Overlapping Trademark and Copyright Protection

By Lloyd Jassin

Like Madame Curie and Mariah Carey, copyrights and trademarks are sometimes mistaken for each other - the irony is that the fundamental purpose of trademark law is to avert consumer confusion.  

Trademarks protect brand recognition and reputation. They do so by preventing others from copying source identifies such as words, slogans, illustrated characters, series titles, and logos, that allow consumers to distinguish the source of one product or business from another. Copyright law protects original works of authorship, including literary, dramatic, musical, artistic and sculptural works.

While copyrights and trademarks protect different property interests, brand owners can use both to protect their exclusive rights.  Take, for example,  Trix cereal. The way the Trix cereal box is dressed up for sale at your local market, with bright colors and bold graphics, and other branding elements, conjures up an association with General Mills. The body of law that protects the overall look of the Trix cereal box is called trade dress - a subset of trademark law. Trademark law also protects the Trix name, logo, cereal mascot, and the marketing slogan, Silly Rabbit, Trix is for Kids.  

Coexistent with trademark protection, General Mills has in its intellectual property arsenal copyright law with which to protect their cartoonish cereal mascot against unauthorized copying. Currently, enforcement opportunities are available to copyright owners that are not available to trademark owners. Only copyright owners can use the Digital Millennium Copyright Act (DMCA) to have infringing online content removed without resorting to litigation. Internet service providers have a legal obligation to put the content back up if the person tagged as an infringer in a take down notice sends a counter-notice stating they believe the copyright owner is wrong. Unless the copyright owner commences a lawsuit within 10 – 14 days of receiving the counter-notice, the content goes back up. The prerequisite for filing a copyright infringement lawsuit is registration with the U.S. Copyright Office. If you register a work before it has been infringed, you may be entitled to receive statutory damages. If you can prove the infringement was willful, you may be entitled to the maximum amount of statutory damages, which is $150,000.  Otherwise, you might only win actual damages. Statutory damages provide an incentive for brand owners to register their copyrights.

Finally, patent law, another layer of intellectual property, protect General Mills' proprietary process for turning a yummy slurry of "sucrose, fruit puree, and calcium carbonate" into gay little corn puffs in a rainbow of colors. Three legal theories . . . one silly rabbit. 

The Trix rabbit's attempts to use disguise (e.g., balloon seller, Bugs Bunny) and deception to flimflam children into giving him a bowl of cereal are cartoon con games punishable in the court of cartoon justice. However, when deception is used to steal customers from General Mills, that constitutes trademark infringement and unfair competition. 

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 How to Distinguish Kix from Trix Brand Cereals (Satire)

“Atomic Bomb” ring from a box of Kix cereal? You can't make this stuff up.

 

KIX® has been dedicated to helping kids get a bright start to their day since 1937. - General Mills

 

In 1947, General Mills offered kids a new way to light up their day -- with a Kix (not Trix) atomic "bomb" ring cereal box premium.  Kids would send in a cereal box-top with a small amount of change taped to it, and receive in the mail a Kix Atomic Bomb Ring. Atop the ring was a nuclear warhead that held a secret compartment.  A cold war lens of history found in a box of Kix cereal.

According to the Toy Tales website, after removing the red base of the warhead, kids could look "through [a] toy spinthariscope’s (a device for observing individual nuclear disintegrations) plastic lens while in a dark room [that] revealed flashes of light."      

The ring's instructions read, "you'll see brilliant flashes of light in the inky darkness inside the [ring's secret] atom chamber."  The frenetic streaks of light were caused by polonium alpha particles in the chamber striking the ring’s zinc sulfide screen.  No worries. The traces of polonium, a rare and highly radioactive metal discovered by Madame Curie (not Mariah Carey), only had a half-life of 138 days. 

During WWII, General Mills (not a real general) helped the war effort by working on torpedoes and gun sights for the U.S. military.  As the maker of the quintessential American breakfast and defender of the American homeland, the leap from torpedoes and gun sights in 1944 to atomic bomb rings in 1947 must-have made sense on the page.  

