12 Common Copyright Permission Myths

Though you may not believe all twelve of these myths, familiarity with them can

free your book or blog from legal hassles. Get it wrong, and an aggrieved copyright owner can block or remove your work by filing a simple online takedown 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, a copyright notice was mandatory, and a work published without a notice risked the loss of copyright protection if not promptly and adequately corrected.

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

Not true. Giving proper credit is not a defense against copyright infringement. Copyright infringement is using a work without the copyright owner's permission.  By contrast, you can plagiarize material not protected by copyright simply by taking credit for it. 

3.       I don't need permission because I only use a few words.

Not necessarily. How much you can borrow is a legal gray area. Sometimes, a small but important portion borrowed from a work can infringe. Since copyright law encourages creativity and innovation, courts may excuse specific socially productive but unauthorized uses. Those uses are called fair uses.  Fair use is a 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 may have 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 will adapt the original work.

No. You can't make a work your own by adapting it without permission.  Copyright law grants copyright owners the exclusive right to control modifications to their work. 

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

Not necessarily.  For example, a book or motion picture 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 stop the commercial use 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.  However, it is better to know now than later that a critical component of your work cannot be cleared for use.    

8.       Since I plan to use it for nonprofit educational purposes, I don't need permission.

Not necessarily.  The issue isn't the user; it's how the work is used. If the use 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 author's life 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 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 usually means it is no longer profitable. While that may trigger an author's right to reclaim their copyright, it doesn't mean the book is in 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.  A CC license allows specific uses for free. What those allowable uses are will vary.  For example, 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.  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

            Book Title Clearance & Trademark Registration Guide

            Book Contract Negotiation Checklist

LLOYD J.  JASSIN has practiced publishing, entertainment, and trademark law for over two decades.  Before 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.  Furthermore, 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.

Ask a Lawyer: Interviews and the Law

Q: I'm writing a book based on interviews I've done with political leaders, writers, actors, and other prominent people. Do I need written permission? What can I do to avoid being sued for libel?

A: What can possibly go wrong if you don't obtain a signed release? Plenty. Leading the parade of horribles is defamation. Will the interviewee claim the edited interview, either by omission, implication or innuendo, placed them in an unfavorable light?

 

In 2016, Katie Couric was sued by a gun advocacy group for deceptive editing of an interview in a documentary titled Under the Gun. While Couric beat the $13 million dollar defamation lawsuit on appeal, a simple release could have saved time, money and the stress. 

 

While there are defenses such as innocent construction (to defamation), truth (to defamation), fair use (to copyright infringement), and implied consent (to use in other media), because of the legal what-ifs and hazy boundaries of the law, the best practice is obtain a signed release.  

Click here for sample interview release forms.

 

Spoken Releases

 

There are many reasons authors do not obtain written releases, including deadline pressure on interviews conducted by phone or Zoom. While less reliable than a signed release, recorded consent is a viable alternative, provided the scope of rights is clearly defined.

 

At the beginning of an audio or video interview ask if you have permission to record the interview, and they understand that you may edit the interview and use it for future research or in different media.

It's important that the interviewee respond. If you edit or transcribe the interview accurately, and store the recording in a safe and accessible place, you've gone a long way to reducing the risk of a successful defamation or copyright infringement lawsuit. 

 

Of course, the law will hold you to your promise if the interviewee limits how or where the interview may be used. 

 

The Parade of Interview Horribles

 

A  Parade of Horribles

Copyright. One of the hotly contested issues in copyright law is who owns an interview. Some copyright scholars posit that an interview is jointly owned by the interviewer and interviewee. However, to qualify as a joint work, there must be evidence that the parties intended to be joint owners. If determined to be a joint work, the co-authors are afforded equal rights in the work, subject to to a duty to account to each other.   

The Copyright Office believes that an interview consists of two separate copyrights, i.e., the interviewer and interviewee own the words they spoke. A third theory is the interviewer owns the copyright in the selection and arrangement of the questions and answers. Because it's often unclear if the interviewer and interviewee shared an intent to be co-authors, the best practice is to get a signed release.    

