A lesson learned? Trademarks.

[psychotick]

Hi,

Thought I'd share with you my misadventures of the last two days. Partly as a lesson of what not to do, partly as a question of how many of you even think about this subject.

So the guts of it is that yesterday morning, after a very long night going through the second external edit of my book, I pronounced it done and pubbed it on Kindle and Smashwords. And then at about eight o'clock in the morning I went to sleep - happy. At ten thirty I woke up in a sweat and suddenly realised that there might be a problem. My new book was called "Alien". And though it has absolutely nothing to do with space monsters, and you can't copyright titles, I realised the title could be trademarked.

So after hours, literally hours, of wading through the site for patents and trademarks, I found it, and sure enough "Alien" is trademarked by a certain studio for among other things, fictional novels. Bugger! (By the way if you do a search of the website of the office on "Alien" you get over seven hundred and fifty hits.)

Now did this mean the book was in danger of being considered in violation of a trademark? I on't know. But on the possibility that it might be, new titles, new covers and new texts were readied and uploaded, and to cut a long story short, (or make a short snappy story title long), Alien Caller was born.

Ok, so maybe I was stupid. It is after all a big franchise. And in fairness I wasn't the only one. During my search of kindle etc, I found two other novels called "Alien" as well as the Alan Dean Foster one. Don't know if they are older than 1976 and so exempt, or else no one really cares. But it did occur to me that as I went through this process that I'd never thought to check on the titles of any of my other books. An I know that there are other books out there with the same titles. There are three Mavericks for example, and I suppose any one of the other authors could have trademarked them.

So my questions for you guys, are how many of you actually check these things? Anyone know how much trouble I could have actually been in? Or is it permissable to publish a completely unrelated work with the same title?

Cheers, Greg.

 

[CupofJoe]

I don't know about the legality of having the same name but I think the swamped-factor is most important. If you can't be found then you can't be read...
A friend of mine, for each project they start; does...
an extensive search on their desired title/name,
derivations of words in their title/name,
contractions of their title/name,
homophones of words in their title/name,
homophones of their title/name... etc.
Often tweaking the title/name as they go.
Only after they have refined the title/name to be unique enough do they settle on "the one".
It has taken him days, off and on with dead ends and cul-de-sacs, to get the right answer.
And IMO the final Title/Name is usually better than his starting idea.

 

[TheokinsJ]

I always check out my names for my books in google and see if anything comes up. I don't usually do a lot of research, but I guess that's more because my names are fairly original. Anyone who is thinking of using a title that is a word or phrase, I would definitely recommend they look it up. As far as copyright goes I'm not sure if you'd get in trouble for using the world 'Alien', as the term 'trademark' usually applies to logos and other such things, rather that actual words. However copyright might be an issue, but I don't know, I guess you'll have to do some more research, hope this helped!

 

[SineNomine]

I'm certainly not a lawyer and this shouldn't be construed as legal advice, but based on my extremely limited understanding of trademark law, you're pretty much in the clear. The fact that it has been used before is huge, it shows that multiple works using that title has a history of being distinguished from one another despite that similarity. Remember, the heart of what trademarks are is protection against someone else passing off a similar product and using your identifying features to do it. While a title is a pretty prominent identifying feature, titles are also frequently inherently descriptive instead of solely existing as an identifyer. Descriptive names aren't protected by trademarks.

Assuming that your book involves an alien, which is a pretty safe assumption, and assuming the cover art or story is not confusingly similar to the trademarked "Alien" line of books, you should be fine legally. Trademarks have a history of being difficult to defend, someone really has to be clearly trying to take advantage of your popularity to get shut down by the courts.

...all that being said, even being in the right is only a protection against the courts ruling against you, not the trademark holder taking you to court. It would be pretty nightmarish to have to defend yourself and your work in court. There might be something to be said about keeping your head down and going out of your way to not ruffle any feathers just to not have to deal with that.

 

[Steerpike]

Some misconceptions in this thread that should be cleared up:

the term 'trademark' usually applies to logos and other such things, rather that actual words

No, a trademark can apply just as well to a word and in fact there are tons of word marks out there. It is a standard thing to do when registering a trademark.

...However copyright might be an issue.

No, titles aren't protected by copyright, as they're too short to be protected. The Copyright Office has taken a fairly absolute approach to this.

Descriptive names aren't protected by trademarks.

Not true. Descriptive names can certainly be protected. If they are descriptive, you need what is called "secondary meaning." That comes with time (among other things). Generic names can't be protected. If you want to argue it was inherently descriptive of the original work when first released (which is an argument that can work when it comes to book titles), the problem becomes that the mark now arguably has tons of secondary meaning thanks to the success and widespread recognition of the franchise. If there was only one "Alien" novel instead of a franchise and nothing to go with it, you'd likely see it treated as merely descriptive, as is commonly the case with one-off book titles.


Greg, in all likelihood this would only become an issue if the book is a huge success. That's when you get on the radar of the trademark owners and they have to decide whether or not they want to do something about it. Generally, it is going to come down to a likelihood of confusion analysis - whether your use is confusingly similar to that of the trademark owner. If the trademark owner can demonstrate that they have a "famous" mark, then they have other options available to them that do not rely on confusion or the idea that you're trying to pass off your product as one of theirs or being affiliated with theirs.

I feel the risks in your case are pretty low. As pointed out, above, if Twentieth Century Fox DID try to come after you over it, it could cost you a lot of money to defend the case, even if you're in the right (if it goes all the way through trial you could spend $300K to $500K on defending it. Could be less, but those figures are not unrealistic).

If you self-publish a book and it is doing moderately well or less well than that, this will probably never be an issue. If you had an unqualified smashing success and were the next big self-publishing story, then who knows. It might.

 

[Sheriff Woody]

Alien is the name of the film series, so I would assume 20th Century Fox has the rights to that name.

It's like calling your novel 'Star Wars'. Can't do it.

What you can do is simply call the novel 'The Alien' or something to that effect.

 

[Nihal]

Alien is a concept, a definition. Generic. It's like saying you can't name your novel "Tree" because someone else copyrighted it. I think there is a base to a fight if the 20th Century Fox decides to sue you over the use of this word.

"Star Wars", however, is more distinctive. It's formed by two generic words, but together they are not generic by any means. Not only because it's not a recurring expression, but because they became distinctive by it continued use to denominate the franchise. Do you get yourself calling any sci fi that involves wars in the space "a star war"? I think not.

 

[Steerpike]

Nihal, genericism is always determined in light of the good and services at issue. If I sell cookies under the trademark "car," it isn't generic, because "car" is not generic for cookies. If I sell cars under the trademark "car" I have a big problem. Likewise, the word "alien" isn't generic for books or movies. If you were selling an actual alien under that trademark, then you'd have a hard time defending it. Many, many trademarks are comprised of every day words, and they're not hard to defend. Genericism only comes into play when your mark is generic for the actual goods or services you are using it on.

 

[j.k.m]

I have looked into copyright law. It seems that it is not the title, but the content that is copyrighted. An obvious example of are song titles. And, as you point out, there were there were two other novels called alien.

 

[Steerpike]

I have looked into copyright law. It seems that it is not the title, but the content that is copyrighted. An obvious example of are song titles. And, as you point out, there were there were two other novels called alien.

We are tailing about trademarks. A title cannot generally be covered by copyright.