How to Remove a Counterfeit Book from Amazon
An author's brand represents the goodwill built over the years through the consistent quality of their literary output. Amidst a deluge of inaccurately labeled and untrustworthy AI-generated content, building and protecting that brand, whether a series name or a pseudonym, has become essential to enjoying a durable career.
Trademark law protects consumers from being misled. It also protects the investment that authors and publishers make in building their brands. A federally registered trademark gives the owner the right to sue in federal court. Additionally, if they record their registration with Amazon's Brand Registry (discussed later), they gain the ability to stop sellers from using the trademark, or variations of that trademark, for related goods or services.
Unfair competition law, governed by overlapping state and federal 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, podcasts, and businesses) have been approved or endorsed by others. Even where a pseudonym or series title has not been registered, it's a violation of unfair competition law to misrepresent the source or approval of creative works.
Recently, author and publishing strategist Jane Friedman discovered multiple books published on Amazon under her own name that she did not write, constituting a clear case of free-riding on her reputation, or false designation of origin under both state and federal law.
Jane's unregistered brand is associated in the public's mind with her in-depth knowledge of writing, book marketing, digital media, author platform building, and navigating the changing landscape of the publishing industry. Fortunately, Jane was able to use her influence, rather than litigation, to get Amazon to take the books down. But there's a third way to combat free-riding on an author's reputation -- Amazon's Brand Registry.
Registering a series title, pseudonym, or well-known author's name with the Trademark Office opens the door to Amazon’s Brand Registry, which offers powerful tools for removing unauthorized content. The registry serves as a cost-effective alternative to litigation when the game isn't worth the
candle due to the uncertainty and expense of trademark litigation. The one hitch is the series title or name must be perceived as a mark for literary services.
While the Trademark Office may haggle over whether a series title or an author's name "functions as a mark," authors and publishers must be vigilant in protecting both their copyrights and their brands.
Amazon's Copyright Infringement Tool
If your beef with Amazon is with someone using your individualized expression without permission, that's a copyright violation, the Brand Registry is the wrong tool for the job. In that case, use Amazon's report the infringement takedown tool.
For a deeper dive into the trademark registration process, here's what the Trademark Manual of Examining Procedures has to say about the registration of personal names and pseudonyms. These guidelines are intended for Trademark Office examiners to follow. Pretty dry stuff, I fear, except for brand geeks like myself and fans of Corky the Clown and The Lollipop Princess (discussed below). 'Spoiler alert:' Both the Corky the Clown and The Lollipop Princess trademarks were approved.
1202.09(a) Names and Pseudonyms of Authors and Performing Artists
Any mark consisting of the name of an author used on a written work, or the name of a performing artist on a sound recording, must be refused registration under §§1, 2, and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, and 1127, if the mark is used solely to identify the writer or the artist. See In re Polar Music Int’l AB, 714 F.2d 1567, 1572, 221 USPQ 315, 318 (Fed. Cir. 1983); In re Arnold, 105 USPQ2d 1953, 1957-60 (TTAB 2013); In re First Draft, Inc. 76 USPQ2d 1183, 1190 (TTAB 2005); In re Peter Spirer, 225 USPQ 693, 695 (TTAB 1985). Written works include books or columns, and may be presented in print, recorded, or electronic form. Likewise, sound recordings may be presented in recorded or electronic form.
However, the name of the author or performer may be registered if:
- (1) It is used on a series of written or recorded works; and
- (2) The application contains sufficient evidence that the name identifies the source of the series and not merely the writer of the written work or the name of the performing artist.
In re Arnold, 105 USPQ2d at 1958.
If the applicant cannot show a series or can show that there is a series but cannot show that the name identifies the source of the series, the mark may be registered on the Supplemental Register in an application under §1 or §44 of the Trademark Act. These types of marks may not be registered on the Principal Register under §2(f).
See also TMEP §1301.02(b) regarding personal names as service marks (below).
1301.02(b) Names of Characters or Personal Names as Service Marks
[P]ersonal names (actual names and pseudonyms) of individuals or groups function as marks only if they identify and distinguish the services recited and not merely the individual or group. In re Mancino, 219 USPQ 1047 (TTAB 1983) (holding that BOOM BOOM would be viewed by the public solely as applicant’s professional boxing nickname and not as an identifier of the service of conducting professional boxing exhibitions); In re Lee Trevino Enters., 182 USPQ 253 (TTAB 1974) (LEE TREVINO used merely to identify a famous professional golfer rather than as a mark to identify and distinguish any services rendered by him); In re Generation Gap Prods., Inc., 170 USPQ 423 (TTAB 1971) (GORDON ROSE used only to identify a particular individual and not as a service mark to identify the services of a singing group).
The name of a character or person is registrable as a service mark if the record shows that it is used in a manner that would be perceived by purchasers as identifying the services in addition to the character or person. In re Fla. Cypress Gardens Inc., 208 USPQ 288 (TTAB 1980) (name CORKY THE CLOWN used on handbills found to function as a mark to identify live performances by a clown, where the mark was used to identify not just the character but also the act or entertainment service performed by the character); In re Carson, 197 USPQ 554 (TTAB 1977) (individual’s name held to function as mark, where specimen showed use of the name in conjunction with a reference to services and information as to the location and times of performances, costs of tickets, and places where tickets could be purchased); In re Ames, 160 USPQ 214 (TTAB 1968) (name of musical group functions as mark, where name was used on advertisements that prominently featured a photograph of the group and gave the name, address, and telephone number of the group’s booking agent); In re Folk, 160 USPQ 213 (TTAB 1968) (THE LOLLIPOP PRINCESS functions as a service mark for entertainment services, namely, telling children’s stories by radio broadcasting and personal appearances).
See TMEP §§1202.09(a) et seq. regarding the registrability of the names and pseudonyms of authors and performing artists, and TMEP §1202.09(b) regarding the registrability of the names of artists used on original works of art.