General Mills introduced the borderline confusing Trix brand cereal in 1954 as an alternative to their healthy corn puff cereal Kix.  Their distinguishing characteristics?                                       

Trix is for kids . . . not rabbits.

Once upon a time in America, Kix kids glowed in the dark.

 

 

A Writer's Guide to Copyright Termination

How to Recapture Your Copyrights

Most book publishing agreements signed within the past four decades profess to be forever. However, don't believe everything you read. There's a pro-author loophole in the Copyright Act.  Despite what a contract may say, a five-year window opens up the earlier of 35 years after initial publication or 40 years after contract signing when an author can walk away from a bad deal or attempt to negotiate a better one.  This right is a powerful right that cannot be waived.

Except for works for hire (discussed later), all copyright grants, including book contracts, film option agreements, and music publishing agreements, entered into after December 31, 1977, are terminable.

 

As they say, the devil is in the details. How you calculate the termination date, the form of notice you must send, the timing of the termination notice, and when it must be recorded with the U.S. Copyright Office is frustratingly complex. The consequence of non-compliance with these complex and arcane copyright termination rules is your publisher retains the rights.

 

Grants can be terminated during a five-year window beginning the earlier of 35 years after the date of initial publication or 40 years after the grant date. For example, provided the grant was not made by a will, a December 28, 1990 grant can be terminated as early as 2026 or as late as 2031, provided notice is timely served.

Practice Pointer. A Notice of Termination must contain the effective termination date - a date set by the copyright owner. The notice may be served up to 10-years before the effective date but no later than 2-years before it. The notice must be recorded at the Copyright Office before the termination date selected. If your calculations are off or you fail to record the notice timely, the notice is null. The termination right cannot be waived by contract.

If an author dies before serving their notice of termination, that termination right vests in their spouse (50%) and children (50%). To effect termination, a majority of the author's next of kin must sign the termination notice. Common pitfalls include missing the termination notice filing deadline, submitting notices on behalf of less than a majority of those needed to sign the notice, and failing to record the notice with the Copyright Office.

Except for works for hire, every author contract entered into on or after January 1, 1978, is subject to termination. 

Comment. Filing a Notice of Termination does not mean termination has taken place. It's a waiting game. Notices must be served upon grantees (or their successor in interest) between two and ten years before the actual termination date. If improperly done, the notice will be rejected by the Copyright Office. Finally, the recipient may challenge it.

To put the termination right in perspective, an author's copyright is protected for seventy years after their death. If not exercised, rights remain with the author's publisher or producer partner. It's worth noting that termination rights only apply to U.S. rights. Under what's called the "derivative works exception," derivative works can continue to be exploited after rights revert.  For example, a motion picture adaptation of a book may continue to be exploited after termination.  However, after the termination takes effect, the producer or studio cannot create new derivative works, whether a remake, sequel, prequel, or novelization.  

British Reversionary Rights

The U.S. is not alone in allowing an author's heirs to reclaim rights. Commonwealth Reversionary Rights, which exist in the United Kingdom and in former commonwealth nations such as Australia, New Zealand, South Africa, and Canada, allow an author's heirs to reclaim copyrights. 

Pre-1978 Creative Works

Books and other creative works published 56 years ago are also subject to copyright recapture under a less publicized but equally powerful section of the 1976 Copyright Act. For example, in 2008, the U.S. Court of Appeals for the Ninth Circuit returned rights to the 1938 children’s story Lassie Come Home to the author’s family. Unlike the “35-year rule,” here, the critical date was the date of copyright, not the publication date or date the contract or license was signed. In this instance, Congress thought it was fair to award the additional term of copyright conferred by the controversial Copyright Term Extension Act to authors and their families, not the publisher. Like the 35-year rule, it is the author’s responsibility to understand whether they are eligible to terminate. 

 

Contact attorney Lloyd Jassin, jassin@copylaw.org, tel. no. (212) 354-4442

 

Related Articles

An Author's Guild to Trademark Law

Book Contract Negotiation Checklist

Libel in Fiction

Libel in Fiction

By Lloyd Jassin

Q: My main character is loosely based on a real person. I mean, that's who inspired me. I never identify him by name (he's my ex-friend), and I've made up 90% of the events in the book. After the book becomes successful, I'm worried he'll come back and try to take a stake in the millions. What can I do to prevent this? - GWB

A:  While such lawsuits are rare, you can be sued for defamation if your novel falsely depicts your former friend in an unfavorable light. 

