Thursday, May 20, 2021

What’s the Difference Between a Copyright and a Trademark? Hint: It's a TRIX Question

Like Madame Curie and Mariah Carey, copyrights and trademarks are often mistaken for each each other -- the irony being, the main function of a trademark is to prevent consumer confusion.

Trademarks protect brand recognition and reputation. They do so by preventing others from copying source identifies such as words, slogans, series titles and designs that allow consumers to identify an distinguish the source of one product or business from another. Trademarks are earned over time.  Copyrights on the other hand, spring into life upon creation.  Copyright law protects the way ideas are expressed - not the ideas themselves. Under copyright law, where the focus is on authorship, not branding, short phrases, literary titles and names receive no protection. 

While copyrights and trademarks protect different property interests, it’s not unusual to find overlapping copyright and trademark rights in the same work or product. Take Trix cereal for example. 

The way Trix cereal boxes (not to be confused with Kix cereal, also by General Mills) are dressed up for sale at your local market, with bright colors and bold graphics, and other branding elements, conjures up an association with General Mills.  The body of law that protects the overall look of  the Trix cereal box, the Trix name, Trix Rabbit, and the marketing slogan, Silly Rabbit, Trix is for Kids is trademark law.  Also appearing on the graphically rich Trix cereal box is the General Mills logo, another brand identifier, which makes the packaging easier to recognize as a General Mills product and reinforces the Trix brand's status as a leading American cereal brand. 

Trix Rabbit's fruitless attempts to use disguise (balloon seller, bugs bunny) and deception to flimflam children into giving the hare a bowl of cereal are minor swindles. Cartoon con games punishable by fine in the court of cartoon justice.  However, if you use deception to steal confused cereal customers from a competitor, that constitutes trademark infringement and unfair competition, actionable under both state and federal unfair competition laws.    

Coexistent with trademark protection, under copyright law, General Mills has the ability to protect against unauthorized copying of their cartoonish cereal mascot. No Trix cartoons,  comic books, children's books, or collectibles without the General's permission. Finally, patent law protects General Mills' proprietary process for turning a yummy slurry of "sucrose, fruit puree and calcium carbonate" into gay little corn puffs in a rainbow of colors. Three legal theories . . . one silly rabbit. 

Cereal is the quintessential American breakfast. The next time you hear or sing “America the Beautiful” (“For amber waves of grain…”), stop and think about our unalienable right to life (not the cereal), liberty and intellectual property. Keep in mind that if  you falsely advertise you are selling the "real McCoy" that sort of scam has consequences under trademark and unfair competition law. 

How to Distinguish Kix from Trix Brand Cereals (Satire)

KIX® has been dedicated to helping kids get a bright start to their day since 1937. -- General Mills

In 1947, General Mills offered kids a way to light up their day with a Kix (not Trix) atomic "bomb" ring promotion. For a box-top plus 15 cents, kids could send away for a Kix Atomic Bomb Ring Atop the ring was a nuclear warhead that held a secret compartment.   

According to the Toy Tales website, after removing the red base of the warhead, kids could look "through [a] toy spinthariscope’s (a device for observing individual nuclear disintegrations) plastic lens while in a dark room [that] revealed flashes of light." 

The ring's instructions read, "you'll see brilliant flashes of light in the inky darkness inside the [ring's secret] atom chamber."  The frenetic streaks of light were caused by polonium alpha particles in the chamber striking the ring’s zinc sulfide screen.  No worries. The traces of polonium, a rare, and highly radioactive metal discovered by Madame Curie, only had a half-life of 138 days. 

During WWII, General Mills (not a real general) helped the war effort by working on torpedoes and gun sights for the U.S. military.  As the maker of the quintessential American breakfast, and defender of the American homeland, the leap from torpedoes and gun sights in 1944 to atomic bomb rings in 1947 must have made sense on the page.  

General Mills introduced the borderline confusing Trix brand cereal in 1954 as an alternative to their healthy corn puff cereal Kix.  Their distinguishing characteristics?                                       

Trix is for kids . . . not rabbits.

Once upon a time in America, Kix kids glowed in the dark.


Thursday, April 29, 2021

Getting Out of a Contract With a Publisher

Life of copyright contracts are much shorter than they appear.

Once a contract has been signed, it typically cannot be changed unless all parties to the contract agree to the modifications.  Not so with contracts in the publishing and entertainment industries.  While a copyright assignment or license may purport to give a publisher or producer the exclusive right to an author’s copyright for the life of the copyright, in reality, their hold on the copyright is much more tenuous.  

A 1976 amendment to the Copyright Act allows authors to terminate copyright grants, which includes assignments and licenses, 35-years after initial publication, provided authors (or their heirs) send properly drafted notices of termination and duly record them with the Copyright Office.  Calculating the notice and recapture dates is the author’s sole responsibility.  Don't try this at home.  Seek professional help. 


The premise is that when these older contracts were signed, the author had little or no negotiation power. When the Beatles signed their first contract, Paul and George were both minors.  Little Richard reportedly sold the music publishing rights to Tutti Fruiti to Specialty Records for $50.00.  That was the driver for Congress giving authors a copyright termination right.  This right cannot be waived.  With the exception of work for hire agreements, this powerful “re-valuation” mechanism trumps written agreements which state they are in perpetuity.  