 

If the ownership issue can't be resolved conclusively, you may be able to roll out the fair use defense. But, it's a partial solution. For example, it won't allow you to publish an entire interview.

Fair use allows writers, podcasters, and others to copy small portions of in-copyright works for socially productive purposes without permission. A defense to copyright infringement, it enables courts to avoid rigid application of copyright law where the strict application would "stifle the very creativity which the law is designed to foster."

Unfortunately, fair use is not amendable to mechanical rules. The fair use test takes into consideration or weighs these four factors: (a) the purpose and character of the use, including whether the use is primarily commercial in nature; (b) the nature of the copyrighted work; (c) the amount and importance of what's used in relation to the original work; and (d) if the use supersedes a market for the original?

Libel. Libel is a false statement about a living person (business or group) that harms their reputation. Truth is a complete defense to libel. Where the plaintiff is a celebrity or public figure, the plaintiff must show that the false statement was made with reckless disregard for the truth (aka actual malice). While a celebrity or other public figure may have a tough time winning a libel suit due to the constitutional actual malice standard, a well-drafted release will give you the right to edit and use the interview in any media without consent.

The gold standard is a well-drafted written release. Document signing apps like DocusSign and Adobe Sign are simple e-signature solutions. Today we're habituated to clicking OK boxes without much thought. So, getting a release signed need not be a burdensome task.

Media Liability Insurance

If you don't have a signed release, given the murkiness of the law, media liability insurance is something to look into. It's a specialized form of insurance that covers claims of copyright and trademark infringement, invasion of privacy, defamation, and other contextual errors and omissions. Some policies even cover claims of misappropriation of ideas and negligent publication. Most of these policies also cover the costs of defending a lawsuit, including attorney's fees and court costs.

# # #

 

Image:  Parade of Horribles and Antiques, Portland, Maine

Photographer:  Unknown

Year:  1920

Credit: Main Historical Society

Related Blog Posts

Libel in Fiction

Fair Use in a Nutshell 

Book Contract Negotiation Checklist 

Twelve Copyright Permission Myths 

Estate Planning for Authors 

Twelve Common Copyright Permission Myths

1.       There's no copyright notice, so I don't need to ask for permission.

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 an argument 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.       
 

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.  While copyright in a photograph of a celebrity may no longer be in effect, if the image of the celebrity is used for commercial purposes, it may violate the celebrity's right to derive financial benefits from her likeness. Similarly, the owner of an expired copyright may still be able to stop the commercial use of a related trademark, 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 a commercial use -- and it 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.  In 1998, Congress added 20 years to most copyright terms.  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 works created by an employee, specially commissioned works, and works published pseudonymously, the copyright term is even longer.

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 her copyright, it doesn't eject the book into the public domain.  

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

Yes, but restrictions may apply.  A CC license allows certain uses for free. What those allowable uses 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

            Book Title Clearance & Trademark Registration Guide

LLOYD J.  JASSIN has practiced publishing, entertainment and trademark law for over two decades.  He is an adjunct professor at NYU Publishing Program, where he teaches a course on digital rights and permissions.  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.

Authors Hold No Veto Over HathiTrust's Mass Digitization of Books

Quote of the Day

"I cannot imagine a definition of fair use that would not encompass the transformative uses made by Defendants’ MDP and would require that I terminate this invaluable contribution to the progress of science and cultivation of the arts that at the same time effectuates the ideals espoused by the ADA." - Hon.Harold Baer, Jr

On Wednesday, a federal district judge held that the mass digitization of books and other printed material by university libraries, funded by Google, was a fair use. The decision was a blow for The Authors Guild, which brought the lawsuit.  At the heart of the litigation was, as Publishers Weekly described it, "a digitization collective of research libraries . . . built with millions of “unauthorized” scans created by Google."

What the HathiTrust litigation makes clear is that the struggle over copyright is sometimes complicated, but not in this instance. As the music business learned (or should have learned), suing moms and groups of students for sharing music files does not endear you to the general public. Likewise, the prospect of denying library patrons with print disabilities access to books and other print materials, didn't go over big with Judge Harold Baer, Jr.

Are Literary Estates a 'Clot' on Creativity?

