Protection of work title
Prepared by :
Attorney at law Sami Alawad
اعدت هذه الدراسة بواسطة المحامي سامي العوض بني دومي – عمان 2009
LL.M IN INTELLECTUAL PROPERTY
First Semester 2009/2010
Certain Aspects in intellectual property
To my ancient dream ,,
To my present success , ,
To my future ambitious,,
To whom I love …
To my wife Um Mo`min
In today’s world infringement of a trademark is frequent. People at all levels are adopting a trademark which is deceptively similar to a trademark of the other. With the advancement of trade and commerce and the passage of time, various IP issues have come up. One of such issues is the title of literary, dramatic and cinematograph film works. Since this issue is new to India, there is a lot of confusion in the minds of people in the field of law regarding the statute governing the title, whether its unauthorized adoption amounts to an infringement or not, etc. The unauthorized use or adoption of the title of a film or a book is as much an infringement of a trademark as it is in other cases. Moreover, it was till recent time supposed by various people including law practitioners that the title of
the said works is covered under copyright law.
It is common, rather imperative, to give title to literary or entertainment works. Like human beings, literary work produced by the author or the work of entertainment produced by a producer needs a name. It is only then such work would be identified. The term ‘literary title’ is used to encompass title of books, periodicals, newspaper, plays, motion pictures, television series, songs, phonograph
Intellectual property law does not protect titles as easily or as comprehensively as it protects the contents of a literary work. Single titles – the title of a particular work – are not protected by copyright law and may only be protected by unfair competition law and possibly trademark law if the publisher can demonstrate that the title has acquired secondary meaning. Secondary meaning, with regard to literary titles, is only found when in the minds of the public, the particular title is associated with a single source of the literary work. Although blatant attempts to pass off another publisher’s title as one’s own may be protected by unfair competition law, it generally is not an easy process to protect a single title. It is much easier for a publisher to protect a series title under unfair competition and federal trademark law; in fact, federal trademark law permits the registration of a series title.
PART ONE : Legal protection for the work title
1.1 Copyright Law Protection
Courts have only recently begun to express concern about trademark law trenching in copyright law, perhaps because copyright law provides a weaker form of protection than patent law , and perhaps because trademark and copyright laws have long coexisted in some context. For example , a picture of a character like Micky Mouse is copyrightable as a pictorial work and may also be used as a mark to identify source of goods or services .
Trademark and copyright law also have worked complementary fashion with respect to literary work. Copyright law might give protection to the tangible expression of the work , but copyright law does not protect the litrary title alone. However , the title of a series of literary works may function as a trademark and may be registered and protected as such.[i]
Under the most of copyright act laws the works which are given protection under the copyright law include- original literary, dramatic, musical and artistic works, cinematograph films and sound recording.
In furtherance, in Jordan copyright law article 3 stipulate
Article (3): Works Enjoying Copyright Protection
c) Protection shall also include the title of the work unless the title is generic used to describe the subject of the work.
particulars which are entered on the register of copyright include- the title of the work, the work itself and the names and addresses of the authors, publishers and owners of copyright. A large number of people are under a deception that the copyright extends to the title along with the work.
. We all know that there are several copyright exists in the literary work like in movies viz. copyright in literary work, musical work, cinematography etc.[ii]
While the US copyright law generally protect the contents of a book,” the title of that particular book will not be protected. The purpose of the copyright law is to protect the author’s creative expression. Although nothing in the Copyright Act specifically precludes protection for titles, Copyright Office Regulations and judicial decisions have made it clear that titles are only the equivalent of short slogans and therefore a title does not contain sufficient expression to be worthy of copyright protection. At least one reason that courts are hesitant to grant titles copyright protection is because they fear that by doing so they will prevent the title’s use by others for whom that particular title may be equally appropriate.”[iii]
While in The Norwegian Office justifies its practice by explaining to not protect the work title that there is an enormous amount of titles in the world, and that affording unlimited protection to all those titles would reduce traders’ chances of finding available signs to be used as marks.[iv]
1.2 Trademark and Unfair Competition Law Protection
Although titles are never protected by copyright. State unfair competition laws and state and federal trademark laws may protect them. If a title is protected one may be legally prevented from using it.