The opportunity to terminate or renegotiate a copyright grant comes around just once, which is unfortunate for authors as the rules governing termination are dense.  They can also be unforgiving.   

Thursday, January 9, 2020

Libel in Fiction

Q: My main character is loosely based on a real person. I mean, that's who inspired me. I never identify him by name (he's my ex-friend) and I've made up 90% of the events that happen in the book. I'm worried after the book becomes successful, that he'll come back and try to take a stake in the millions.  What can I do to prevent this?  - GWB

A:  So you ask, “How do you discourage your friend from becoming a plaintiff after reading your novel and fictional portrayal of him?”

A basic understanding of libel law is helpful. Libel is defined as a false and defamatory statement of fact communicated to a third-party about an identifiable living person that damages their reputation. While it's logical to assume that a work of fiction that describes a world that doesn't exist is incapable of defaming a real person, that's not the law.    
For a novel, or other fictional work to be actionable, its detail must be convincing. The description of the fictional character must be so closely aligned with a real person that someone who knows that person would have no difficulty linking the two. And, there must be an implicit belief that what the author wrote – notwithstanding disclaimers – was true. What about a fictionalized autobiography?  If a character (i) is depicted in a defamatory manner; (ii) is recognizable; and (iii) a reasonable reader can understand the defamatory statement to refer to the that person, there's no veil of fiction to hide behind for purposes of libel law.   

Happily for writers (and The Weekly World News) when the original upon which a fictional character is based sues the claim generally doesn't survive summary judgment. That's because courts recognize a number of defenses and privileges to defamation claims, including substantial truth and statements of opinion. Another reason many defamation lawsuits fail is that the plaintiff fails to make their case.  Under U.S. defamation law the plaintiff bears the burden of proving the defendant acted negligently.

Despite the breathing space the First Amendment affords writers, not all libel-in-fiction lawsuits are resolved in favor of the author,  their publisher or producer partners. For example, in 2009 in the “Red Hat Club" case, the plaintiff was awarded $100,000 in damages by a Georgia court for a fictional portrayal modeled on her. The “original” claimed that her fictional double, falsely depicted in the bestselling novel as a sexually promiscuous alcoholic who drank on the job, defamed her.  From a libel defense perspective, this drawn-from-life portrayal failed, in part, because the author (and former friend) included personal characteristics that made the plaintiff recognizable, and mixed them with other traits that were false and defamatory, but, still believable.

Now back to your question. Are you sure you never identify the real person who inspired your main character? Aside from their name, can they be identified from their ethnicity, appearance, historical, employment or other details found in your book, so that someone who knew them (or knew of them), could identify them and assume that the statements in your book were truthful? While you may not identify your ex-friend by name, if you haven’t completely disguised the person, the likelihood of a successful claim for falsely portraying them increases. Is your friend a public official or public figure?  If so, they have another hurdle to jump.  Unless he can prove by clear and convincing evidence that what you wrote was deliberately or recklessly false, there's a good chance - but no guarantee - you'll be excused from liability under what's known as the "Actual Malice Standard."

When Fiction & Reality Collide

Merely changing the name of your friend isn’t enough.  You might consider transforming him beyond recognition. Why? Courts consider plausibility.  A broadly drawn caricature of your friend, which is difficult to reconcile with your ex-friend, can be an effective device to stave off a libel lawsuit. For example, Kim Pring, a former Ms. Wyoming, sued Penthouse over an article that described Ms. Pring’s ability to cause men to levitate by performing oral sex. Initially, the Federal District Court found for Miss Pring awarding her $26.5 million in damages.  On appeal, however, the Court of Appeals reversed the decision holding that no reasonable person could believe that was described was actual facts. Be outrageous. If the reader accepts the novel as pure fiction, libel will not be found.  Parody – if done properly can take the chill out of free speech.  [Note the italicized “if”].  If done improperly, and the hypothetical reasonable reader thinks your failed parody conveys actual facts, the First Amendment may not be available to you.  "Obvious cues" like levitation or time travel can help telegraph what is First Amendment protected fiction from fact. When it doubt, have the book vetted by a publishing attorney.        
Here’s a run-down of a few techniques that can minimize the chance of getting sued for libel in fiction: (a) use disclaimers (more about that later); (b) disassociate the doppelgänger from their real-life counterpart by writing composite characters; (c) depict but do not disparage; and (d) wait for the real-life person to die before publishing your fiction. Under U.S. libel law, if the original is dead their estate cannot sue for libel (unless the suit was begun while the deceased was still alive).  If (d) gives you an additional reason to outlive your literary prey, consider it my gift to you. And remember, he who laughs last, laughs best. With regard to option (d), revenge is best served cold at your publication party -- preferably with a Sauvignon Blanc, Riesling, or Gewurztraminer. 