Book Review: Modernism & Copyright

The Chicago Manual of Style exhorts writers, editors and publishers to employ fair use “boldly.”  Easier said than done, suggests Paul K.Saint-Amour, editor of this thought provoking collection of essays that focuses on the tension between copyright and modernism.   Fair use, of course, is a doctrine that helps courts avoid the rigid application of copyright law, where rigid application would stifle the very creativity copyright law was designed to promote.  While essential to free expression, fair use is at best, an unpredictable doctrine.  

In the introduction to Modernism & Copyright (Oxford University Press), Saint-Amour, an associate professor of English at the University of Pennsylvania, tells us that his book explores how the “law shapes what is published, studied and canonized.”   Saint-Amour passes that task along to fourteen essayists from diverse fields, who discuss the interplay between copyright, privacy and publicity rights on the one hand, and the progressive agenda of modernists to adapt and borrow freely from others’ works. 

Walt Whitman's Niece

Billy Bragg & Wilco

No one reading this book will likely disagree that the unauthorized use of protected materials to create new art, music and literature is too often automatically thought of as an economic threat to the material that has been borrowed or bent.  The kind of permissiveness the book advocates for is in fact, a preference for a less regulated dialog between past and present – an enhanced ability to mix-and-match that is more in keeping with our digital present than our analog past.   What we lose and what we might gain by freely manipulating the past, can’t be known.  But what is clear from reading the book is how modernistic art, literature and music have been shaped haiku-like by the confines of intellectual property law.  

In a chapter on Ezra Pound, Robert Spoo, a law professor, laments that the general spirit of unpermissiveness and paranoia of the current copyright regime which befuddles and intimidates contemporary artists and authors.   In another era Ezra Pound called copyright “dishonest,” “rascally,” and a “clot” of law.   Unlike Pound who actually worked in a “more permissive and less propertized climate,” today’s artist, author  and composer, sitting in their studio or study, works under much greater pressure – and at their own peril -- to get the law right.   Today, the chilling penalty for getting copyright law wrong is receipt of a DMCA Take-Down Notice, or worse, a call to defend your art or scholarship in court.  Paradoxically, Spoo points out that “Today, the estates of James Joyce, T.S. Eliot, Samuel Becket, William Faulkner and other modernist authors use extended copyrights to discourage or control use of those authors’ works by scholars, critics and others.”  

Creativity is not a self-contained activity observes Celia Marshik, in her essay Thinking Back through Copyright.   Here, the focus is on Virginia Woolf’s feminist classics, A Room of Her Own (1929) and Three Guineas (1938).   She asserts Woolf’s words and sentences were intimately linked (but not in a parasitic sense) to recognizable voices from women’s literature.   “[N]o author works in that room alone,” Marshik points out.   Woolf herself , admitted that “masterpieces are not single and solitary births; they are the outcome of many years of thinking in common of thinking by the body of people, so that the experience of the mass is behind the single voice” (Room 65).   There are echoes here of Mark Twain:  “We have no thoughts of our own, or opinions of our own, we are a compost heap made up of decayed heredities, moral and physical.” 

All of this is background for three chapters on the intersection of copyright law and the law of estates and trusts.  These chapters should be of particular interest to readers of this journal.  Here, the focus is on publishing -- not music, movies or theatre.  Of the three chapters, attorney Mark A. Fowler’s contribution stands out for the clarity of its prose, and prescriptive approach to dealing with literary biography -- writing about the literary lives of writers. 

What makes literary biographies so successful is also what makes them so dangerous to undertake.    They rely on unpublished material and appropriate literary language designed to convey the personality of the writer who is under scrutiny.  This chapter surveys a trio of cases involving quotations from unpublished materials by J.D. Salinger, L. Ron Hubbard, and Richard Wright – a trio of dead authors whose estates harbor animosity against literary biographers.  The three chapters that follow include Carol Loeb Shloss’s essay on her suit against the Estate of James Joyce to adjudicate what constitutes fair use of  unpublished letters, and a pair of illuminating essays by Gertrude Stein’s literary executor (whose non-Joyce-like approach to permission requests is to honor the bohemian spirit of Stein); and Ezra Pounds’ literary executor.  