 

Libel is a false and defamatory statement of fact communicated to a third party about an identifiable living person that damages their reputation. While it's logical to assume that a work of fiction that describes a world that doesn't exist is incapable of defaming a real person, that's not the law.     

 

For a novel or other fictional work to be actionable, readers must believe the allegedly defamatory statements are actually about the plaintiff. The description of the fictional character must be so closely aligned with a real person that someone who knows that person would have no difficulty linking the two. And, there must be an implicit belief that what the author wrote – notwithstanding disclaimers – was true. What about a fictionalized autobiography? If a character (i) is depicted in a defamatory manner, (ii) is recognizable, and (iii) a reasonable reader can understand the defamatory statement to refer to that person, there's no veil of fiction to hide behind for purposes of libel law.   

Happily, for writers (and The Weekly World News), libel in fiction claims generally do not survive a motion for summary judgment. That's because courts recognize several defenses and privileges to defamation claims, including substantial truth and statements of opinion. Another reason many defamation lawsuits fail is that the plaintiff fails to make their case. Under U.S. defamation law, the plaintiff bears the burden of proving the defendant acted negligently.

Despite the breathing space the First Amendment affords writers, not all libel-in-fiction lawsuits are resolved favorably for the author,  their publisher, or producer partners. For example, in 2009, in the Red Hat Club case, the plaintiff was awarded $100,000 in damages by a Georgia court for a fictional character modeled on her. The "original" claimed that her fictional double, falsely depicted in the bestselling novel as a sexually promiscuous alcoholic who drank on the job, defamed her. From a libel defense perspective, this drawn-from-life portrayal failed, in part, because the author (and former friend) included personal characteristics that made the plaintiff recognizable and mixed them with other traits that were false and defamatory but still believable.

Now back to your question. Are you sure you never identify the real person who inspired your main character? Can they be identified from their ethnicity, physical appearance, employment history, or other details found in your book? Is your friend a public official or public figure? If so, they have another hurdle to jump. Unless he can prove by clear and convincing evidence that what you wrote was deliberately or recklessly false, there's a good chance - but no guarantee - you'll be excused from liability under what's known as the "Actual Malice Standard."

When Fiction & Reality Collide

Merely changing the name of your friend isn't enough. You might consider transforming him beyond recognition. Why? Courts consider plausibility. A broadly drawn caricature of your friend, which is difficult to reconcile with your ex-friend, can effectively stave off a libel lawsuit. For example, Kim Pring, a former Ms. Wyoming, sued Penthouse over an article that described Ms. Pring's ability to cause men to levitate by performing oral sex. Initially, the Federal District Court found for Miss Pring, awarding her $26.5 million in damages. However, the Court of Appeals reversed the decision on appeal, holding that no reasonable person could believe what was described were actual facts. Be outrageous. Libel will not be found if the reader accepts the novel as pure fiction. Parody – if done correctly, can take the chill out of free speech. [Note the italicized "if"]. If done improperly and the hypothetical reasonable reader thinks your failed parody conveys actual facts, the First Amendment may not be available to you. "Obvious cues" like levitation or time travel can help telegraph what is First Amendment-protected fiction from fact. When in doubt, have the book vetted by a publishing attorney.        
     

Here's a run-down of a few techniques that can minimize the chance of getting sued for libel in fiction: (a) use disclaimers (more about that later); (b) disassociate the doppelgänger from their real-life counterpart by writing composite characters; (c) depict but do not disparage, and (d) wait for the real-life person to die before publishing your fiction. Under U.S. libel law, if the original is dead, the estate cannot sue for libel (unless the suit was begun while the deceased was still alive). If (d) gives you an additional reason to outlive your literary prey, consider it my gift to you. And remember, he who laughs last laughs best. About option (d), revenge is best served cold at your publication party -- preferably with a Sauvignon Blanc, Riesling, or Gewurztraminer. 

