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The title of your book can be an asset or a liability. Making sure that it’s the former and not the latter requires an understanding of trademark law as it is uniquely applied to book titles and the interplay with copyright law. Stephen E. Gillen, an attorney at Wood, Herron & Evans, L.L.P., will share what trademarks have to do with book titles, what a book’s copyright covers, and how and when a title can be protected. Join us on Wednesday, March 9, 2011 at 1 p.m. ET for this 15-minute preview to Gillen’s session for the 2011 TAA Conference in Albuquerque, NM.
Welcome to the Text and Academic Authors Association Podcast Series. My name is Kim Pawlak and today I am interviewing Steve Gillen, an attorney at Wood, Herron and Evans, LLP about what trademarks have to do with book titles, what a book's copyright covers, and how and when a title can be protected. Steve teaches Electronic Media Law at the University of Cincinnati College-Conservatory of Music. He works for nearly 20 years in publishing prior to entering private practice in the mid 1990s. As a partner at Wood, Herron and Evans, a 440-year-old Cincinnati law firm focused on intellectual property. He concentrates his practice on publishing media and copyright matters. Steve will be presenting at our long session on trademarks and book titles at the 2011 TAA Conference in Albuquerque, New Mexico on June 25. You can learn more at www.taaonline.net/2011taaconference. Steve, thank for joining us today.
Hello Kim. Thanks for inviting me. I'm happy to participate.
Well, we are taking about trademarks and book titles today. What do trademarks have to with book titles? Isn't the title of the book protected along with its contents by the copyrights in the book?
Well, no. Actually, as you might suggest from the topic of our talk today, the copyrights in a book provide protection for the authorship it contains; that is the original expression. This includes obviously things like the text and the photos and illustrations, and even the cover design as well to the extent that the cover design is something more creative than a type solution. But copyright protection is limited in the United States to authorship that consists of an original expression. That means that there has to be some minimum threshold of creativity. The copyright office has actually published the brochure about this, called Circular 34, that's titled copyright protection not available for names, titles, or short phrases; and that like the title of the brochure, the copyright office has taken a position that to be protected by copyright. A work has to contain a certain minimum amount of authorship in the form of original literary musical, pictorial, or graphic expressions, names, titles, and other short phrases. Simply they don't meet these requirements. How much does it take? You might ask -- well there isn't any bright line test. Although I do know that the longest book title ever was a -- for a book that was published originally in Boston in 1726, and the title of that book consisted of 53 words. But if you tried to register with the copyright office, they would say, "No go."
So, what does the copyright cover?
Well, like I said, it covers the text, the photos, illustrations, and even the cover design to the extent of that cover design is something more creative than a type solution.
So that means there is no protection for your book title?
Well not necessarily.
Alright. What instances would a title be protected?
Well, again, as you might suspect from the topic, the title of our topic today, under certain circumstances, book titles can be protected by trademark law. But there is a problem with this that dates back to the early 1900s, and before we talk about the problem, we should talk what a trademark is and what it does. The key role of a trademark is the service of brand, as an identifier of source and a guarantee of quality. It communicates to the consuming public that this particular product or service comes from a certain source and that you can expect to have a consistent quality. In that respect, it serves as a public function and it has a value to the marked owner, so we protect its ability to do that by keeping other brands, other marks, a certain distance away. But if mark, a trademark, can only serve this source identifying purpose if it's distinctive and it can never be distinctive if it's generic; car for automobiles, for example; because we don't allow ordinary words to be taken out of circulation. They have to be able to be used by other folks even your competitors to describe their product. If a mark is merely descriptive as with the American Airlines rather than generic, it does start out as distinctive, but it can become so over time depending upon public perception and this brings us really to the problem with book titles. In the early 1900s, an author named Eleanor Porter wrote the first of the series of inspiring books for kids featuring a character named "Pollyanna." Each of the books in the series incorporated Pollyanna in the title, and the publisher, the page company at Boston, recognizing that the series was likely to be a commercial success. One of the stakeout nationwide protection for Pollyanna, as a title for books, by applying for a federal trademark registration for that of mark as a mark for services for series of books.