While following no single line of argument, the essayists would find no issue with the notion that reigning in copyright would expand diversity.   One of the central messages of the book is that copyright is in crisis.   The internet is a major mutation, changing our relationship to content.    Copyright, the book argues, is ill equipped to accommodate creator-publisher-consumers. 

For over 300 years publishing was a top down, multiple uniform copy, “All Rights Reserved,” “No Derivative Works,” “You Buy it You Own it”  industry.  The digital world is not uniform.   It is fundamentally altering our relationship to content by allowing creators to “borrow” and “recast” with near impunity what came before.   While not everything here is above criticism, Modernism & Copyright is a rare interdisciplinary work on the challenging topic of intellectual property.   Refreshingly, its focus is not just whether copyright will survive the digital deluge (a topic of discussion which has gotten old), but what impact copyright has had on the creative process.  

Recommended.   

_______________________________

Paul K. Saint-Amour (ed):  Modernism & Copyright

Oxford University Press, 2011, 381 pp.

Trade Paperback, $29.95

ISBN13: 978-0-19-973154-1, ISBN10: 0-19-973154-3

Lloyd J. Jassin

Originally Published in Publishing Research Quarterly (Springer)

How to Select a Book Title (and Not Get Sued)

Choosing the perfect book title is not just a marketing decision, it is a legal determination. It should provoke interest and curiosity in the book (or the product or service you sell on the back end) and not a lawsuit by an aggrieved trademark owner or removal of your listing via Amazon's report a violation and takedown tool.    

 

A trademark screening search will alert you if a book, podcast, or title of another creative work is likely to encounter legal problems.

 

Why Do a Trademark Screening Search? 

 

A screening search reduces the potential for trademark infringement claims. Before finalizing your title selection, it's important to do a preliminary search to determine if any similar or identical marks are used for related goods or services. While it is true that titles are not protected by copyright, if potential purchasers are likely to be confused about the source or sponsorship of a book, it could result in a trademark infringement or unfair competition claim. 

 

Making a Screening Search Part of the Process is Easy

  

A proper investigation includes using the Google search engine and the Trademark Office's 24/7 online database. These are invaluable tools for identifying obvious conflicts – identical or similar marks for related goods or services. Referred to by trademark attorneys as TESS, the free Trademark Electronic Search System database is located at http://tmsearch.uspto.gov. 

When doing a screening search, the central question is whether there is a confusing similarity to someone else's mark.  In evaluating the likelihood of confusion, the three key considerations are:

• Has the mark been registered? 
• How similar are the marks? 
• Are the goods or services related?
  

Similarities in sight, sound, and meaning, and the relatedness of the senior user's goods and services are the key vectors in any trademark infringement analysis. 

If the title you’ve selected is already registered by someone for related goods or services, absent a valid First Amendment defense (discussed later), soldier on and select another title. Put another way, if they cared enough to register their mark, there’s a good chance they are prepared to fight to protect it. 

CAUTION. Trademark rights are obtained through use, not registration.  That means you should also search the internet for marks that may raise legal issues. If seeking to register a trademark, a comprehensive full search and attorney clearance opinion is recommended. 

Free Expression and Fair Use Exceptions

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 as the title of a work that doesn’t have anything to do with trading on another party's goodwill, fame, or reputation. 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 them with a particular source. By source, the Trademark Act refers to the source of the physical or virtual goods rather than the author.

No matter how clever, single titles are not entitled to trademark registration.  However, if a single title attains secondary meaning -- a level of commercial magnetism associated with a runaway bestseller -- it can still be protected absent registration. 

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 trademark owner's rights. 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.

For a deeper dive on title clearance, click here. 

A Warning Before You Start Your Search

Given the subjective nature of of trademark law, deciding on your title depends on your risk tolerance, informed by search quality and legal analysis. When uncertain, it's wise to seek guidance from a trademark attorney. They can assess if your title is suitable for registration, and assist you in navigating the trademark registration maze.

How to Trademark a Book Title

A trademark registration gives you the exclusive right to use a trademark. Once you register a trademark, you can stop others from using both identical and confusingly similar marks for related goods or services.  