Disclaimers, while helpful, are, by nature, self-serving. While a disclaimer cannot insulate you from a libel suit, it may support the defense that identification with the real person in your work is unreasonable. The words "A Novel" in the subtitle of a book are considered by some to be the best form of disclaimer. In addition, a full disclaimer should appear on the reverse title page of your novel or be skillfully integrated into the introduction or preface of your book. Closing credits in a motion picture might read: 

"Certain characters, characterizations, incidents, locations and dialogue were fictionalized or invented for purposes of dramatization . . . [W]ith respect to such fictionalization or invention, any similarity to the name or to the actual character or history of any person . . . or any product or entity or actual incident, is entirely for dramatic purposes and not intended to reflect an actual character, history, product or entity." [Closing credits to Martin Scorsese's The Wolf of Wall Street.]

Change the physical characteristics of your main character enough to disguise their identity. The risk of being sued is reduced if your characters are likable and honest rather than vicious unscrupulous miscreants. While it's tempting to retaliate against those who have injured us in print, if a character drawn from life isn't likable and you can't support that depiction with sufficient evidence, fictionalization or rewriting becomes essential.    

Create your own Frankenstein monster - a single character stitched together from a combination of personalities, physical traits, and biographical details of others. A composite character provides evidence that no real person was portrayed - or defamed. If the fictional other is not "of or concerning" an identifiable person, you have a viable defense to libel.    

I would be remiss if I did not bring up three other legal threats all writers face. First, defamation lawsuits can be triggered by misidentification. The law of defamation is not concerned with who you intended to target but who gets struck by your barbed arrow. Unintentional defamation is actionable. "Woops!" is not a viable defense. From a legal perspective, where the arrow lands - not where you intended it to fall - is what matters. Lawyers who vet, and writers who write, need to watch out for same-named individuals who are falsely but believably misidentified. 

While the publication of truthful information is generally considered a complete defense to libel, private individuals can still sue for highly offensive or embarrassing truths. So, if your book goes too far and reveals intimate areas of a person's life – intimate matters concerning their sexuality, family life, medical procedures, and mental (in)capacity – you may invite a right of privacy claim. Are there defenses? Yes, but that's beyond the scope of this post.

The right of publicity involves the unauthorized use of a person's name or likeness for commercial gain. It is related to the right of privacy. Fortunately for novelists, courts historically construe publicity rights narrowly due to free speech considerations. But that's the subject of another Q&A.

If you feel uncomfortable with the legal minefield of libel, right of privacy,  and right of publicity law, consult a media law or publishing attorney. They will review your manuscript for potential liability and suggest ways to mitigate or avoid many risks associated with writing about real people and actual events.


Disclaimer: This article discusses legal issues of general interest and is not designed to give specific legal advice concerning specific circumstances. Libel law is fact-specific, and national consistency is lacking. Each state applies that state's law within its own borders provided it does not conflict with  Constitutional law as interpreted by the Supreme Court of the United States. Many countries do not recognize the protections the U.S. gives authors and publishers. We strongly advise you to obtain professional legal advice before acting upon any of the information in this blog post.

(c) 2016. Updated 2020.

Resources
Smith v. Stewart (Red Hat Club Case)
Pring v. Penthouse
Bindrim v. Mitchell (case ended badly for the author) 
Carter-Clark v. Random House (Court of Appeals)
Carter-Clark v. Random House (Supreme Court)


Libel in Fiction Quotes

"I don't get hurt or bleed; hair doesn't muss; it's one of the advantages of being imaginary." 
    - Ted Baxter in The Purple Rose of Cairo

"All literature is gossip." - Truman Capote

"Novelists are inspired gossips." 
    - Margaret Drabble

"But we are the sum of all the moments of our lives---all that is ours is in them: we cannot escape or conceal it. If the writer has used the clay of life to make his book, he has only used what all men must, what none can keep from using. Fiction is not fact, but fiction is fact selected and understood, fiction is fact arranged and charged with purpose."
    - Thomas Wolfe's Preface to Look Homeward Angel

