domain.  Correct?

Not necessarily.  Out-of-print does not mean out-of-copyright.  When a book goes out-of-print, it is no longer commercially valuable. While that may trigger an author's right to recapture their copyright, it doesn't eject the book into the public domain.  See #9 above. 

11.     A Creative Commons ("CC") license means I can use the material without permission.  

Yes, but restrictions may apply.  CC license allows certain uses for free. What those allowable uses are will vary.  Some CC licenses place restrictions on commercial and uncredited uses.  Some permit modifications, others may not.  To determine what is allowable, you must read the license carefully.  
  
12.    I found a photo on the Internet.  Since it was uncredited, I can use it in my book.    

Not true.  Neither the ease with which users can upload or download online content, nor the fact that content was posted anonymously on the internet, places it in the  public domain. 


Related:
A Primer on Fair Use

LLOYD J.  JASSIN has practiced publishing, entertainment and trademark law for over two decades.  Prior to becoming an attorney he was Director of Publicity for Prentice Hall Press, a division of Simon & Schuster.  He is co-author of The Copyright Permission and Libel Handbook (John Wiley & Sons).  Contact: The Law Offices of Lloyd J. Jassin, 1501 Broadway 12th FL, New York, NY 10036 | (212) 354-4442 (tel.) | Jassin@copylaw.com www.copylaw.org | Twitter

DISCLAIMER:  This article is not intended as legal advice.  Because the law is not static and one situation may differ from the next, the author assumes no responsibility for actions taken based on information contained in this article.  Be aware that the principles contained in this article are subject to exceptions and qualifications.  Thus, when in doubt, seek legal advice from an experienced copyright or media law attorney, or err on the side of caution, and obtain permission or an appropriate release.

Monday, November 29, 2021

The Author's Estate: A Primer for Authors, Executors & Heirs

By Lloyd J. Jassin & Ronald M. Finkelstein 

The focus of this article is on lifetime planning to ensure the beneficiaries of your literary estate are in a position to take control of your copyrights and legacy.

The control and licensing of published works and unpublished manuscripts is an awesome responsibility. Long term planning is needed because copyrights are long term propositions. For works published before 1978, copyrights last for 95 years from the date of first publication. For works created after 1977, copyright lasts for the life of the author plus another 70 years.

Who will deal with the myriad of issues that arise during the life of a copyright? Read on.

How to Keep Your Work Alive

While during your life you may be able to play catch-up with legal formalities, unless you have a well-drafted will, or have created a valid trust (or both) for the benefit of others, you have left the ownership and care of your creative or literary legacy largely to chance.

John Keat's 1820 Will
Ideally, authors should name a "Literary Executor" in their will.  An "executor" is a person responsible for settling a deceased person's estate. Among the duties of a General Executor (as opposed to Literary Executor) are contacting an attorney to file a petition for probate of the will; collecting debts owed to the estate; filing for life insurance and other benefits; contacting an accountant (or attorney) to prepare the decedent's final income tax returns, a federal estate tax return and state estate and inheritance tax returns as may be required; and notifying the beneficiaries named in the will. 

A Literary Executor, as opposed to a General Executor, is the


person selected for the limited purpose of managing your published and unpublished after you pass on. The person responsible for keeping your works and reputation alive can be a family member, a trusted business associate, collaborator, agent or attorney; or some combination thereof.  

One court described the Literary Executor's role as "requir[ing] a delicate balance between economic enhancement and cultural nurture." If you have made the appropriate provisions in your will, your Literary Executor will distribute all of the literary property that you owned at the time of your death, and manage your literary estate on an ongoing basis.  

The Literary Executor, acting on behalf of the beneficiaries under your will (e.g. family members, a designated charity, a research library or archive), will be responsible for entering into contracts for exploitation of your copyrights and other intellectual property rights; controlling access to unpublished works; collecting royalties; maintaining your copyrights and legacy; and, if called for, donating your letters, unpublished manuscripts, and other literary materials to a library, special collection or historical society. 
Unlike a general executor who gets the deceased's estate ready to distribute, the literary executor's job is not for a limited time.  It is coextensive with the life of the copyright.
Because of the enduring, and changeable, nature of copyrights (e.g. revised editions, film adaptations, new technologies), the duties of a Literary Executor, or Literary Trustee, projects decades into the future and are ongoing. 

Be forewarned.  Copyrights are complicated. For example, a literary executor is trusted to advise an author's heirs on the process of copyright termination.  The Copyright Act gives an  author's heirs the inalienable right to terminate certain agreements made during an author's lifetime - even if those agreements were in perpetuity.  The mechanics of the termination process are astonishingly complex. Notices must be served within a prescribed period.  If the author's heirs miss the window, or file an improperly drafted notice, the grant or transfer made during the author's lifetime continues in full force for the life of the copyright.    

Selecting a Literary Executor

A General Executor will often be a spouse or other family member who is entrusted with the moral and financial responsibility of protecting copyrights, entering into contracts, and guarding reputations. Because of the specialized nature of these responsibilities, you should consider entrusting the care of your papers, existing contracts and unpublished works to a Literary Executor, who may, or not be, a family member. 