Unfair competition and trademark laws are designed to protect the public from deception and preserve the good will that a company builds when it sells a product or service to the public.
For title to be protected under these laws, it must meet two requirements:
1- the title must be strongly identified in the publics mind with the underlying work,and
2- the owner or publisher must prove that:
A: the public well be confused if the title is used in another work, or
B: the unauthorized use of the title dilute or tarnishes the titles value of trademark.[v]
First, a practical question—why bother registering? It is not as though single-work titles altogether lack protection. For example, in US federal unfair competition law under Section 43(a) of the Lanham Act14 provides protection for some single-work titles. However, this route is difficult and unsatisfactory. The title owner must show that the title has achieved secondary meaning even if it is distinctive, and this, in turn, is a question of fact with a high burden of proof. Meeting the burden may require consumer surveys, proof of significant advertising expenditures, media coverage, and/or other evidence. State unfair competition law may provide protection as well but is generally subject to the same difficulties.19 Moreover, protection under California unfair competition law is even more limited than under federal law, because state case law does not permit enjoining use of an infringing title and instead requires only a disclaimer by the junior user.[vi]
Titles can be protected under the common law of unregistered marks, statutory trademark law and unfair competition law. An important factor in determining the applicability of such protection depends upon whether protection is sought for a single title or a series title. The objective of title protection is to ensure that another publisher does not use a specific title in a manner that will create a likelihood of confusion regarding the source of the publication in the minds of the purchasing public.[vii]
Unfair competition law is the body of federal and state law whose primary purpose is to prevent false representations concerning the source of goods. Individual states under the common law of unfair competition have provided protection to literary titles under the passing off and misappropriation doctrines. Misappropriation has been defined by one court as the “taking and use of another’s property for the sole purpose of capitalizing unfairly on the good will and reputation of the property owner”.
Passing off is a doctrine that prevents a competitor from using a duplicate or similar title and thereby creating a likelihood of confusion regarding the source of that title. Courts sometimes utilize unfair competition law when “all else fails” to preserve the integrity of business or commercial relations or to prevent “dirty dealings”. Thus, while certain activities may technically be allowed by copyright and trademark law, unfair competition law may prohibit them if someone has “unfairly” used them to his or her advantage.[viii]
A publisher cannot obtain federal trademark registration for a single title, but a series title may be federally registered. The benefits of federal registration to the publisher, especially preventing the use of that title by another publisher on competing titles, could make the effort and cost of obtaining the federal trademark registration very worth while.
Trademarks for literary titles for the most part are not treated any differently than the trademarks of any other commercial goods. Trademark law only protects an inherently distinctive term, and will not provide protection to a descriptive term — a mark that tells something about the product — unless the descriptive term has acquired secondary meaning. Secondary meaning will only be acquired once the purchasing public learns to associate a specific descriptive term with a single source for the product or service. Therefore, secondary meaning can only be established following a period of use of the mark, sales of the product containing the mark, and advertising/marketing expenses promoting the sale of the product.[ix]
Part two: subjects of protection
2.1 Protection of Single Titles
Unlike series titles, titles of a single work, whether a book, periodical, song, movie, or television program, generally, will not be protected under either trademark or unfair competition law. This is one of the quirks of trademark law. To quote the USPTO, “Regardless of the actual relation of the title to the book,” courts treat all single title works as “inherently descriptive” at best and “inherently generic” at worst – unless the single title has had “wide promotion and great success.”[x]
An important exception to the “single title rule,” is where a “one-shot” title has been so widely used that it has become associated in the public’s mind with a single source. Once secondary meaning has been established (generally, after significant advertising and sales, and media exposure), the title becomes a protected property right. That means, if you plan to use someone’s title that’s become riveted in the public’s mind — whether it’s the exact title or one confusingly similar – consult a trademark attorney. Remember that a strong title in one media could prevent you from using a title in another media. Some courts believe motion picture and play titles are entitled to greater protection than book titles. Why? They believe that “book buyers generally place more importance upon the author than on the title of the book.” The author of this article is not convinced, however. [xi]
Even though a single title cannot be registered under federal trademark law the common law of unregistered marks has been interpreted by the courts to protect single book titles from a likelihood of confusion. The term “single title” refers to a particular book title, such as Gone With The Wind, rather than a “series title”, such as The Hardy Boys. This does not mean that consumers have to be confused that one book is, indeed, written by another author. It can also mean that consumers are confused about the sponsorhip, affiliation, or connection between one work and another. For example, if a second publisher used the title Gone With The Wind in a cookbook title, the public might be confused about whether the book was affiliated with or endorsed by the publisher of Gone With The Wind or its author, Margaret Mitchell. [xii]
Why do courts grant trademark protection to single literary titles having acquired secondary meaning, yet owners of single literary titles cannot federally register that title on either the Principal or Supplemental Register? Although viewed by some as nothing more than artistic expression, books are nevertheless sold in the commercial marketplace like any other commodity and make “the danger of consumer deception a legitimate concern that warrants some government protection.
