Authors and Trademarks

Posted on 12 September 2012 by Claire Ryan

Well, well, well, here’s an interesting situation.

An author of a graphic novel series called Carnival of Souls has sued HarperCollins and sent out Cease and Desists over reviews of a book called Carnival of Souls. The author, Jazan Wild, has trademarked the term ‘Carnival of Souls’ in reference to graphic novels, novels, and comics, and he believes that HC’s new book infringes on this trademark – hence the lawsuit and the C&Ds sent to review blogs.

Yes, very interesting… Let’s talk a little about trademarks. Here are my thoughts.

Not Copyright

Yes, I have to clarify this. Copyright is something else. Trademarks are literally marks under which you trade; they’re identifying marks intended to guide consumers in particular fields so that they don’t get confused about what they’re buying. Take Apple, for example – if you were to start a business called Apple Computers, you’d likely be infringing on Apple’s trademarks because you are confusing consumers, intentionally or otherwise, and they may buy computers from you thinking that they’re actually from the major manufacturer of Macs. This can damage Apple’s reputation.

Businesses like trademarks because they protect them from the bad press of substandard knock-offs. Consumers like trademarks because it means they know what they’re buying. Although trademark-bullying does exist, and Apple does do it, trademarks are useful things.

Why Defend Them?

Companies defend trademarks because, of course, they don’t want their products confused with someone else’s and their reputation damaged as a result. They also don’t want their trademark to be diluted, i.e. their trademark name or symbol becomes the default for a product of that type. This happened famously to Xerox, the company that makes copiers – to xerox something became the default term used for copying in general, and thus they lost their trademark. Losing it means they can’t, for example, stop a competitor using the term when marketing their own copiers. It’s all about the meaning, see – if a trademarked name is so widespread that it means something generic to the public at large, instead of a particular company’s product, then it can’t be a trademark. The likelihood of confusion is too high because the general usage of it means something else.

Companies don’t like dilution. Although it likely means that their marketing worked far too well if the name is ubiquitous, it also means that they can’t protect their reputation any more and their marketing becomes worthless.

What About Authors?

So, here’s the thing – you, as an author, probably don’t need a trademark. What do trademarks do? They identify a product to a consumer and let you protect yourself from knock-offs. You’re an author selling a book. What should your trademark be?

It really all depends on what you want to protect. Do you want to protect your name, in case someone tries to publish books in your genre while pretending to be you? That’s actually happened, to Nora Roberts in this case, and her name is not trademarked – but she didn’t need a trademark to get those books taken down. (J.K. Rowling does have a trademark on her name – but the trademark is her signature, which is used on the books and on various Harry Potter merchandise. Presumably this is to stop people faking it to sell Harry Potter books at a higher price as well.)

What if the reverse is true – you’re a relatively unknown author, and suddenly a bestseller with the same name, writing in the same genre and about the same subject comes out of nowhere? Well, that gets a bit strange. If you have a common name, it can’t be trademarked, so it’s not as if they can sue you to make you stop using your name. If you have an exotic, unique name, they can’t trademark it without your consent because it refers specifically to you.

(Even if they were going to try, regardless of the kind of name involved, the resulting shitstorm they’d provoke from trying to force a struggling author to stop using their own name on their own books would make any legal team turn white with fear – as well as painting the bestseller author as a possible plagiarist/identity thief.)

Do you want to protect your book title? Well, you can’t. A single title of a work cannot be trademarked. A series can, however, which is were this particular case comes from.

Are you a self-publisher, with a publishing company just for your books, and it has a logo you want to protect? Well… why? The author is the brand. The author has always been the brand when it comes to books. The name and logo of your company is not likely to need protection unless you turn into a bestseller or start taking on lots of other authors.

Going to Trial

So, let’s take Jazan Wild and his Carnival of Souls series, against Carnival of Souls by Melissa Marr. There’s a number of factors to examine when determining whether trademark infringement has occurred, according to US law anyway. It’s all based on whether there is a likelihood of confusion for consumers. Here’s the different elements that have to be examined:

  1. Strength of the mark
  2. Proximity of the goods
  3. Similarity of the marks
  4. Evidence of actual confusion
  5. Marketing channels used
  6. Type of goods and the degree of care likely to be exercised by the purchaser
  7. Defendant’s intent in selecting the mark
  8. Likelihood of expansion of the product lines

Okay, the strength – that’s how well known it is. In this case, not really – the first few google hits are for the 1962 horror film of the same name. The proximity of the goods would be how close they are in type – they’re both books, but telling very different stories. Then there’s similarity – none, apart from the words. Evidence of actual confusion? I don’t know, I can’t find any, but that’s not to say it doesn’t exist – just that it’s unlikely. They both use the Internet in for marketing, but everything does these days.

Type of goods and degree of care… er… well, the author is the brand, remember? I can’t imagine someone looking at Jazan’s graphic novel and thinking ‘Yes! This is obviously my favorite author’s new steampunk release!’ The defendant’s intent is the same – the title wasn’t picked to ride on the fame of the previously published comic series, because it doesn’t really have any by all accounts. Amazon has seventy-two hits in Books for “Carnival of Souls”, and more than a few are for a series of poetry books, by the way.

The likelihood of expansion? Probable, I guess.

I don’t think Jazan has much of a case, to be honest. It comes down to whether a consumer would be confused over what they were buying, and I personally don’t believe there would be any confusion here.

On the C&Ds

Now, here’s where it gets stupid – leaving all the legal stuff aside, Jazan has no right to ask reviewers to pull a review of Marr’s book over the infringement. This is nominative use, in theory, even though it’s a step removed from that. Here’s how it breaks down: you can refer to a trademark without infringing it or diluting it if you need to describe the company or product. Nominative use is there so that people don’t have to contort themselves into literary pretzels in order to talk about Apple iPads, for example.

The reviewers in question are looking at a particular book, with a particular name, in the context of criticism of that book. The name of the book could be infringing a trademark, but the reviewers can’t review the book without telling the reader the name of the book. It’s not the reviewers’ fault if the book infringes, nor is it their responsibility to censor themselves simply because there’s a dispute. Free speech, and all that. It doesn’t matter as long as they’re clear about what they’re referring to, and they are.

In Summary

I think someone got some bad legal advice here. Jazan’s probably going to do nothing but dig himself into a hole, and probably empty his bank account in the process.

Disclaimer: I am not a lawyer, and this is my own opinion on this case.

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