Trademarks and the Writing Life

For this month’s column, I’m delving into an area I don’t often talk much about in the publishing context: trademarks. The reason I don’t often delve into it is that trademark law only affects authors in very limited circumstances. There is not much that authors can trademark and most of the trademarks that appear on books belong to the publisher, e.g., “HarperCollins” is a trademark belonging to the publisher that will appear on its books.

So what is a trademark anyway?

As the reference to HarperCollins suggests, it is a source indicator—a signal to consumers of the source of a product or service they may want to buy. It’s a shorthand way to indicate something to purchasers about the quality/consistency of the product or service: for example, if you see McDonald’s golden arches on a building, you know exactly what to expect when you go inside the restaurant—a budget priced menu of fast food including familiar items like Big Macs and Fries.

Because a key purpose of trademark law is to protect this ability of consumers to associate certain products/services with their manufacturers, trademarks really serve a commercial identification function. Rather than protecting creativity, they protect consumer associations (although the creative aspects of some trademarks—like a distinctive graphic design—may be protected by copyright law as well).

Understanding the rationale for trademark law will probably help explain the answers to the two main questions authors typically ask about trademarks:

1/ Can I trademark my name (including a pen-name) and/or book title?

2/ Can I refer to someone else’s trademark in my own work?

Trademarking Authors’ Names and Book Titles

You typically cannot claim a trademark in your name as an author (even a pen-name) or in your book title. This is because, unlike the publisher’s mark—HarperCollins, Simon & Schuster, etc.—your personal name and book title don’t tell consumers anything about the source of the book in a trademark sense. If the purpose of trademark law is to support consumer associations between producers/manufacturers and their customers, it’s really the publishers’ marks that serve that function.

The book’s title doesn’t tell consumers anything about the source of the book—it just identifies the book and distinguishes it from other books.

Your name as an author is a form of source identifier (for example, readers will expect different things from a Stephen King book than they will from a Janet Evanovich book), but the law treats this kind of source differently from the consumer associations protected by trademark law. The Supreme Court made this clear some years ago in the case of Dastar v 20th Century Fox when it held that trademarks protect the producer of physical items (in that case video cassettes, but the same would apply for books), rather than the original creator of the works. Dastar was an unusual case and this explanation is an oversimplification, but the main point is that copyright law is supposed to protect those who create original works like books, movies, music, etc., and trademark law protects the source of production of the physical items that go out into the marketplace.

Using Someone Else’s Trademark in Your Work

The second question about using other people’s marks in your writing is more complicated. Generally, if you are simply referring to someone else’s mark in the course of your short story, novel, memoir, etc., that’s not a legal problem. This result makes sense if you think about the purposes of trademark law—to identify the source of a product in the commercial sphere. If you happen to refer to a character who likes to drink Coke, or likes to drive a Porsche, in the course of your novel, you are obviously not suggesting that Coke or Porsche is the producer of your book.

However, problems can arise where you use someone else’s trademark so prominently in your own writing that consumers may be confused about whether that trademark holder actually is affiliated with your work in some way. For example, if you write a book about how to become a better Scrabble player and you prominently use the Scrabble trademarks throughout the book, it may be unclear to readers whether the makers of the game are the producers of, or in some other way affiliated with, your book. Even in a situation like this, you can usually avoid infringing the trademarks if you make it clear that your book has not been authorized by Hasbro (the U.S. owner of the mark).

Of course, there’s the additional wrinkle that whether or not your book actually DOES infringe a trademark, nothing stops the trademark holder from threatening legal action, which is why many publishers will avoid publishing books that prominently use highly protected marks unless they have permission. They just don’t want to take the risk. A lot of the books you see on the shelves that prominently feature trademarks (like LEGO and Barbie) are published under a license from the trademark holder, and often those projects are initiated by the trademark holder, working together with a publisher, and hiring authors and illustrators on a work for hire basis.

The bottom line is that if you’re writing a standard novel, memoir, short story, etc., you are unlikely to be infringing someone else’s mark even if you refer to it in the text. So there’s very little to worry about unless you get into the kind of writing where your work suggests an affiliation with a trademark holder; and then you should probably seek expert advice before publishing. If you approach a publisher, they will probably ask you about existing trademarks that may impact publication.

As always, this column is not intended as formal legal advice, so if you are concerned about uses of a trademark that may be problematic, you should seek advice from an expert.