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Trademarks and Titles by Jacqui Lipton

I’ve been getting a lot of questions lately about whether authors can use other people’s trademarks in their book, story, and essay titles. This can come up in a lot of different genres: notably, nonfiction. If you want to write about, say, the McDonalds corporation, or Nike, or General Motors, how do you do that without using the trademark? Even some famous people’s names are trademarked. Think about Elvis Presley and Madonna.

What if you want to write a book or story about someone who really loves the Teen Titans or the Avengers? Those words are trademarked too.

The problem for authors who want to use other people’s trademarks in their titles (and, to an extent, in the stories or books themselves) is that the law is a little complicated in this area. It’s LESS complicated than, say, copyright law, but still Congress hasn’t given us any clear guidelines about when you can use someone else’s mark in your title. This has left it to courts to develop the guidelines, and, of course, judges do this on a case-by-case basis literally, and their decisions are based heavily on the facts of each case they consider.

To the extent that there is any “rule” you can rely on, it goes something like this:

If the artistic/expressive elements of your use of the trademark outweigh the commercial/source-identifying function, you probably have some kind of fair use or free expression defense available.

(I’m paraphrasing here from a series of cases, so please don’t quote this as a statement of “the law”.)

The cases that would support this idea include, probably most famously, the case involving the Barbie Girl song title. Mattel, the owner of the Barbie trademark, sued MCA Records, who produced and distributed the Barbie Girl song for the Danish pop band, Aqua. The song itself made fun of Barbie and the social-cultural values she represents. The court in California, in a well-known decision, held that the use of the “Barbie” mark in the song title did not infringe or dilute the trademark because of its expressive/artistic focus.

This is a bit of an oversimplification: there were actually two legal trademark arguments made in the case (one based on an action called trademark “dilution” and one on trademark “infringement”). The expressive/artistic defense applied more heavily to the dilution claim. Infringement, on the other hand, is about likelihood of confusing the consumers of the Barbie mark, and the song was also unlikely to have that effect. While you don’t need to understand the difference between an infringement and a dilution claim in your everyday writing life, it’s usually the case that a book, song or movie title that is expressive or artistic in a way that avoids a dilution claim usually doesn’t infringe a mark either, typically because consumers won’t be confused by it.

Of course, each court case is based heavily on its own facts and there are other cases where courts have found that book, song and movie titles that use other people’s trademarks do infringe the marks. One well-known example involved a book entitled The Cat NOT in the Hat! which was intended as a parody on Dr. Seuss’s well-known children’s book title and writing style, but poked fun at the O.J. Simpson trial. The court in this case held that the use of the Cat in the Hat mark did infringe Dr. Seuss’s work. The court also upheld a claim of copyright infringement with respect to the contents of the book itself.

If you want to use someone else’s trademark in a book, story, or essay title it’s a good idea to seek legal advice if you can.

Some literary journals and magazines, in fact, won’t publish a piece with someone else’s trademark in the title. It may be safer to rework the title to avoid the trademark if possible. The other option, of course, is to take the risk and publish as is. Then deal with the trademark issue if the trademark holder complains about it. Of course, if you can afford it, you can always seek a license. The problem for many authors is that licenses can be out of their reach economically, and, in a number of cases, the title they want to use may well be a fair use and may not infringe the trademark in question in any event.

Intellectual property law (trademarks, copyrights, etc.) is challenging because there are so few clear rules about what you can and cannot do with other people’s intellectual property in creative spaces like writing. The best you can probably do as an author is to be aware of the issues, seek advice if/when you can, and be respectful of other people’s rights to the extent possible and appropriate under the circumstances.

And of course, I need to remind readers that nothing in this blog post is intended as formal legal advice. My intent is only to give you some insights and general understanding of this little corner of the law.

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Jacqui is teaching a webinar next week!

WEBINAR: Copyright for Authors. Trademark for Authors with Jaqueline Lipton ~ April 25 @ 9 p.m. EDT

Jacqui has published flash pieces and short stories both under her own name and under the pen-name K C Maguire. Her debut novel, Inside the Palisade, ...