Yet, the United States Patent and Trademark Office (“PTO”) continually refuses to federally register single literary titles on the Principal or Supplemental Register, even though courts grant protection to single literary titles upon a showing of secondary meaning.
As McCarthy points out, “this lack of congruence between registration and court enforcement impairs the ability of the federal register to reflect the reality of the marketplace.” If single literary titles are as incapable of functioning as trademarks as mandated by the PTO, courts should similarly find that single literary titles are, and forever will be, incapable of functioning as trademarks notwithstanding any showing of secondary meaning. Conversely, the PTO should at least grant single literary titles registration upon the Supplemental Register, and avail titles the opportunity of acquiring secondary meaning and growing into federally protectedmarks.[xiii]
Claiming that single literary titles are merely descriptive, the PTO precludes them from gaining federal registration. Unlike single literary titles, however, other merely descriptive marks are registrable on the Supplemental Register and entitled to protection as federally registered trademarksHowever, with literary titles of single works the courts basically assume that the titles are descriptive of the content of the work. Therefore, even if a book title seems arbitrary and fanciful, such as Stars and Stripes to describe a novel about a farm in Kansas, a publisher must still show that the title has acquired secondary meaning in order for the title to be protected by the common law of trademarks and/or unfair competition laws. [xiv]
There are many commentators who wonder why such a distinction should have arisen; e.g., requiring the mark of literary titles of single works, which may be inherently distinctive to prove secondary meaning while, marks for other commercial goods or services do not need to surpass this hurdle. “The theory apparently is that any such work is single and unique, not in competition with any other work and its title is not inherently distinctive.” To many in the publishing and entertainment field this rule requiring secondary meaning for any single title for a work is a strange reality, however, regardless of reality the rule remains fixed. “The courts view each literary work as a specific, separate and unique commercial item and not as one product among many competing products.” Such reasoning is based upon the assumption that any one literary work is an economic market in and of itself, and thus that literary work does not compete with any other similar literary works. “That is, each literary title is regarded as a term used to describe the product itself, rather than a mark used to designate a single source among many sources of literary works.” [xv]
Even though this issue appears to be illogical, courts have indicated that there is no rule prohibiting trademark protection for literary titles. “No one has asserted that a word may not be used as a trademark for books or that there cannot be trademarks for books, in the form of a word or otherwise, or that trademarks for books cannot be registered under the Lanham Act…. But before there can be registration there must be a trademark and a trademark exists only where there has been trademark use.” Trademark use means the mark identifies and distinguishes the goods or services of one particular seller, and is not used only to describe the qualities or function as the name of the product or service itself.
Even where a title bears little or no relation to the book contents, however, another reason forecloses trademark rights in the title to a single book, at least beyond expiration of the book’s copyright. That reason results from the interplay between copyright and trademark law. Specifically, while trademarks endure as long as the mark is used, copyrights eventually expire. Upon expiration of the copyright, others have the right to reproduce the literary work and to use the title to identify the work. See McCarthy, supra, § 10:4 (citing J.L. Vana, Single Work Titles and Group Artist or Author Names: Registrability Revisited, 88 Trademark Rep. 250 (1998)). For example, once the copyright to Gone with the Wind expires, a variety of publishers may wish to market copies of the work. A trademark in the title to this single book would compromise the policy of unrestricted use after expiration of the copyright because a book with a trademarked title, of course, could be published only under a different title. Gone with the Wind would perhaps become That Book About Scarlett O’Hara and Rhett Butler or My Life with Tara, 1864. The policy against proprietary rights in the titles to single books therefore finds additional support in the interface with copyright law.[xvi]
The reasons the courts always require proof of secondary meaning for all single titles are somewhat unclear. However, some commentators have suggested that it is due to the somewhat romantic notion courts have of books. Courts do not view book titles as mechanisms used by authors and publishers to compete for the sale of books; they view each book as unique by itself. Therefore, courts see book titles as descriptive of the contents of the book, not actually as an element of the book that enables it to compete with other books.[xvii]
Once the title for a book has been selected, the publisher can deliberately begin to build up the secondary meaning in that title. This may be accomplished through pre-release publicity that begins to create in the public’s mind a specific association with the particular book. Once the book has been published secondary meaning may be enhanced by on-going advertising and promotion of the book and if feasible through the development of ancillary products that make use of the title and characters from the book. If the title is used with ancillary products the title could be further protected through federal trademark registration of those products.
