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Thursday, 13 May 2010

Trade marks and copyright in book series titles: second opinion sought

A distinguished member of the Spicy IP blog team has written to the IPKat and his readers for a second opinion. The question raised is this:

"In my hypothetical, there’s a book with the title ‘X’, written by an individual ‘A’. The book is a part of a series; the books in the series retain a common “work title”. The owner of the copyright also claims a trade mark in this work title.
If the book falls into public domain following the expiry of the copyright in it, is the owner of the trade mark entitled to assert his right in the trade marked work title? Or can it be argued that the use of the trade marked work title falls within the scope of a meaningful reproduction of the work, which is now in public domain, by another publisher?

I am of the opinion that, since the work title was never copyright-protectable in the first place, expiry of copyright the work does not affect non-copyright elements of the work and the TM owner can therefore assert his trade mark rights without attracting allegations of perpetuating his copyright through the trade mark".
The IPKat agrees with his spicy colleague that the assertion of the trade mark right cannot be regarded as a perpetuation of the copyright. Do readers agree?


Estelle Derclaye said...

I agree, assuming this is UK law (not sure about other laws but would assume they would have similar reasoning/rules).

Michael said...

Can I assume this is totally theoretical? Things only become off-copyright after the author, the publishing house and all decendents and inheritors have become extinct.

We've moved on Since the days of good ole Queen Anne when there was an attempt to strike a balance between the public interest and that of the author and publisher.

Graham Cornish said...

I agree with IPKat because there would be nothing to stop another publisher from reproducing the text of the work and publishing it in a different format - thus exploiting the expiry of copyright regardless of any trade mark.

Guy Tritton said...

Definitely agree. One could re-publish many times a copyright work under a title e.g. Haynes’ Guide to the Model T (I assume that there have been few changes to the Model T over the years). The fact that after many years, the guide no longer has copyright protection does not mean that one can use the mark Haynes.

IPRs are generally independent of each other. Certainly, copyright and trade mark law have no interdependence save in relation to minor aspects: e.g. Validity of a registered trade mark can be struck down by earlier copyright work subsisting in the trade mark.

Luke Ueda-Sarson said...

My great ignorance of matters copyright-related will be on show here no doubt, but doesn't the above hypothetical assume "the title" of a work is always separate from the "the work" itself - but why is this *necessarily* the case for a book?

E.g. Graham Cornish talks about "the text of the work", as opposed to the "the work" in toto.

Now I realize that for some books that are published, the publisher sticks on any old title they feel like, often against the express, but ignored protests, of the author.

However, for some authors who keep tight control over their entire output, the title is part and parcel of the work - separating it out makes no more sense is saying Michaelangelo's David's left foot is separate from the rest of the statue.

So is this title/text split something enshrined in statute, long-accepted case-law, obiter, or a mere assumption?

Cheers, Luke

Pamela Chestek said...

U.S. practitioner piping up. Wouldn't it perhaps depend on the title? In the U.S. "The Bobbsey Twins" is a registered trademark for "series of fiction books." The titles of the books are, for example, "The Bobbsey Twins at School" and "The Bobbsey Twins in the Country." Wouldn't the inability to use "Bobbsey Twins" as part of the title interfere with the right to reproduce the work because one couldn't accurately identify the work without saying "Bobbsey Twins"? "At School" and "In the Country" would hardly be enough to identify the work.

The answer to this question may be clearer in the U.S. when the first Steamboat Willie cartoons, in present form Mickey Mouse, enter the public domain.

Kate Széll said...

My humble opinion: The trade mark owner could doubtless assert his rights to stop a third party producing another book with the same title but not from reproducing existing books – in that case, there would be a defence to trade mark infringement as the mark would be being used in relation to the genuine article (s. 10(6) and s.11 TMA, if you like to read the law and your registration is a UK one, or not affecting the essential function of the trade mark, if you don’t bother with the law because you’re the CJ and can make it up). As Mr Spicy is talking about expiry of copyright, I presume he is thinking about reproduction of existing books, rather than the writing of new ones.

Anonymous said...

To Pamela Chestek:

do you honestly believe that Steamboat Willie will ever enter the public domain in the US?

Kind regards,

George Brock-Nannestad

Anonymous said...

This is a definite "known unknown" in EU trade mark law. Current UK-IPO practice is to accept trade mark applications for "books", although it is unclear whether the subsequent protection embraces book titles, or only publishers' marks.

