What a week it’s been in the romance writing world! In case you missed it, there is a huge uproar over #cockygate, or the trademark of the word “cocky” in a romance series.
Background: Faleena Hopkins, the author of several books that have the word “Cocky” in the title, recently received an official trademark of the word “cocky” in a romance series in both regular and stylized (meaning in a specific font) form from the US Trademark and Patent Office. You can view her filings here and here.
Ms. Hopkins has threatened other writers whose book titles also contain the word “cocky” with a lawsuit if they don’t change their titles. She’s also reported some authors to Amazon, telling the Zon that the authors were in violation of her copyright. Amazon took down the offending books at once. Romance Writers of America has hired an IP attorney and has asked Amazon to reinstate the take downs pending a legal challenge (Amazon agreed), and former IP attorney-turned-writer Kevin Kneupper has come out of retirement to file a motion to cancel trademark with USTPO (you can see his motion here). For more background, you can read the articles here, here, and here. And attorney Marc Whipple does a great job explaining the details here.
How fortuitous is it that I planned a Q&A series this week with an IP attorney! Gregory Ourada is a patent attorney with Hill, Kertscher & Wharton, LLP in Atlanta, Georgia and was kind enough to answer questions I and others had about trademark, copyright, fair use, and other related issues.
If you have additional general questions based on the answers Greg has given below, drop them in the comments and I’ll post a follow-up. However, if you have specific IP questions or think you need the advice of an attorney, you can find his bio and contact information at the end of this post.
Before we begin, though, a disclaimer: The responses below are general in nature and should not be considered legal advice. Due to the highly fact-specific nature of copyright and trademark issues, you should contact an attorney if you require specific legal advice regarding a particular matter.
Now…let’s get started!
Copyright and Registered Trademark Questions
Justine Covington: Thank you for taking the time to answer my questions. Let’s start with a very basic one. What IS copyright?
Gregory Ourada: Copyright is a Constitutionally-mandated form of intellectual property protection that protects original works of authorship (whether published or unpublished) that are fixed in a tangible medium of expression, e.g. written down, created using a word processor, etc. Copyright in its most basic form protects the exclusive rights that an author has regarding reproduction, distribution, and performance of the author’s original work, including the ability to create other original works derived from that original work, i.e. derivative works.
Justine: How is copyright different from trademarks?
Greg: Copyright and trademark protect fundamentally different rights. Trademark is a form of intellectual property protection that protects a brand of products or services, or more specifically, the goodwill that is associated with a brand. Goodwill can be thought of as consumer association or recognition embodied by a brand. Thus, while copyright protects an original work, a trademark merely protects a product or service brand, but not the product or service itself.
Also, they differ in how/when they are created. Copyrights are created once an original work is fixed in a tangible medium of expression, i.e. upon the original work’s creation. Trademark rights are only created once a good or service is sold or delivered, not when the brand itself is first created.
It is important to realize that in certain cases, copyright and trademark can apply to the same object. For example, if a graphic artist creates a new logo for a client that is used as the client’s trademark, then the graphic artist in some cases would own the copyright to the logo itself, while the artist’s client would own the trademark rights. However, this is a potentially very messy situation, legally speaking. Ideally, the artist and client would sign a contract specifying that the logo is a “work made for hire”, which would allow the client to automatically claim ownership of the copyright to the logo.
Justine: How is trademark (TM) different from ®?
Greg: TM is used to denote a claim of common law trademark rights. It can be used with a brand once the branded products or services are first sold or delivered to a bona fide customer. ® (“circle-R”) is used to denote a trade or service mark that has been registered by the U.S. Patent and Trademark Office (USPTO) under the U.S. Trademark Act (or in other countries, by the government trademark authority in that country). The ® symbol should only be used for registered marks. Use of these marks by brand owners is important, since it affects the amount a brand owner can recover in damages for a trademark infringement.
Justine: A few writers I know have trademarked their book series (League of Rogues® by Lauren Smith and Gansett Island® by Marie Force are examples). Do you think there is a benefit to doing this?
Greg: First of all, the word “trademarked” is used colloquially to mean “register the mark with the U.S. Patent and Trademark Office (USPTO).” However, as I mentioned above, common law trademark rights are automatically created once a work is sold. In response to your specific question, federal registration of a trademark is usually always desirable. The main reason is that common law trademark rights are geographically limited to the markets where the book series have been sold. On the other hand, if you register your trademark with USPTO, registration automatically confers nationwide trademark rights.
Justine: When should an author consider trademarking characters or series?
Greg: Only if the character’s name is used in a trademark sense, i.e. in connection with a product or service, e.g. merchandise that is tied into the work. For example, you could register the names of Star Wars™ action figure characters. However, USPTO will not allow registration of a single book titles, or the names of characters that only appear in an original work. However, the name of a book series can be registered by USPTO. Nevertheless, common law trademark rights may still apply to single works, characters, etc. This area of the law is a little weird and inconsistent.
Justine: What about trademarking an author tagline? Pen name? Author logo? Can the way an author name is displayed on a cover constitute and “author logo?”