Merely descriptive marks are not entitled to exclusive protection without establishing secondary meaning. By secondary meaning, I mean well-known marks that call to mind a particular publisher, producer or manufacturer .[xviii]
A single title today could, tomorrow be a trademark for a series of books. If somebody planning to launch a series, launch the second book within a reasonable time of the first. This is because trademark rights do not come into being until the second book in the series is published. Also, announce the series with publication of the first book. [xix]
When a single title succeeds in acquiring secondary meaning the inference is that the public no longer recognizes only the title’s literal meaning, but associates that title with a single source. This means that even if consumers do not know who that source is, or even if that source is anonymous, the courts will recognize that the title has acquired secondary meaning. Different jurisdictions vary, however, in their interpretations of source identification as some require the public to be able to identify the work as originating from a specific identifiable source, while others permit anonymous source identification just so long as the public knows the work comes from a single source.
In determining whether secondary meaning has been acquired the courts will look at several factors that include (1) the length and continuity of the use of the title; (2) the extent of and amount of money spent on advertising and promotion; (3) sales results of the title; (4) a second publisher’s attempt to use the title; (5) consumer studies that demonstrate the public is aware of the source; and (6) unsolicited publicity by the media of the title. If this test seems to favor larger publishers with more hefty advertising budgets, that is mostly likely the case. Much like it is more difficult for a title from a small press to attract a large audience, it is also more difficult for a title from a small press to acquire secondary meaning.[xx]
2.2 Protection of Series Titles
Generally, titles of works that are part of an ongoing series are protected under trademark and unfair competition law. Once a series title such as Chicken Soup for the Soul becomes identified in the public’s mind with a particular author or publisher, unfair competition law kicks in to protect against consumer confusion, enforcing a kind of commercial morality on the marketplace of ideas. Once a series has been established, each work in the series reinforces that it comes from the same source as the others. Being a series author or publisher, is one of the secrets of successful publishing.[xxi]
Series titles are eligible for federal trademark registration and may be registered with the United States Patent and Trademark Office (“PTO”). Furthermore, titles of a series of books, periodicals or newspapers may be protected without proof of secondary meaning. The reasoning for not requiring secondary meaning for series titles of literary works is that such series title functions as a trademark because it indicates that each individual work in the series originates from the same source as any other work in that series. This is because the series title is not descriptive of any one specific work in the series and because any particular work in the series also has its own individual title. Judicial interpretations, however, are not consistent on whether secondary meaning must be acquired in order that the mark is recognized as inherently distinctive of the literary series
Despite this inconsistency even those courts that do not require proof of secondary meaning for some series titles may require them for those series titles that are more descriptive in nature. For example, it probably will be far more difficult to register the series title Garden Books than it would be to register Flowers And Shovels for a series of books on gardening. The first title is clearly more descriptive, while the second title is more suggestive.
