When you can't know a book by its title, and the law may even leave you confused

A major contribution of economics to our understanding of trademarks is "search costs", generally here. This idea is that trademarks are an efficient tool for consumers because a consumer can rely on the mark, rather than having to search for sufficient information about the source of the product each time he wishes to make a purchase. (Think of a washing machine identified as "Whirlpool", rather than described as coming from a company founded over 100 years ago in St. Joseph/Benton Harbor, Michigan USA by Louis, Emory and Fred Upton, and whose first customer was Commonwealth Edison.)

But names used in the commercial sense do not always work a benefit. Over a half-century ago, this Kat's Latin teacher, the legendary Miss Ledyard, taught him the first declension noun "lacuna", meaning "hole, pit, ditch; especially a pool or pond", with a rare side meaning "of something missing or lacking", here.

Today, few if any refer to the "lacuna" in the backyard, overrun by algae. But when it comes to a lacuna in legal protection, trained ears perk up. A salient case in point are book titles and the potential confusion that they can engender, thanks to an apparent lacuna in the law. Read on.

This Kat recently was waiting at a neighborhood bus stop ("down with full-throated remote work"!). There, one can find metal shelves at each end, enabling one either to leave a book otherwise to be discarded, or to inspect such abandoned books in search of an unread gem. And, indeed, such an apparent prize caught this Kat's eye—a book entitled "The Miniaturist". In the back of his mind, this Kat recalled a book of some renown by that name (without any recollection of the author). "It is my lucky day", reckoned this Kat, who eagerly gathered up the book and put it into his travel case for future reading.

Once back home, however, upon inspection of the book cover, something did not seem quite right. The author was the Indian writer, Kunal Basu. This Kat vaguely recalled that the book was set in the early modern period, but not against the background of the Mughul dynasty (16th-19th centuries) in India. An engrossing era to be sure, which has attracted this Kat's attention in multiple fashions. Interesting, even fascinating, but it did not compute with the book title in this Kat's memory. Gnawed at by this uncertainty, this Kat did a quick check online for "The Miniaturist". The Wikipedia entry begin as follows—

For the 2003 novel, see The Miniaturist (Kunal Basu novel)."

The Miniaturist is the 2014 debut novel of English actor and author Jessie Burton. An international bestseller, it was the focus of a publishers' bidding war at the 2013 London Book Fair.[2] Set in Amsterdam in 1686–87, the novel was inspired by Petronella Oortman's doll's house on display at the Rijksmuseum.

So, there it is. Two novels with the same name, each set in the early modern period; the first located in the European Low Countries and the second in northern India. This Kat, working back his broad-stroke memory about the book title that led him to select the book from that bus stop shelf, concluded that while his reconstructed thoughts could have fit with either book, he had probably intended the Burton, rather than the Basu, novel.

                                                                                            Find the lacuna

Still, there is the lingering sense that confusion had taken place, even if not precisely in the accepted trademark sense. What do we make of this? Consider the U.S. Trademark Manual of Examining Procedure (the "TMEP").

1202.08 Title of a Single Creative Work

The title, or a portion of a title, of a single creative work must be refused registration under §§1, 2, and 45 of the Trademark Act, …. unless the title has been used on a series of creative works…; In re Cooper [full citation omitted] ("A book title ... identifies a specific literary work ... and is not associated in the public mind with the publisher, printer or bookseller....")… .As noted in In re Cooper, … [u]nlike a copyright that has a limited term, a trademark can endure for as long as the trademark is used. Therefore, once copyright protection ends, and the work falls in the public domain, others must have the right to call the work by its name… .

Stated otherwise, the title of a single book does not fit into any recognized trademark rubric of protection. [That said, Merpel notes that no one really views a book title as identifying a publisher, so the ground In Re Cooper simply skirts the question. As for the copyright angle, since there is no trademark protection to begin with per the TMEP, what happens to the title after expiry of the copyright is irrelevant. And if there were trademark protection, Merpel believes some arrangement, such as fair use or the like, would be applied ]

We are left with a situation where there exists a likelihood that a reader, relying on his memory of the title, might obtain a book other than the one intended. The extent of this occurring depends on several de facto considerations, with the ultimate burden of getting it right resting solely on the reader.

First is the sui generis nature of a book title in the sense that it is usually connected with the name of the author, a sort of two-part identification. Knowing both the name of the book and that of the author should reduce the risk of confusion to virtually nil. But not everyone necessarily identifies a book by both its name and that of the author.

As in the case of this Kat, all that he remembered was the name of the book. Which he thought would be sufficient, should he ever choose to obtain the book. Moreover, while the word "miniaturist" is a dictionary term, it is hardly one used in daily parlance. As such, the book title was presumably distinctive enough even without this Kat committing the name of the author to memory (call it "imperfect" recollection). It was sufficient, until it wasn't.

One should distinguish this from a situation where the book title is wholly descriptive, e.g., a book entitled "Patent Licensing". So descriptive is this title of the book's contents such that without recollection of the author's name, the book title alone would have no distinctive power. Here, recollection of the author's name is essential to correctly identify the intended book.

The upshot is a "lacuna" in the legal system. At the most, the playing out of de facto considerations, such as those described above, will make it more, or less, likely (even unlikely) that a reader will be confused when relying solely on the title of a book in circumstances such as those that obtained regarding "The Miniaturist". Still, as Miss Ledyard taught--"lacuna, lacunae, feminine."

Picture in the middle is by Jay Dobkin, and is licensed under the Creative Commons Attribution-Share Alike 4.0 International license.