Greg: Currently, an author’s logo, pen name, or tag line, can be registered as a trademark if it is applied to a series of books, not just a single work, but only if it is more than a mere identification of the author.
Using Other Registered Trademark or Copyrighted Works In Your Own
Justine: Can you use lyrics or song titles in your book without getting express permission if you credit the source?
Greg: No, unless the copyright has expired. Since this is usually difficult to ascertain, it is advisable to be on the safe side and obtain express permission from the publisher.
Justine: What about other registered trademarks or branded products?
Greg: Generally, such use is not infringing as long as the author is not using the brand in a trademark sense, i.e. to promote specific goods or services, or if the authors use would otherwise result in consumer confusion.
Justine: If a writer wanted to write a series based on a video game (see the Gameknight 999 series by Mark Cheverton as an example – it’s an “Unofficial Minecraft Series”), should the author try to get permission, or if they say it’s “an unofficial series,” that covers any possible infringement?
Greg: Since a video game is a copyrighted work, creation of a series based on a video game is considered to be a derivative work, i.e. one having the same themes, characters, etc. as the parent work. The right to create derivative works belongs to the owner of the copyright, so in this case, the writer would need to obtain a license to write a series based on a video game.
Justine: As an add-on to this question, if someone DID want to write a series about a video game or another copyrighted work, should they contact the creator directly, or should they have a lawyer reach out and help them negotiate using it?
Greg: They can try to contact the video game makers directly initially, but once the makers’ legal team gets involved, the writer is strongly recommended to retain an attorney to assist with negotiation of a license, both to ensure that the writer’s rights are protected, but also to ensure that the writer understands what rights they are getting in return and that they don’t violate the terms of the license.
International Copyright Questions
Justine: What protection does US copyright offer outside the United States?
Greg: It varies from country to country, and is governed by treaty. Some countries will recognize a U.S. copyright, but certain requirements may need to be met. It is also important to realize that enforcement of valid copyrights vary widely from country to country. Western European countries generally have legal enforcement mechanisms similar to those in the U.S. On the other hand countries in the Middle and Far East are notorious for lax enforcement of copyright and piracy of copyrighted works (e.g. movies).
Justine: Should authors who are citizens of another country, but who plan to sell their books in the US (via Amazon, iBooks, etc.) copyright their work in the US, or can they copyright in their home country? Or should they do both?
Greg: To minimize their risk, they should consult with copyright attorneys in both the U.S. and their home country.
Justine: If an author wanted to sell their books via their own online store to international customers, is copyright required in the country the person is purchasing the book?
Greg: Whether copyright registration is required is going to vary by country.
Justine: Let’s say a reader in England wants to buy my book from my online store, which is run in the US. I have my book copyrighted in the US. Do I need UK copyright to sell my book to the UK reader through my online store?
Greg: See answer above. Generally speaking, it would be best to secure copyright protection in any country where the author’s work will be sold. Otherwise, in a worst case scenario, an infringer could legally sell copies of the author’s work without account to the author for any profits. This is a somewhat extreme example, but it highlights the need to pay attention to the legal aspects of selling copyrighted works abroad. Also, be aware that many countries, for either cultural or political reasons, prohibit the sale of certain works entirely.
Justine: As a self-published author, if I want to sell my book on an Amazon site outside the US (say Canada or UK), do I need to register copyright of my book in each country where I wish to sell it?
Greg: Generally, yes, for the reasons given above. Amazon may have helpful information or recommendations regarding this as well.
US Copyright and Infringement Questions
Justine: There’s the old adage that a work is copyrighted as soon as someone puts pen to paper (or they mail a copy of their work to themselves). Is this true?
Greg: Yes, under the current Copyright Act of 1976, copyright is created once the creative work is fixed in a tangible medium.
Justine: Why should someone consider copyrighting their material?
Greg: There are many reasons. One of the most important is that registration is required in order to file a copyright infringement lawsuit in federal court. In addition, a work must be registered either before the infringement occurs, or within three months of publication for an author to be eligible to recover statutory damages and attorney’s fees. Attorneys are far more likely to take a copyright case on contingency if they have the ability to recover statutory damages and their legal fees from the infringer. Conversely, if the work is not registered, the author may bear the full financial burden of having to enforce their copyright.
In addition to the above, registration is evidence of validity, and it is a public record of the author’s ownership. This means that an infringer generally cannot deny ignorance of the work or its ownership as a defense. Finally, the Copyright Act requires that copyright owners deposit two copies of their works with the Library of Congress within three months of publication. Since you have to send these deposit copies to the Library of Congress anyway, it makes sense to register the work at the same time as well.
Justine: Are there situations where someone doesn’t need to copyright their material?
Greg: There are some exceptions to the Library of Congress deposit requirement. Generally, though, if you are publishing your work, it is a good idea to register the copyright prior to, or as soon as possible after, the work is published, for the reasons given above.
Justine: What about the content of your author website? Is it enough to put © 2018 Justine Covington Books LLC on the bottom of every page?