Even sales of a large number of copies of a single work cannot create a source identifying association in the public mind unless this court abandons its precedent that a single work cannot serve as a source identifier. Cooper, 254 F.2d at 614-15. Because sales of a single book title are insufficient to create proprietary.[xxii]
Therefore, the publisher must still cross a number of threshold issues to protect the series title, such as (1) Is the title for the literary series inherently distinctive? If yes, does the mark require proof of secondary meaning? (2) Is the title for the series descriptive? If yes can secondary meaning be proved? [xxiii]
For many, this legal doctrine is both confusing and frustrating. The vast majority of creative works do not reach the high level of promotion and success necessary (also known as “secondary meaning”) to overcome the per se “inherently descriptive” designation by the USPTO, and few creative works actually evolve into a series. The denial of trademark protection for single literary titles is significant and arguably unfair. Literary titles can be valuable assets, used as bargaining chips in lucrative licensing opportunities for related merchandise. A valid trademark registration for a literary title can make an appreciable difference in the ultimate value of a licensing agreement.[xxiv]
2.3 Obtaining Federal Trademark Registration
In order to obtain a federal registered trademark for a series title a publisher must file a trademark registration application with the PTO. If the series title is found to be non-descriptive by the PTO the series title will be registered on the Principle Register. If, however the series title is deemed to be descriptive by the PTO than registration will only be permitted on the Supplemental Register. Registration on the Supplemental Register does not provide the publisher with the full scope of protection provided by the Principal Register but it will probably preclude another publisher from using the registered series title for their publications. Furthermore, the publisher of a series title that is registered on the Supplemental Register may at some later date demonstrate that the series title has acquired secondary meaning. If the publisher can prove the series title has acquired secondary meaning the series title will be eligible for registration on the Principle Register. [xxv]
question that is periodically asked is whether or not book titles are covered under copyright law. In general, the title of the book itself is not entitled to copyright protection. Copyright laws protect an original work of authorship or expression of an idea. Intellectual property law does not protect titles as easily or as comprehensively as it protects the contents of a literary work. However, trademark law and unfair competition law may provide some protection for the book title.
Typically, protection of a title for a single work is found in unfair competition law. Trademark law might also be found applicable if the author/publisher can demonstrate that the title has acquired secondary meaning. Additionally, a court may look at “likelihood of confusion” to assist in evaluation of the title to determine whether the public would be confused as to the source of the work.
Protection of a single title in general is not easy. More often, protection is provided for a series title (a title which runs through a series of books) under unfair competition and trademark laws. Trademark registrations are permitted for a series title.
Literary titles, whether a single title or a series title may be protected. Although the copyright law will not protect titles, trademark and unfair competition law may protect these valuable properties. Federal trademark law is particularly useful for publishers who wish to register series titles while trademark common law and unfair competition laws are most suitable for the protection of single titles.
1- Intellectual Property and Information Wealth: Trademark and unfair competition,Peter K. Yu, volume 3, 2007.
2- Public domain: how to find & use copyright-free writings, music, art & more , Stephen Fishman, NOLO publication , fourth edition ,
3- THE ANOMALY BETWEEN THE USPTO AND CASE LAW PRECEDENTS,JAMES E. HARPER, ,2004
4- Wipo , Eighteenth Session Geneva, November 12 to 16, 2007 , TRADEMARKS AND THEIR RELATION WITH LITERARy AND ARTISTIC WORKS, Document prepared by the Secretariat.
5- THE PROTECTION OF BOOK TITLES ,IVAN HOFFMAN, B.A., J.D., http://www.ivanhoffman.com
7- protection of movie titles, by Jonathan L. Handel , http://troygould.com/layouts/50/graphics/handel_la_lawyer.pdf
8- Protection of literary title , Lloyd L. Rich , www.publaw.com
9- Selecting and Protecting the Title of Your Book By Attorney Lloyd J. Jassin , http://www.copylaw.com/new_articles/titles.html
[i][i] See Intellectual Property and Information Wealth: Trademark and unfair competition,Peter K. Yu, volume 3, 2007, page 266.
[iii]Protection of literary title , Lloyd L. Rich , www.publaw.com
[v] Public domain: how to find & use copyright-free writings, music, art & more , Stephen Fishman, NOLO publication , fourth edition , page 246
[vii] Protection of literary title , Lloyd L. Rich , www.publaw.com
[xi] The same reference
[xiii] THE ANOMALY BETWEEN THE USPTO AND CASE LAW PRECEDENTS,JAMES E. HARPER, ,2004
[xix] See http://www.ivanhoffman.com
[xxi] [xxi] http://www.copylaw.com
[xxiv] Literary Titles and Trademark ProtectionMay 22, 2009 by Acumen Law , http://www.acumenlawgroup.com