Copyright Conundrum Why the Title of a Novel Cannot be Safeguarded as a TrademarkApr/May 2007 – American Journalism Review, April/May 2007 Issue
WHY IS THE TITLE OF A SINGLE WORK REFUSAL A CATCH-22?
The answer is that Catch-22, the title of Joseph Heller's best-selling novel, is not a source-identifier and, thus, cannot be protected as a trademark, at least according to the U.S. Trademark Office. A title is not a trademark because it identifies the work itself and, therefore, the title does not identify the source of the work (i.e., the author or publisher). The cases upon which this doctrine are based hold that the title of a work is descriptive of the work and therefore, like other descriptive terms, incapable of functioning as a trademark. By analogy, the term orange is descriptive of a type of fruit and incapable of identifying the source of the fruit, while SUNKIST, an arbitrary name, does not describe the fruit, and can thus identify the source. The courts argue that the title of a book is like the name of a type of fruit, rather than the name of the source. They reason that the title of the book is the only way to call for the book, so it must be descriptive. In other words, because the author has named his or her book XYZ, XYZ is descriptive of the work and, therefore, it is not a trademark. Since the title of a single work is not considered to be a trademark, it cannot be registered as a trademark to protect the title. This doctrine of denying trademark protection to titles of a single works applies to books, software, songs, and other works of art. Interestingly, Copyright law also prohibits the registration or protection of titles. This prohibition against trademark protection for titles applies only to single works such as books, not to series of books or columns.
- The title of a single creative work is not registrable on the Principal Register or the Supplemental Register. Examples of "single creative works" include books, videotapes, films and theatrical performances.
Trademark Manual of Examining Procedure, § 1202.08. Thus, if you are the author of a series of books (J.K. Rowling's HARRY POTTER series), or a syndicated newspaper columnist (Esther "Eppie" Pauline Friedman Lederer's, better known as Ann Landers, ANN LANDERS), or the producer of a series of motion pictures (JAMES BOND), the series name may be protected as a trademark. But if you are the author of a book, even a best-selling novel like Catch-22, it is unlikely that the U.S. Trademark Office will allow you to register the title of your book as a trademark. You will be forced to rely on the law of unfair competition to protect the title of a single work from misappropriation. So why is the title Harry Potter federally registered as a trademark, despite the fact that it is the title of a single work? It is likely that this mark registered because the application covered not only books, but comic books, magazines, and numerous other goods for which "Harry Potter" could not be held descriptive. On the other hand, a search of the Trademark Register for such titles as Under the Tuscan Sun and The Color Purple reveals that these titles are not registered. Thus authors such as J.K. Rowling enjoy the protection of federal registration, including the presumption that the owner of the federal trademark registration has the right to use that mark in commerce anywhere in the United States, while other authors do not. In order to take advantage of the protections offered by federal trademark registration, authors are able to utilize either of the following strategies. First, the author of a book could simply use the title as a trademark on other goods, such as pencils or note pads, as well as using the title as a title. In the alternative, an author could compose more than one book and offer them as a series. In either case, the Title of a Single Work Refusal would be inappropriate. Thus, according to the Trademark Office, an author need be either prolific or commercial to benefit from federal registration of the title of a work. For an author who can be neither, the Title of a Single Work Refusal remains a Catch-22.