Recently I published a book entitled 'Just Plain Love', things were fine until a few days ago when I was contacted by a woman who claims that my book infringes on the trademark of her company 'JustPlainLoveBooks'. My publisher is looking into the matter, but has told me that as long as my book is not about her company I am fine (it's not, the book is a romance). Is this right? Do I have cause to worry? She is harassing me almost non-stop and is threatening to 'sue me for every penny I've got'. What do I do?
3 Answers from Attorneys
Yes, you have cause to worry, as does your publisher. The worry is not because the woman is right, but because she has the right to sue you and apparently she thinks she has a case. If she sues you have to spend money to defend yourself. Is your publisher telling you your publisher will foot the bill for your defense if you ignore this woman and get sued? What you do is put a disclaimer in your book to make it clear that your book is neither written by, sponsored by, nor associated with her company in any way and then have an intellectual property law attorney write the woman and explain the law to her so you minimize the chance that you get sued. I can do that for you for a small fee and am licensed in Missouri.
You have an interesting case, because book titles cannot be protected by trademark. See http://cases.justia.com/us-court-of-appeals/F3/177/258/475493/. Her mark is not the title of a book, but identifies a series. (In fact, it apparently applies to a ton of stuff. See http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=77353264.) Here, she has a TM in something other than a book title, and is trying to prevent your titling of your book. In any event, it probably boils down to "likelihood of confusion," and your lawyer (or your publisher's lawyer) will want to gather more facts concerning your book and the scope of her mark to learn how likely it is that consumers might think your book is associated with or sponsored by the owner of her mark.
From a First Amendment standpoint, I hate it when these government-created rights get in the way of freedom of expression. And there is judicial agreement with this concern. Take a look at the following quote:
"Though First Amendment concerns do not insulate titles of artistic works from all Lanham Act claims, such concerns must nonetheless inform our consideration of the scope of the Act as applied to claims involving such titles. Titles, like the artistic works they identify, are of a hybrid nature, combining artistic expression and commercial promotion. The title of a movie may be both an integral element of the film-maker's expression as well as a significant means of marketing the film to the public. The artistic and commercial elements of titles are inextricably intertwined. Film-makers and authors frequently rely on word-play, ambiguity, irony, and allusion in titling their works. Furthermore, their interest in freedom of artistic expression is shared by their audience. The subtleties of a title can enrich a reader's or a viewer's understanding of a work. Consumers of artistic works thus have a dual interest: They have an interest in not being misled and they also have an interest in enjoying the results of the author's freedom of expression. For all these reasons, the expressive element of titles requires more protection than the labeling of ordinary commercial products."
The full case (a famous case related to Ginger Rogers and Fred Astaire) can be found at http://cases.justia.com/us-court-of-appeals/F2/875/994/179970/.
So, if you find it a bit offensive to artistic freedom that her use of the mark attempts to suppress your freedom to create a book, photo, artwork, sound recording, etc., entitled "Just Plain Love," your lawyer may, after looking carefully at whether artistic freedom trumps the Lanham Act under your facts, find merit in writing to her lawyer and suggesting she has no case, and should quit misusing her trademark in an attempt to suppress your First Amendment rights. But I'm not licensed in Missouri, and I'm not your lawyer. Check with your lawyer.
A trademark attorney will say it all comes down to likelihood of confusion. That's the test for trademark infringement. Does she have a federally-registered mark? There are a number of issues that need to be researched. Consult with an intellectual attorney in your area for specifics.
Kevin B. Murphy, B.S., M.B.A., J.D. - Mr. Franchise
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