Negotiating Author Advances and Royalties

Delving into the world of traditional book publishing sparks debates and bitter remarks, especially around the size of book advances. Mid-list authors, grappling with anemic advances and perpetually in-the-red royalty accounts, should note that publishing is an equal opportunity abuser. From Calvin Trillin to Edgar Allan Poe and even the venerable poet Horace, grievances about meager earnings and publishing economics abound. Join me as I uncover author grumblings about royalties and unravel the calculations behind those elusive author advances. [7 minutes]

Monkey Business and the Battles Over Advances

In the 1932 comedy Monkey Business, Groucho Marx says “Oh, I know it’s a penny here and a penny there, but look at me. I worked myself up from nothing to a state of extreme poverty.” The line, attributed to book author and screenwriter, S.J. Perelman, serves as fitting commentary on the typical earnings of authors.  According to the Authors Guild, the median author income in 2022, when considering both book royalties and other author-related income combined, was reported to be just $20,00.

 

Perelman, a perpetual thorn in his editor Bennett Cerf's side, faced a standoff during negotiations for his book contract with Random House. Cerf staunchly refused to budge on increasing the size of Perelman's advance. In true Algonquin Round Table  wit fashion, Perelman shot back, saying, "I am afraid that a $250 advance is mandatory; after fourteen months of my life on my Sabine farm, I have practically no worms to drop into the bills of my young, and the movie business isn't helping to any degree." The battle of words between author and editor adds a touch of humor to the serious business of negotiating book deals.

With all the right arguments at his disposal, Perelman playfully suggested that Cerf would do well to send him back to his typewriter with a "happy grin and a high heart," rather than "donating his money to an animal hospital." Perelman, renowned for being a penny pincher, clearly recognized the importance of having a high-priced fountain pen-for-hire to scrutinize his contracts. While I'm not suggesting each negotiation should be witty dance between author and editor, don't be afraid allow humor to take center stage. It the right situation humor can break up the tension and possibly create an atmosphere of goodwill.

How Book Advances Are Calculated

When a contract is negotiated between an author and a publisher, the author is generally paid a nonrefundable advance against future royalty income. That means the author won't see another dime until their advance is earned back. An advance is a bet the publisher places on a book.  Regrettably, traditional publishers are buying fewer books, and advances have been heading south for over a decade.  

Generally, publishers base advances on the number of copies they project to sell in the first six months to a year after initial publication. Clearly, Perelman's publisher was not expecting stellar sales.  Publishers look at the royalty payout to the author on each copy sold.  They then multiply that by the number of copies they project to sell (less a deduction for anticipated returns).  If a publisher pays an advance of $50,000 for a first novel,  assuming a royalty of 8% of a cover price of $19.95 (think trade paperback original), or $1.59 a copy, that means the publisher will have to sell more than 31,446 copies before the advance is earned out and the author earns a nickel more than the $50,000 already paid.  During negotiations, it's important for the agent or author to ask how many copies the publisher thinks they will sell and at what price.  Before being offered a contract consider asking your editor to lunch.  After they've imbibed at least one glass of wine, it's time to ask "How many do you think you can sell?" In vino veritas.

Strange Relationship Between Writers & Money 

Unlike Perelman, author Kurt Vonnegut had a different relationship with money and the writing process. Rebelling against the "more is better" approach to advances, he advised his son (author Mark Vonnegut) “to carry on without an advance” while working on his first book. You can read the complete letter he wrote to his son in Kurt Vonnegut: Letters, but here's an excerpt:

I have mixed feelings about advances on first books. They are hard to get, for one thing, and are usually so small that they tie you up without appreciably improving your financial situation. Also, I have seen a lot of writers stop writing or at least slow down after getting an advance. They have a feeling of completion after making a deal. That’s bad news creatively. If you are within a few months of having a finished, edited manuscript, I advise you to carry on without an advance, without that false feeling of completion, without that bit of good news to announce to a lot of people before the job is really done.

Calvin Trillin on Lunch & Advances

Calvin Trillin's contract negotiation advice is colored by an insider's cynicism fed by extravagant author lunches and familiarity with the entire publishing scene - not a law degree. His singular advice was “the advance for a book should be at least as much as the cost of the lunch at which it was discussed.”  