Disclaimers, while helpful, are by nature, self-serving. While a disclaimer cannot insulate you from a libel suit, it may support the defense that identification with the real person in your work is unreasonable. The words “A Novel” in the subtitle of a book is considered by some attorneys to be the best form of disclaimer.  In addition, a full disclaimer should appear on the reverse title page of your novel, or skillfully integrated into the introduction or preface of your book. Closing credits in a motion picture might read: 

"Certain characters, characterizations, incidents, locations and dialogue were fictionalized or invented for purposes of dramatization . . . [W]ith respect to such fictionalization or invention, any similarity to the name or to the actual character or history of any person . . . or any product or entity or actual incident, is entirely for dramatic purposes and not intended to reflect an actual character, history, product of entity." [Closing credits to Martin Scorsese's The Wolf of Wall Street.]

Change the physical characteristics of your main character enough to disguise their identity. The risk of being sued is reduced if your characters are likeable and honest, rather than than vicious unscrupulous miscreants. While it's tempting to retaliate in print against those who have injured us, if a character drawn from life isn’t likable, and you can't support that depiction with sufficient evidence, fictionalization or rewriting becomes essential.    

Create your own Frankenstein monster - a single character stitched together from a combination of personalities, physical traits and biographical details of others. A composite character provides evidence that no real person was portrayed - or defamed.  If the fictional other is not "of or concerning" an identifiable person, you have a viable defense to libel.    

I would be remiss if I did not bring up three other legal threats all writers face. First, defamation lawsuits can be triggered by mis-identification. The law of defamation is not concerned with who you intended to target, but who gets struck by your barbed arrow. Unintentional defamation is actionable. "Woops!" is not a viable defense. From a legal perspective, where the  arrow lands - not where you intended it to fall - is what matters. Lawyers who vet, and writers who write, need to watch out for same-named individuals who are falsely, but, believably, misidentified. 

While publication of truthful information is generally considered a complete defense to libel, private individuals can still sue for highly offensive or embarrassing truths. So, if your book goes too far and reveals intimate areas of a person’s life – intimate matters  concerning their sexuality, family life, medical procedures, and mental (in)capacity – you may invite a right of privacy claim.  Are there defenses? Yes, but, that's beyond the scope of this post.

The right of publicity involves the unauthorized use of a person’s name or likeness for commercial gain. It is related to the right of privacy. Fortunately for novelists, due to free speech considerations, courts historically construe publicity rights narrowly.  But, that’s the subject of another Q&A.

If you feel uncomfortable with the legal minefield of libel, right of privacy and right of publicity law, consult a media law or publishing attorney. They will review your manuscript for potential liability and suggest ways to mitigate or avoid many of the risks associated with writing about real people and actual events.

Disclaimer: This article discuss legal issues of general interest and is not designed to give any specific legal advice concerning any specific circumstances. Libel law is fact specific and national consistency is lacking. Each state applies the law of that state within its own borders, provided it does not conflict with  Constitutional law as interpreted by the Supreme Court of the United States. Many countries do not recognize the protections the U.S. give authors and publishers. We strongly advise that you obtain professional legal advice before acting upon any of the information contained in this blog post.

(c) 2016.  Updated 2020.


Smith v. Stewart (Red Hat Club Case)
Pring v. Penthouse
Bindrim v. Mitchell (case ended badly for the author) 
Carter-Clark v. Random House (Court of Appeals)
Carter-Clark v. Random House (Supreme Court)

Libel in Fiction Quotes

"I don't get hurt or bleed; hair doesn't muss, it's one of the advantages of being imaginary." 
    - Ted Baxter in the The Purple Rose of Cairo
"All literature is gossip."  - Truman Capote

"Novelists are inspired gossips." 
    - Margaret Drabble

“But we are the sum of all the moments of our lives---all that is ours is in them: we cannot escape or conceal it. If the writer has used the clay of life to make his book, he has only used what all men must, what none can keep from using. Fiction is not fact, but fiction is fact selected and understood, fiction is fact arranged and charged with purpose."
    - Thomas Wolfe's Preface to Look Homeward Angel

Tuesday, October 8, 2019

Jassin Quoted in Fortune

I'm quoted in Fortune: Twitter Took a Trump Tweet Down, but Should It Have? And is Nickelback to Blame?


Lloyd Jassin discusses fair use.

In Jeff John Roberts' column in Fortune I talk about Fair Use, and the expanding scope of transformative use in the context of political discussion.   

Friday, November 23, 2018

Sometimes Success Comes Later in Life . . . Sometimes in the Afterlife



Victor Bohnam Carter's Authors by Professiontells the sad story of John Milton, blind, deprived of his pension and suffering from financial hardships, signing a hellish publishing contract for his epic poem, Paradise Lost. "The agreement was dated April 27, 1667, and provided that Milton receive £5 for the first edition or impression of 1300 copies, £5 for the second, and the same for the third.” Under the agreement, Milton transferred "All that Booke, Copy, or Manuscript" to his publisher with "the full benefit, profit, and advantage thereof, or w[hic]h shall or may arise thereby." Milton died  in 1674.  During his lifetime he received a total of £10 from his publisher Samuel Symons.  Milton’s widow later sold the copyright to Symons for £8. 

*In today's currency, £5 is approximately £570.00

Milton publishing contract
Contract for John Milton's "Paradise Lost"