Andreas Rahmatian said...

It depends on the jurisdiction. In the UK, copyright protection for a word or mere title would not be available: Exxon Corp. v. Exxon Insurance [1982] RPC 69, so there is no perpetuation of copyright. Separate trade mark protection of the work title is always possible (an appropriate class for
registration has to be found). Given that copyright protection for literary works lasts for a long time (70 years pma), it is quite possible that the trade mark has not been renewed in the meantime and is therefore no longer

In Austria, for example, there is a separate title protection for literary and artistic works in the Author's Rights Act 1936 (s. 80), which is similar to a passing-off protection. That protection also applies to works which are not (or no longer) protected by author's rights.

Mark Heritage said...

The trade mark is wholly independent of any copyright. Provided all of the renewal fees are paid and the mark doesn’t become liable to revocation for non-use etc, I can’t see any reason why it couldn’t be asserted ad infinitum.

The only possible quirk I can anticipate would be if, at the point of asserting the trade mark, the copyright owner also expressly raised the defunct copyright as a right running alongside. That might give some grounds for the “other side” to start arguing that, in reality, the real intent was an enforcement of expired copyright. However, it doesn’t strike me that argument would really have any legs in the final analysis… especially if the owner picked their arguments, and kept quiet about the copyright in correspondence.

C.E. Petit said...

In US law, this is an incredible mess, thanks to Dastar... in which the Supreme Court answered part of the question (wrongly!), refused to answer another part of the question, and the whole thing ends up turning on a doubly-defective copyright claim in the first place (failure to renew... and the distinction between a compilation copyright and the copyright in underlying material that itself fell within the government-works exception).

Under US law, the "best" answer is that using the trademarked series title as an accurate identification of the previously published, now-out-of-copyright original work could not even infringe the mark. Oz is a better example than the Bobbsey Twins for this purpose, as there's no question about either copyright or continued use in commerce (the Bobbsey Twins mark is rather dubious on this last point).

But that's the easy case. There are two harder ones:
* It remains unclear -- thanks to the mess of Dastar (particularly what happened on remand from the Supreme Court) -- whether it would constitute a trademark violation to apply the trademarked title to an altered form of that original, noncopyright-protected work. In Dastar itself, the mark (and original copyright!) applied to a compilation of noncopyrightable material -- mostly official US government footage -- and the facts of that matter just got worse as discovery came through; there appear to have been at least six instances of arguable legal malpractice (long outside the statute of limitations!) that made things worse even than they needed to be. And, of course, the original strength of the copyright and mark of Crusade also suffer from the "depictions of facts" problem.
* This gets even more difficult under US law when dealing with common-law marks, Consider, for example, a continuation of a "classic" novel series... that itself began as a fixup of a story that allegedly fell into the public domain for failure of formalities under the 1909 Act. (Now we've got cross-border issues, too!) The "right" way at the contracting stage is for the publisher to get a limited-use license from the holder of that common-law mark, and to properly mark its own works, something perhaps like this:
Novel X
A Continuation of the Y series by Z
But then, I'm inferring some sense of common courtesy in publishing, which is definitely not the norm! This also exposes the harder question: Is there a trademark infringement if the publisher does exactly this without getting a limited-use license first? And, if so, under what theory does it infringe? (I personally think that -- at a theoretical level -- the dominant analysis should be dilution/disparagement... but the legal framework remains contradictory and undeveloped.)

Anonymous said...

In the United States there has been some litigation surrounding the Peter Rabbit series -- in particular whether the cover illustrations are PD, or whether they are restricted by trademark law to the original publisher.

The key question seems to be whether it is merely descriptive of the contents of the book, or whether it served to distinguish the publisher from other publishers.

A picture of Mr Jeremy Fisher was held not to be a trademark, because at the time there had been no other possible publishers.

The story is discussed further in this blog from 2006:

Anonymous said...

Under EC trade mark law, couldn't the alleged trade mark infringer rely on use for descriptive purposes (Art. 6(1)(b) TMD) or on use other than for indicating the origin of the goods or services concerned?

If, for instance, "Harry Potter" were registered as a trade mark, I am uneasy with the thought that this would enjoin use of the term in the title of one of the books once they're off copyright...

Anonymous said...

With reference to anonymous on "Harry Potter", the words have been registered in a large number of classes, including 16, as a Community trade mark by Warner Entertainment.

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