Monday, February 08, 2016

Time to review trademark basics again, and some questions still remain murky


Every once in a while, it’s a good idea to revisit trademark rules.

There are two sites I’ll point to.  One is on Slate, “Can you trademark the phrase 'Let’s Roll'?”, article by Chris Suelentrop.  The short answer to the question is, “Yes you can” (Obama!) if you use it to brand a service or product in actual commerce.  But normally you can’t stop others from using the phrase in unrelated businesses or contexts.  Congress has carved out an exception to the “unrelated” provision for “famous brands” like Kodak or Kleenex.

Another nice site is “Secure your Trademark” by Xavier Morales, who asks, “What can be trademarked”.  The answer is, almost anything in real commerce.

It gets interesting in a few areas. One is that a “series” of movies or books using a common set of words as part of a title (like “Star Wars”, or “Harry Potter” or “…for Dummies” {or “Idiots”}) can be trademarked as a “franchise”.   I can make that case for my own “Do Ask Do Tell” series, partly because (in addition to using the phrase to begin each title) the second and third books contain new content about subject matter not covered in the previous books.   What about remakes of the same movie or rewrites of the same book?  While the content of movies and books is emphatically protected by copyright, titles alone are not.

It gets murky because some movie production companies have claimed, with some success, that the titles identify them as movie-making businesses, as explained here.  This is more likely with comic book or children’s or game-related entertainment than with more mainstream stuff.

Still, if you simply republish new versions of the same book, or remake the same movie, the concept as a “brand” is likely to be regarded as insufficient.  If the books have new subtitles, or cover new content because of intervening history (like 9/11, the 2008 financial crisis, Katrina, gay marriage, etc.) the claim could be stronger.



You can wonder about whether a TV miniseries (like “Madoff”) title can be trademarked.  A four-hour film in two  parts seems like a single movie.  A film in two parts (like the way Lionsgate has released the last “Hunger Games” piece) itself might find its own title isn’t trademarkable even though the entire series is.  You would wonder if “Shoah” is a single film (ten hours) or a series.  A miniseries that runs into a second season would sound like it has a stronger case (“Law and Order” or now, “The Leftovers”), to me at least.  A YouTube channel that sells advertising space could trademark itself as long as it offers multiple separate works.

I suppose music could run into the same idea.  A series of piano sonatas is not itself trademarkable, because Sonata is a public, generic word describing a particular kind of musical composition (being broken into movements doesn’t change the fact that it is sold as one “piece”).   But what happens if the series has a unique name?  What happens if a pianist commissions a series of relatable works from different composers (and this is becoming more common today)?  The entire series could have a name, and be trademarked because it would become a brand that helps the pianist get booked for professional tours of concerts (and make a living).  But the individual compositions, whose copyright belongs to the composers, would not be trademarked.  (I suspect the “Dances of David” can be trademarked, but I don’t know if it is.)

Does the business format matter?  It doesn’t seem to.  Non-profits can trademark products that are in commerce (PBS can trademark series of related DVD’s like “Frontline”; Blue Cross can trademark its health insurance service).  I do wonder about some questions.  You don’t have to do an IPO to have a trademark (Mark Cuban might object), but maybe your case is stronger if your work is legally separate from you (an LLC instead of a proprietorship).  At least I wonder.  Having books in commerce (on Amazon) would seem to meet the commercial requirement.  Does it undermine your case if you allow the content to be viewed for free online? Does it help if you take credit cards yourself rather than let third parties (Amazon) do all that for you?  I’ve wondered.  I get a lot of questions about selling books as a commodities rather than as “instances” of content.  I think there could be underlying political issues (or social responsibility problems) about giving people jobs, for example.  Profitable retail sales can do that sometimes.  I also notice that some book series that might appear similar in concept to mine provide a lot more “tutorial” information to guide readers, as if they were “how to” guides (or “self-improvement”) intended “for” consumers rather than built as abstract (autobiographical or political) academic narratives like mine.  But most of this “probably” does not matter to trademark law itself.  The key concept is how closely a question like this relates to “branding”.  And “brand” is all about selling (even “pimping”)  and commerce, not about the content itself (which is what copyright is about).

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