By taking the time to carefully select a Literary Executor, you lessen the likelihood of bitter infra-family disputes over control of your work or works. Family squabbles over copyright control can easily frustrate the ability of scholars, publishers and producers who want to quote, publish or produce your work.  And, if your final wish is that your unfinished manuscripts go unpublished, you can provide in your will that your Literary Executor destroy your unpublished works after your death. By way of example, Ernest Hemingway (1898 - 1961) made it clear during his lifetime that he did not want his unfinished and unpublished story fragments and manuscripts published after his death. However, since his will was silent on the subject, his estate edited and released not just his early stories, but  three unfinished novels (one of which was a posthumous collaboration with his son, Patrick). All three were reviewed poorly.

Ideally, your Literary Executor should be someone who understands how the publishing industry works. That person should also be comfortable with negotiating contracts, and  savvy enough to hire an attorney with appropriate expertise. A Literary Executor should also be someone who will carry out your intentions - even at the expense to your beneficiaries of foregoing untapped royalties. And, since all things come to an end -- including Literary Executors -- you should provide in your will for a replacement when the estate's Literary Executor dies or becomes incapacitated.

Defining the Literary Executor's Duties


Because the duties and powers of a Literary Executor are not defined by statute, it is imperative that the person drafting your will take great care in describing the scope of your Literary Executor's duties. The powers of a Literary Executor should be as broad and comprehensive as possible, unless, of course, you believe there should be limitations, qualifications or conditions imposed upon your Literary Executor (e.g., different executors appointed for book publishing and theater-related matters).

In preparing the powers of a Literary Executor, you must consider the following questions: 

  • Will the Literary Executor have the sole and exclusive right to make all decisions regarding appropriate publication, republication, sale, license or other exploitation of your work? Or, should she merely be appointed as an advisor to the General Executor?
  • Will the Literary Executor be responsible for preparing unfinished or unpublished manuscripts for publication and seeing those works through publication? 
  • Will the Literary Executor have the right to terminate copyright licenses?
  • Will they have the power to destroy any letters or papers they believe should be destroyed? 
  • In return for their services, will the Literary Executor receive a fee or commission for their services? What is fair compensation? What about reimbursement for expenses? 
  • Will the Literary Executor be required to maintain a separate bank account for such monies? 
  • Will the Literary Executor have the sole right to sue for infringement of copyrights? 
  • Will the Literary Executor have the authority to pay accountants attorneys, agents, subagents and others? 
  • In the event the Literary Executor is unwilling or unable to perform her duties, what are the provisions for appointing her successor? Or, will the General Executor assume those duties?
While a family member may agree to work for free, attorneys and literary agents will most likely seek a fee of between 10% and 15% for new contracts they negotiate on behalf of the estate. With regard to administering existing contracts, fee arrangements can vary greatly depending upon the size of the literary estate and the responsibilities of the Literary Executor.

The Literary Trustee 

In some instances, an author may create a lifetime (“inter-vivos”) trust and transfer literary assets to the trust. In this case, a trustee will be appointed to carry out responsibilities similar to an Executor. In such instances, the author appoints a "Literary Trustee" who acts in much the same manner as a "Literary Executor" would under a decedent's will. Furthermore, if an author names trusts as beneficiaries under his will and literary assets will be transferred to such trusts, then the author must also name, in addition to a Literary Executor, a Literary Trustee (who would be the same person) in order to continue acting in such a capacity after the literary assets have been transferred to the trusts.

Valuation


If you have accumulated enough wealth so that your assets will be subject to an estate tax upon your death, then the Executor will be responsible for valuing all of your assets at that time, including manuscripts, copyrights and contractual rights derived from the publication and reproduction of your works. The Executor (or Literary Executor, as the case may be) should hire an appraiser with significant experience in appraising -- or valuing -- these interests. Authors with significant estates should meet with their attorney or accountant now to determine whether any lifetime planning can be employed to reduce the value of their estates at their death so that more assets can pass to their heirs.  

(c) 2002 -2022 Lloyd J. Jassin and Ronald M. Finkelstein

Lloyd J. Jassin, JD is a publishing attorney. He counsels clients on contract, licensing, copyright, trademark, unfair competition, libel, right of privacy and general corporate law matters. His practice includes drafting and negotiating publishing and entertainment industry contracts, intellectual property due diligence, trademark prosecution, dispute resolution and litigation. He is a graduate of Benjamin N. Cardozo Law School, and is co-author of The Copyright Permission and Libel Handbook (John Wiley & Sons).  He can be reached at 212-354-4442 or via email at Jassin@copylaw.com, or you can visit www.copylaw.org 

Ronald M. Finkelstein, JD, CPA, is a Tax Partner at Marcum, a nationally recognized accounting firm, and national Co-Partner-in-Charge of their Trusts and Estates Practice group. He can be reached at 631-414-4370 or by e-mail at ronald.finkelstein@marcumllp.com, or you can visit his firm's website at www.marcumllp.com)

NOTICE: This article discusses general legal issues of interest and is not designed to give any specific legal advice pertaining to any specific circumstances. It is important that professional legal advice be obtained before acting upon any of the information contained in this article.

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