The examiner -- the trademark examiner that got that application refused the registration on the ground that Pollyanna was the name of a particular book. It is -- that was how you would ask for it by title, and so the title was merely descriptive of that particular book according to this examiner because it was the name of a product and not an identifier of the source of that product. It couldn't be a trademark. This is, since been explained as the title of a book is to the universal published books, is chicken soup as the food; that it's a category and not a brand. That may make a lot of...that may make a lot of sense if the title of the book is Principles of Economics, for example, because there are a lot of books that have a title of Principles of Economics and it doesn't tell you much about the source, but it doesn't make as much sense to me for a book or a series of books called Pollyanna. But like it or not, trademark office stood firm on this for nearly a century, and I think that we're just going to have to live with it.
So, what are the advantages of trademark protection and registration when it comes to competitors?
Well, you can get -- although the trademark office will not give you protection for a single book title, you can get protection for a title as a part of a series once you've got the second book. There are certain technical requirements for how you go about this and how you distinguish the series title from the title of any particular book. Certain formatting requirements that you have to meet, but we will talk more about that at the 2011 TAA Conference.
Okay. How about the advantages of trademark protection and registration when it comes to the authors on publisher?
Well, publishers aren't very sophisticated about this form of intellectual property just yet. Publishers have come to be very sophisticated about the copyright rights and understanding copyright rights; that's the principle protection for their product after all, but they have developed much less sophistication when it comes to the trademark rights that might be associated with the series title, and there again that's something that will spend a lot of time talking about at the TAA Conference.
Is there a downside to the intersection of trademark law in book titles?
Well, yes. Although a single book title can't be a trademark if all you've got is one book. You really can't take advantage of trademark protection for that title. A title can infringe somebody else's mark, interestingly enough. If you pick the title for your book that creates a likelihood of confusion as to the source of the book or who endorses it or whether or not it might be affiliated with another party, you can be prevented from using that title on the book because it infringes somebody else's trademark rights, and the remedies that would be available to them would include things like an injunction that precludes you from continuing to distribute a book under that title, perhaps, seizure and destruction of the inventory. These are things that happen at a point in time when it's really too late to fix the problem if you haven't carefully considered and perhaps done a search for the title that you've selected for your book to be sure that is available for use. Examples, "Beanie Babies" attempts to use the phrase "Beanie Babies" in book titles have been successfully blocked. Attempts to use eBay particularly when you use more than just the word but also the distinctive look of that eBay mark, CliffsNotes, Twin Peaks, all those have been successfully challenged. There was a book published by Simon and Schuster called the "Book of Virtues" and a second book attempted to be published by the publishing called "The Children's Audio Book of Virtues" and that two was blocked as a consequence of a trademark claim.
Alright. Well, it looks like we have a little bit of time left during the call, so if you want to take some questions from callers?
Do we have a question?
Hello, do you have a question for Steve today? Hello?
Hi! This is Elsa.
Hi! So I'm just looking for a little a bit of classification when you said for example that the Children's Book of Virtue was blocked. You're saying that it was blocked in terms of being a sophisticated trademark, but it doesn't mean that under copyright law, they couldn't still publish a book with that title. Is that correct?
Well, it doesn't mean that couldn't publish a book with that title. They could...
They could still?
They still could publish -- they could still publish the book, but they would have to change the title so as to make it not confusing with the Book of Virtues published by Simon and Schuster.
Well, alright. That comes a surprise to me because I don't know hardly anything about trademark law, but I know a lot about copyright law and I understand that under the list of things that are excluded from protection, the title is one of the things that is excluded.
Right and the claim here wouldn't be a copyright claim, it would be a trademark eventually.
Wait. So the reason they couldn't publish the book wasn't because of copyright but it was because of trademark?
Okay. Great. Thank you for clarifying that.
Alright, and another question from our caller? Hello do you have a question? Alright -- caller, do you have a question for Steve? Alright, looks like we don't have any other question today. So, thank you Steve for taking the time to talk with me.
Well, it was my pleasure, Kim. Thank you for inviting me again.
Alright. Well, thank you for listening today's episode. For more educational session from TAA, visit www.blogtalkradio.com/textacademicpodcast. Thank you.
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