However, a single book title cannot be registered as a trademark unless it is used for a series of works (e.g., Harry Potter and the Philosopher's Stone, Harry Potter and the Chamber of Secrets).  In other words, a trademark can only be tied to a series of literary works, not a single title. 

The rationale for the “single title rule” is that once a book enters the public domain, it should remain there, and the public should have the right to identify it by its original title.

So how do you protect the first title in what you hope will be the next Hunger Games trilogy or Harry Potter series of fantasy novels? 

How Do I Protect the First Book in a Series?

The are to two ways to acquire trademark rights. The first is based on being the first to use the mark in connection with the sale or marketing of specific goods or services. The second is to be the first to file an Intent to Use application with the Patent and Trademark Office. After the PTO trademark examiner approves your Intent to Use application, you will have six months within which to file a Statement of Use. If you need more time to publish the second book in the series, you can file for multiple six-month extensions. By filing an Intent to Use application, you are staking out a claim to the title. 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.

When you obtain the registration for your title, the date you filed the Intent to Use application will serve as the date of first use. That gives you priority over those who began using the trademark after you filed.

A slightly different process is involved if you have an established book series. In either instance, you will need to publish book two in the series to obtain a federal registration.

 

If You Can't Protect a Single Title, Protect the Business or Website

While you can't register a single book title, you may be able to register a trademark for related goods or services, e.g., your business or a companion website. If consumers would reasonably assume that the owner of a product or service 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 (discussed later). 

 

Tip. Remember, trademark infringement is not simply a book-to-book, blog-to-blog, or app-to-app comparison. While conventional wisdom says you can't compare apples to oranges, they are both grown in orchards, are considered a fruit and are sold in the same section of your local supermarket. That makes them related for purposes of trademark law. If you don't have a book series, register the mark for the business behind the book, the website, or a related product or service. 

Unfair Competition

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.

Did you know the trademark for an existing business could prevent you from using a book title?

Suppose you are the owner of a successful business.  Under those circumstances, if consumers saw an unauthorized book with a confusingly similar title to your company and believed it was endorsed by you, that deceitful practice would fall under unfair competition law. 

Case & Comment. 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 the magazine and Ralph Lauren’s Polo brand were associated with fashion, elegance, and affluent lifestyles in the public's mind. 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.

For a deeper dive on trademark fair use and title clearance, click here.  

###

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 the 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 a likelihood of confusion.

3. In evaluating search results, consider the following:   

. Does the word or phrase have widespread public recognition?

. How similar is the word or phrase to your proposed title?

. Is the word or phrase used for related goods or services?

4.  Important! 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.   

5.  Protectable titles in one media may be protected in different media if they 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. 

6.  Descriptive terms that have not achieved public recognition due to widespread media attention and strong sales are not protected under trademark law and cannot serve as the basis of an infringement claim. 

7.  Not just words, but the look and feel of a book jacket can infringe an existing trademark. Courts look at the total image of the book cover (format, lettering, distinctive words, illustrations, colors used, and layout) to ascertain if there’s a likelihood of confusion.

8.  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 #7, #14

9. A single book or other creative work title is not entitled to trademark registration unless used for a series of creative works. See #10

10. While a single title for a creative work (e.g., book, movie, or song) 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.  

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

12.  Search for registered trademarks using the Trademark Office’s free TESS database.  Next, search your favorite search engine for common law (unregistered) marks for related goods and services. If you intend to register your title after you've ruled out obvious conflicts, obtaining a full search and registrability opinion is highly recommended. 

13.  While title clearance and trademark searches are similar, it is best to work with a trademark attorney to register a series title or the name of a business.  They can tell you if the mark is registrable and improve the chances of registration.

14.  WHEN IN DOUBT, CONTACT A TRADEMARK ATTORNEY. 

For More Information:

Contract attorney Lloyd Jassin at jassin@copylaw.org or at (212) 354-4442.  His offices are in the heart of Times Square, in The Paramount Bldg., at 1501 Broadway, FL 12, NYC, 10036.  Follow the Law Firm and Lloyd on Twitter at http://www.twitter.com/lloydjassin 

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