A corollary to Trillins’ formula governing advances: The cost of clearing permissions should never exceed the size of the advance.  Think carefully about the book you want to write as the cost of clearing rights to previously published material can bankrupt you.  

 

You Can't Make a Living, But you Can Make a Killing in [Publishing]*

Thackery wrote, "the rewards of the profession are not to be measured by the money standard."  While the size of the advance is not always an accurate predictor of a book's success, an author who receives a small advance invariably receives less promotional support from their publisher than one who receives what PublishersMarketplace calls a good deal ($50,000 - $99,000), or a significant deal ($100,000 - $250,000).  A nice deal ranges from $0 - $49,000.   

But, it's not all doom and gloom for the recipients of a nice deal. Tom Clancy's The Hunt for Red October ($5,000), published by The Naval Institute Press, sold millions of copies. Terry Pratchett, Stephen King, Jacqueline Susann, and JK Rowling all received small advances for their first books, which goes to show that publishing is a perplexing business where small bets can pay off big, and big ones can come back to haunt you.

According to Victor Bohnam Carter's book, Authors by Profession, John Milton, amid a financial crisis, signed a hellish publishing contract for his epic poem, Paradise Lost.  “The agreement was dated April 27, 1667, and provided that Milton receive £5 for the first edition or impression of 1300 copies,  £5 for the second, and the same for the third.”  During his lifetime, Milton received a total of £10 from his publisher Samuel Symons.  Milton’s widow later sold the copyright to Symons for £8. Edgar Allan Poe died virtually penniless, having risen above the poverty line only once during a fourteen-year period between 1835 and 1849.  Similarly, Walt Whitman lived his whole life in poverty.  To paraphrase Kinky Friedman, they were ahead of their time and behind on the rent.  

Things were no better for authors in ancient Rome.  How do we know?  The poet Horace (who coined the phrase “carpe diem”) grumbled loudly that his works brought the Sosii brothers (his publishers) gold, but, him, only fame.  Hic meret aera liber Sosiis, hic et mare transit, Et longum noto scriptori prorogat alvum. — (Art. Poet., 345)

UK publisher Michael Joseph in his autobiography, The Adventure of a Publishing  writes:

I do not believe that the terms of a contract are often the reason for an author’s dissatisfaction, as may be supposed.  There are barrack room lawyers among authors, but they are very few.  For the most part authors are content with the terms they receive.  If they have an agent, the publisher cannot be held responsible; if they have not, they usually have little understanding of royalty scales and advances and are grateful for what they receive." Joseph went on to say that "nowadays there can be few publishers foolish enough to underpay their authors.  

Joseph was living in an analog world.  In his day, traditionally published authors would accept low royalties to get their books to market.  That was before the self-publishing revolution.  Many authors are saying no to 25% royalties offered by traditional publishers, opting for self-publishing, where they can receive 70% of the list price of an eBook sold on Amazon.  At the same time, it's not uncommon for published authors to jump from house to house, seduced by financial offers from competing publishers.“I never saw an author in my life,” wrote Oliver Wendell Holmes, “saving perhaps one, that did not purr audibly as a full-grown domestic cat on his fur smoothed the right way by a skilled hand.” 

Conclusion

In a 1956 letter to travel writer Leila Hadley, S.J. Perelman shared his philosophy about the business of publishing: “[T]he only rule of thumb I know is, get the biggest advance you can (which in turn forces them to try to recoup their investment) and be as demanding on advertising, publicity, etc. as is consonant with your decency.”  Categorizing the common practice of only advertising a book after it begins to sell as “Alice-in-Wonderland” thinking, he urged Ms. Hadley to “be on the ground and participate in all the Martha Dean, Tex and Jinx, and TV panels merde you can evolve.”  Not bad advice.  

*apologies to Robert Anderson who once said: "You can make a killing on Broadway, but you can’t make a living."

Related Posts

Outside of Dog #1: Mark Twain's 1900 eBook Contract
(http://www.copylaw.org/2010/02/mark-twains-1909-e-book-deal.html)

Outside of a Dog#3:  Poe's Legal Woes
http://www.copylaw.org/2011/12/inside-dog-quarrel-among-literati.html)