Trademarked Terms in Book Titles

April 13, 2017 9:17 AM

Am I allowed to publish a book with a trademarked term in the title? How about the non-trademarked title of another work?

I'm based in Canada, but assume I'm publishing online/through Amazon (and thus the book will be available in the US and elsewhere).

Examples:
The Ultimate Settlers of Catan Strategy Guide
Watching Star Wars in Space
How Harry Potter Changed My Life

posted by Prunesquallor to Law & Government (9 answers total)

You're not not allowed to.

If the owner of the trademark can prove in court that your actions caused customer confusion or damages, the court will determine what your restitution shall be.
posted by humboldt32 at 10:04 AM on April 13, 2017

Best answer: Consult an IP lawyer. humboldt32's answer is too simplistic.

A book called "Bob's Big Adventure Drinking Cokes at Disneyland" would be unobjectionable because it's a story about Bob doing real things that people do. "How Harry Potter Changed My Life" and "Watching Star Wars in Space" sound similar. There's no suggestion that Coke, Disney, Rowling, or Lucas has created or endorses the book.

But "The Ultimate Settlers of Catan Strategy Guide" is a bad idea because (1) there's presumably already another similarly titled book, and (2) you'll be including massive unlicensed material in the book itself.

So consult an IP lawyer, to look at your specific case.

This is not legal advice because I'm not your IP lawyer and I haven't studied your specific project or researched the above examples.
posted by JimN2TAW at 10:14 AM on April 13, 2017 [4 favorites]

Best answer: A quick search on Amazon brings up these two Star Wars books, both of which say "© & TM 2017 LUCASFILM LTD. Used Under Authorization."

I sure wouldn't try it, even if you're "allowed" to. These corporations have lots of IP lawyers at their disposal and they can quickly make it extremely expensive for you even if it never goes to court.
posted by AFABulous at 10:16 AM on April 13, 2017

"© & TM 2017 LUCASFILM LTD. Used Under Authorization."

Those Star Wars books are similar to your Catan idea. Each book contains protected characters and story lines. They need authorization if they weren't written by Lucasfilm itself.
posted by JimN2TAW at 10:21 AM on April 13, 2017

You can't trademark a storyline.

The nuances here vary by detail. The Catan example is particularly likely to get you in trouble because of the potential for perception of endorsement by the trademark holder. Even then, though, it's possible (depending on where you are) that there might be a nominative fair use defense. (But then there's the question of whether it would be considered a derivative work, running you into copyright problems...) If you have a serious idea, you need to talk to a lawyer.
posted by praemunire at 10:49 AM on April 13, 2017

This is a fact-specific question about whether you're creating consumer confusion, or otherwise infringing on the trademark. I second the answer JimN2TAW has given you - this is not as simple as "no, you can't." There are absolutely cases where you can use a trademark's name in a book title without permission. And there are absolutely cases where you can not.
posted by mercredi at 11:46 AM on April 13, 2017

Just an anecdote but: I own a paperback mystery novel called Elvis, Jesus, and Coca-Cola and just looked at the front and back covers and copyright page. While there are plenty of copyrights, credits, and permissions listed, nowhere does it indicate any sort of disclaimer or any trademark notes about Coca-Cola.
posted by rhiannonstone at 6:54 PM on April 13, 2017

Others have mentioned the nominative fair use defence in the US. In Canada, the defence to infringement you are after is called Bona Fide Use, and is covered under s20(1.1) of the Trademarks Act. They're similar, but not necessarily identical concepts.
posted by jacquilynne at 7:36 PM on April 13, 2017

IANAL, but my gut view is that a work which referred to a trademarked term in its title would probably be OK if the use of the term was obviously in the context of a work either simply playing on the name's pop-cultural associations, or explicitly critical of the named product, i.e. something which could not reasonably be confused with a tie-in licensed work for the original mark. A notable example in an adversarial work is Fox v. Franken, a lawsuit alleging that Franken's Lies and the Lying Liars Who Tell Them: A Fair and Balanced Look at the Right was an infringement upon Fox's trademarked phrase "Fair and Balanced". The suit was dropped by Fox in the face of withering scorn from the judge. In an amicus brief, the Authors' Guild mentioned other examples:

Book titles that use trademarked words and phrases have become increasingly common in American literature. In fiction, such works include Breakfast of Champions by Kurt Vonnegut and Looking for Mr. Goodbar, by Judith Rossner and, more recently, Elvis, Jesus and Coca-Cola, by Kinky Friedman and The Devil Wears Prada, by Lauren Weisberger. In nonfiction, the use of trademarks in titles is even more common: The Electric Kool-Aid Acid Test, by Tom Wolfe; Prozac Nation, by Elizabeth Wurtzel, and The Lexus and the Olive Tree, by Thomas L. Friedman are a few examples. The list of additional examples on Schedule A, which members of the Authors Guild helped to compile since the Guild received leave to file this memorandum, is more than twice as long

I've unfortunately been unable to find the associated Schedule A, but the prcedent in law here looks pretty strong for works which are either critical or drawing on a pop-cultural association. I'd be curious about what, if any, licensing surrounds Cory Doctorow's Down and Out in the Magic Kingdom, a book whose story is more than incidentally involved with the trademarked entity in the title.
posted by jackbishop at 6:55 AM on April 16, 2017 [1 favorite]