Suppose you come up with a shortcut to best-selling success. You analyze the top-selling dystopian series and write a book using similar settings, structure, characters, and themes. You don’t copy the original, merely incorporate generic elements not protected by copyright. Then you create a cover that looks similar to the best-seller’s. Same fonts, same imagery, similar title. You want readers to get the message that your book is just like their favorites.
Copyright problem? Probably not, if the new work is original.
Trademark problem? You bet.
Many writers (not to mention lawyers) are befuddled by the distinction between copyright and trademark. Both are forms of intellectual property, meaning they are creations of the mind, not the hand. They share legal terms such as infringement, fair use, and registration. But some creations are protected by copyright law, others by trademark, and some by both. No wonder we are confused.
Here’s a Quick Primer
Copyright: A creation is protected by copyright automatically as soon as it is fixed in a tangible medium, such as a piece of paper or a hard drive. Even if the creation sits in a desk drawer, never seeing the light of day as a book, the creator owns it (unless it’s a work-for-hire which will be the subject of another post). The creator has the exclusive right to publish, display, record, license, modify, commercially exploit, or even destroy the work, subject to the Fair Use exception.
Trademark: Creating a trademark is not as simple. A trademark is commonly known as a brand name, like Coca-Cola or CitiBank or Costco, although it may also be a logo, slogan, décor, packaging, or anything else which is associated with a particular product or service in the minds of consumers. It is created only by being used in the market. If you create a product, give it a brand name, but stick it in a desk drawer instead of marketing it, you would not have a trademark in that brand name no matter how brilliant.
So copyright law protects the contents of your book, and trademark law protects the brand you create by marketing yourself and your work.
How Are These Sisters the Same, But Not the Same?
Infringement: Using a copyrighted work or a trademark without authorization may be infringement, the word is same as is the potential liability including injunctions, damages, and attorneys’ fees. In copyright, the mere act of copying someone’s work is infringement. Trademark infringement requires more; the unauthorized use must create a likelihood of confusion as to the origin of the goods or services, something much harder to prove.
For example, when Jim Henson Productions introduced the Muppet character Spa ‘am, Hormel, the makers of the meat product SPAM, filed suit claiming trademark infringement and dilution. They called the puppet a “grotesque and noxious-appearing wild boar” that is “evil in porcine form.” Henson Productions won because the court found there was no likelihood that consumers would think the fuzzy puppet and the processed meat came from the same company.
What is trademark dilution? Under a relatively new law, the owner of a famous trademark may bring an action to stop any use that blurs or tarnishes the mark whether or not there is confusion in the marketplace. For instance, if someone came out with Johnson & Johnson cigarettes, you can bet lawyers would get right on the case. ToysRUs successfully brought a dilution claim against adultsrus.com, a porno site.
Expiration: The copyright in a work created in the U.S. today will last for the life of the author plus 70 years. Trademarks do not expire automatically. They last as long as the brand name is used in the market and has not gone generic. Many common trademarks are over 100 years old, including John Deere, Goodyear, and Campbell’s Soup.
Fair Use: Writers often ask me if they can mention a brand name in their work, such as having their characters drink Coors beer while wearing Reeboks. Yes, you may mention trademarks if the use fits within the definition of Fair Use, with some limitations.
- Use a light touch. Mention a trademark in passing, such as a character who claims to be vegan scrambling to hide a Whopper wrapper. Use only so much of the trademark as is necessary, and do not make it appear as if your work is somehow associated with the brand. I would not name a character Betty Crocker or Homer Simpson. Using a famous trademark in a title can be tricky. Your use might be parody or fair use, but run it past an intellectual property attorney before you release the book.
- Don’t go generic. Don’t say your characters “googled” the new boy in town. Say they did a “Google search.” Companies, such as Google, are proactive about discouraging the use of their trademarks as generics.
Reputational harm: Just as you should steer clear of defaming people in your copyrighted work, avoid tarnishing or disparaging a trademark, particularly with food products. Many states have “veggie libel” laws under which you could be sued for stating a food product is not safe. Oprah Winfrey was sued by a group of Texas cattlemen after she said “Mad Cow Disease” had stopped her from eating beef. (She won.) I doubt many of these laws would survive a First Amendment challenge, but no one wants to be the test case.
You may use a trademark to make truthful statements, even if they are damaging. Sometimes trademark owners send intimidating lawyer letters or DMCA takedown notices, when their marks are used in unflattering ways, even if everything the writer says is true. If you find yourself targeted, consider talking to an attorney.
Writer friendly: A writer who understands something about trademarks has an additional tool to protect his or her creations.
- Book Titles: A book title is not protected by copyright but may be protected by trademark law. The title to a series of books such as the For Dummies series, or a title of a single book that has become famous, such as The Da Vinci Code, is considered a trademark and will be vigorously defended. Should your title become closely associated with your book and your book only, you may have a valid, common law trademark.
- Characters: Distinctive characters may be protected by trademark law. As you would expect, an advertising character such as the Pillsbury Dough Boy is protected, but so is Harry Potter. While no one has a copyright or trademark on the generic idea of a boy wizard, if you add the distinguishing traits of a lightning bolt scar and round glasses, you are into trademark territory.
A Few Other Tidbits
You do not need to use the TM or ® symbol when mentioning a trademark. The only time you see that is when a company is trying to remind the public that their trademark is not a generic name, such as Kleenex®.
You may register a trademark with the U.S. Patent and Trademark Office, but the process is more costly and complicated than registering a copyright. It may not be necessary, since a common law trademark exists without registration. If you think you have or will have a trademark worth registering, work with a consultant or attorney with experience in the area.
If you are going to self-publish under a publishing imprint name, then you should do a trademark search before you adopt the name. I talk about choosing an imprint on my blog and in my book, Self-Publisher’s Legal Handbook.
Helen Sedwick, is a Contributing Writer for The Book Designer. She is also an author and a California attorney with thirty years of experience representing businesses and entrepreneurs. Her latest book is Self-Publisher’s Legal Handbook: The Step-by-Step Guide to the Legal Issues of Self-Publishing.
You can find more information about Helen here.
Disclaimer: Helen Sedwick is an attorney licensed to practice in California only. This information is general in nature and should not be used as a substitute for the advice of an attorney authorized to practice in your jurisdiction.