Trademark & You
There has been a lot of talk lately about the #darkgate incident closely resembling #cockygate and some of you are already looking at me thinking… what?
Okay rehash in a few simple lines for a subject that is anything but; Feleena Hopkins, tried to trademark the word “Cocky” in the US for her cowboy themed books. Subsequently she threatened and scared many authors into yanking titles offline, but the backlash against her was enough for her to pull the trademark. But the damage was done. Hopkins as a self published author had just done the unthinkable and turned against her fellow self publishers. She will never be forgiven in some eyes and though I don’t publish cowboy romances, I don’t blame them.
So when extremely well known author Christine Feehan tried the same thing only months later with the word “dark”, to say Twitter exploded was an extreme understatement. (I may or may not have joined in the shenanigans… okay you bet I did).
The author has since updated her Twitter page to do a complete 180 after only a week since she made the original post;
To say that she is sorry might all be too late in the eyes of many after what she did, but the fact of the matter is that she’s behaved in a far more noble way than Feleena Hopkins did. I hope in the coming days the author world treats Feehan better for her frankness and apology. (That last line though – its a brave thing to admit you made a mistake like this one).
But how does that effect YOU?
Please welcome fellow writer and Twitter buddy Zack Riley, who’s my guest on today’s blog post with his words of wisdom on Trademark laws, what this means and how it affects you;
I’ll start by saying this is only educational and not legal advice and may not be 100% accurate to the law or specific laws in specific countries.
I’ll try keep this short as trademarking something is expensive among small artists/authors, and so on and only really matters once you truly establish yourself. If this doesn’t describe you then copyright protection would benefit you more as it protects the work you make, where a trade mark protects your logo or brand.
For example, a character can’t be trade marked unless it is a literal part of your logo. The purpose of a trade mark is to protect you as a creator from a competitor trying to confuse a customer from using a similar/same name so not to buy your work. It would be very confusing if there were two different K-mart shopping chains out there in the same location selling similar items.
A trade mark must be an established and constantly used on everything to keep it. In the case of the trademark on the word cocky, the author had used the series title of “cocky” and therefore pushed the trademark on the word. The way trademark law works though is having the word “cocky” not only blocks the word from being used but anything that sounds like it, effectively cock blocking the use of the word, pun intended.
This caused a huge uproar within the writing community attracting 27000+ signature’s on a petition to overturn the copyright, and in a court ruling by judge Alvin Hellerstein, found the trade mark not enforceable against authors as there would be no market place confusion among purchasers of romance novels. He called the term cocky, “a weak trademark that could only be enforced against direct, deceptive imitation.”
So why was cocky awarded the trademark? Probably the uniqueness of the name, and poor research into the overall use of the name. This also only covered her market, however unfortunately knocking off the use of a lot of other people’s book titles and ultimately failed because of the over saturation of the use of the term within the writing community.
Trademarks are only set within a set geographical area, such as the state of New York in the USA, meaning that someone in Colorado could legally use the same name unless the trademark is applied for all states and territories within that country. This means that someone in Australia or the UK could still legally use the trademark within those countries unless the trademark is again, applied to every country that the material is relevant. You need to still defend your trademark if its contested where ever its current. This can get expensive and there is a mountain of paperwork. If however you receive a takedown notice for breach of someone’s trademark, you should seek legal advice. You may not be in the geographical area the trademark is represented in or be outside the bindings of the trademark. There are many ways to protect your own brand and if you are not directly trying to deceptively imitate the trademark holder, you may have a case. Be mindful that sites such as amazon are located in the USA or the set geographical area of a trademark holder, therefore the trademark may apply to your work. Remember, you can always opt not to sell to that area if you clash.
Different rules apply to huge and established brands such as Disney, Pokémon and Harry Potter, for example, that protect the brands. In some countries trademarks do not need to be registered with the government, the same with copyright but if you can register your trademark then you have a better chance of winning a case.
In Australia the fees just for the application are $200 pre trademark at the cheapest option. In the USA I believe its $250, so if you are applying for more then one trade mark this can add up. To renew a trademark, its $400 in Australia minimum per trade mark so I hope you have plenty of cash.
So how do you protect your work the free way? Copyright.
How do you get Copyright? Simple, the moment it exists anywhere else but your mind, you own the copyright to it. You are god, you just have to prove it. So a date or place is a good way to do this, such as publishing a work online, there are many ways to go about this but you own the copyright. Advice for an author is to register an ISBN with your book and also send a copy of your book to the national library of your country.
So, what does copyright protect you from? Having your work copied, derivative works, fan fiction, and so on. Yes, I know fan fiction is a derivative work but for this example we will say fan art and toys.
Say you become an established brand and have artwork of a character in your world, someone could create fan art of your work. As the copyright holder you own the copyright to that art work and therefore can make a case for someone not to draw your characters or write fan fiction, shipping character A with character C instead of character B. You have the right to say what can and can not be said about your work and send a cease and desist letter if what is drawn/written is not to your taste. You also have the right to claim any/all money from derivative works based on your original work. For example, if you sell a Star Wars x-wing drawing or 3d model you printed then Disney has the right to stop and claim any/all monies you made from that venture. Obviously, some areas can damage fan bases and this is why things like Harry Potter fan fiction and artwork can be found. An example of a copyright being infringed is the song “Down Under” by Men at work and the rifts taken from the song Kookaburra where the rights are owned by Larrikin Music.
Be mindful (as seen a lot on YouTube) adding, “Copyright and Trademark infringement not intended” or something similar to any part of your work is blatantly admitting that you have infringed on someone else’s work.
The use of a trade mark to protect your brand based on a title honestly doesn’t seem like the best of ideas. And from Cocky gate we have seen the fallout of this. A smarter option would have been to apply for a trade mark on a pen name. You honestly won’t see anyone else selling books under the name Stephen King or Tom Clancy for example. If it is really that saturated a market that you need a trademark for a book title or series title, wouldn’t it be better to pick a different name instead of throwing good money down the drain?