Greg: For the basic copyright notice, you should add “All Rights Reserved” in addition to the above.
Justine: Can you copyright your book in the name of your company/LLC? Pen name? If so, what do you give up if you don’t copyright in your legal name?
Greg: Generally, the author or joint authors of the work (i.e. natural persons) is the initial owner of copyright. The only exception is when a work is considered a “work made for hire”, which is typically a contractual arrangement between a company and an author/artist/creator. Copyright in works made for hire is owned by the entity for whom the work is made, i.e. the entity is considered the author instead of the creator employed by the entity.
Justine: A few weeks ago, I blogged about the Writer’s Guild of America West registry, which, based on their explanation, seems geared more for unfinished works (or finished screenplays…I always thought the Writer’s Guild was for screenwriters only). It allows writers/artists to register their ideas/plots/stories/scripts before they copyright them. Do you see a benefit to registering a work-in-progress?
Greg: In terms of establishing priority in a work, there may be some benefit to registering a work-in-progress.
Justine: What liability does an author have if they use a real, public location, like a museum, shopping mall, etc. in a book as a key location for nefarious acts (sabotage, murder, public sex acts)? What if it is a private location, like a real person’s home, or a business (Apple HQ, frex)?
Greg: Generally speaking, the more public the location, the better. On the other hand, using a specific person’s home or business can be a problem, as a particular person’s privacy rights or a business’ commercial rights have to be balanced against an author’s First Amendment rights. You have probably noticed disclaimers at the beginnings of books and in movie credits, e.g. “The persons and locations in this work are fictional. Any resemblance to real persons or places is entirely coincidental.” Such disclaimers go a long way, but they are not 100% protection against a libel claim.
Justine: Piracy is a huge, global issue. Is it worthwhile to go after book pirates?
Greg: As a moral matter, yes. However, authors usually have limited resources to pursue infringers. This is one of the reasons why registering copyright as early as possible is desirable, so that the author would potentially be able to recover statutory damages and especially attorney’s fees. As mentioned above, lawyers are much more inclined to take a case on contingency if the work has been registered so that they have a chance of recovering attorney’s fees and statutory damages from an infringer.
Justine: Can you pursue book pirates while keeping your identity private? We’re worried about folks who are pirating our books getting our personal information and using it to their advantage (after all, they’re already stealing our pen names).
Greg: Generally no. In order to enforce your copyright against infringers, you would have to bring an infringement lawsuit, and your identity is going to be a matter of public record. On the other hand, since copyright infringement is a criminal as well as a civil matter, you may be able to tip off law enforcement (i.e. FBI) about the piracy. However, the FBI has limited resources, so unless the piracy involves a huge sum of money, they may not aggressively pursue an investigation, or even open an investigation at all.
Justine: Is there a tool you can recommend to help find pirated versions of your works? It seems some writers spend lots of time searching for pirated versions of their works online.
Greg: I am unaware of any specific tools, but they probably exist, and if so can be located online.
Use of Images and Other Artwork in Published Works
Justine: Regarding the use of images we find online…let’s say I find something on Pinterest and I want to post to my social media accounts, touting it as a “cute funny” or “this made me laugh.” Can I do that?
Greg: Generally, yes. Keep an eye out for copyright notices, though.
Justine: What if my blog/website is monetized (I sell ads and/or my own books)? Do I need a special license to use an image on a site where I generate income?
Greg: Generally, no. When you cross the line from using images for strictly personal use like social media, to using images commercially, you should assume you will need a license from the copyright owner.
Justine: What about photos that are advertisements for products? Is it considered “fair use” because it’s an ad?
Greg: The answer to this question is highly dependent on the facts. In some cases, fair use could apply.
Justine: Most writers know that when doing their own book covers, they have to buy the rights to an image. What if they’re using an image in the public domain? For example, an image of artwork from 200 years ago? Or anything they find on Wikimedia Commons?
Greg: If the image is truly public domain, like an image with an expired copyright, then it should be fine to use, since any copyrights that the author had are exhausted. However, the tricky part is being sure that the image in question is actually public domain. On something like Wikimedia Commons, if they own the images, and there is language on their website indicating that the images are okay to use, then use of the images should be fine.
Justine: Greg, thank you so much for your time and expertise to answer these questions. We at Eight Ladies appreciate it very much!
Greg: You’re welcome.
Greg Ourada is a registered patent attorney whose practice focuses on both business transactions and intellectual property for clients ranging from startups to large, multi-national enterprises. Mr. Ourada’s trademark practice involves advising clients on trademark clearance, brand strategy, registration, and enforcement, and managing the firm’s sizable client portfolio of both national and international trademarks. As a patent attorney, Mr. Ourada prosecutes patent applications, advises clients on a wide range of patent-related matters including prior art searching, freedom-to-operate, and enforcement, and assists the firm’s litigation practice team with patent litigation matters. Mr. Ourada’s business transactions practice involves assisting clients with a full range of business issues such as contract negotiation, equity and debt financing, mergers and acquisitions, and technology licensing.