Thursday, February 17, 2011

Titles and the Law: Can I Call My Novel "The Great Gatsby"?

I just finished reading Nemesis by Philip Roth.  When I was originally looking to buy a copy online, I was struck by the fact that there are roughly a dozen earlier novels by the same title that are still in print -- including works by such well-known authors as Agatha Christie and Isaac Asimov.  A legal problem for Roth?  Nah.

Let's take a look at three legal theories that authors and publishers have sometimes asserted (with varying degrees of success) in lawsuits to protect book titles.

1.  Copyright Law.  U.S. courts have unanimously held that titles are not copyrightable.  Here is one such case.  Indeed, the Copyright Office will not register a claim of copyright in a title, as it explains in Circular 34:
To be protected by copyright, a work must contain a certain minimum amount of authorship in the form of original literary, musical, pictorial, or graphic expression. Names, titles, and other short phrases do not meet these requirements.
Given the rationale for non-protectability, my wonderful copyright professor in law school, the late John Kernochan, once posed the question whether the inventive 26-word title of Peter Weiss's play The Persecution and Assassination of Jean-Paul Marat as Performed by the Inmates of the Asylum of Charenton Under the Direction of the Marquis de Sade aka Marat/Sade would be copyright-protected. After all, the title is as long as some poems.  While it would certainly be worth a try to argue that a lengthy and highly expressive title is copyrightable, suffice it to say, the courts and Copyright Office have never, to my knowledge, recognized an exception of the sort that Professor Kernochan hypothesized.  (But see this case finding that the famous short phrase of movie dialogue "E.T. phone home" was likely protected by copyright.)

2. Trademark Law. Here is where it starts to get complicated. The Patent and Trademark Office ("PTO") will not register the title of a stand-alone literary work (including a fiction or non-fiction book, song, movie, or video game). But the PTO will register as a trademark a designation for a series of works. Think of [Insert here almost any subject you can think of] For Dummies. "For Dummies" is a federally registered trademark for a series of "non-fiction books, guides, manuals, and catalogs on a wide variety of topics." Similarly, "Harry Potter" is a federally registered trademark for a series of novels for young people, among many other items.  But, if there had been only one Harry Potter novel and it had not become the basis for a series of books and movies and countless merchandising opportunities, trademark registration would not have been an option.

If you do manage to obtain a federally registered trademark for your series of books, you might have a plausible basis for a trademark infringement claim arising out of the publication of a book with a confusingly similar title, particularly if it's on a confusingly similar subject. Trademark infringement cases involving a registered mark for a series of books are not especially common, but they do come up from time to time. The Fishing Hot Spots case is one example.  A federal trademark registration gives you a significant advantage in any litigation over a title because it carries with it a legal presumption of exclusive nationwide rights to use the name in connection with the goods for which it's registered.  The defendant might still be able to prove that his use creates no likelihood of confusion, but it will be an uphill battle.

3.  Unfair Competition or Passing Off.  But it gets even more complicated.  Although the PTO won't register a trademark for a stand-alone literary work, the federal courts will nonetheless sometimes invoke the Lanham Act to protect unregistered titles from confusingly similar uses by others.  However, the courts will only extend protection to titles that have achieved "secondary meaning."  Here's how the Second Circuit Court of Appeals explained "secondary meaning" in Rogers v. Grimaldi
The purchaser of a book, like the purchaser of a can of peas, has a right not to be misled as to the source of the product. Thus, it is well established that where the title of a movie or a book has acquired secondary meaning — that is, where the title is sufficiently well known that consumers associate it with a particular author's work — the holder of the rights to that title may prevent the use of the same or confusingly similar titles by other authors . . . .  Indeed, it would be ironic if, in the name of the First Amendment, courts did not recognize the right of authors to protect titles of their creative work against infringement by other authors.
Similarly, most states have laws forbidding "passing off," which is a form of unfair competition.  While the laws vary from state to state, here, again, in order to prevail, a plaintiff-author will likely have to prove that her title has acquired "secondary meaning" and/or that the defendant adopted his confusingly similar title with the intention of deceiving book buyers into believing that his book was somehow connected with plaintiff's book.

So, to simplify quite a lot, you may be able to use the federal or state unfair competition laws to protect against the publication of a subsequent book by another author with a title that is confusingly similar to your title.  But first you must be able to prove to a court's satisfaction that a substantial portion of the book-buying public would assume that any book by that title must have been written by you or must have been published by your publisher.  That's actually a hard row to hoe.  Only occasionally will the title of a single work in a single medium be deemed to have achieved secondary meaning.  On the other hand, if the author has published a series of books using the same title, it is more likely to be found to have achieved secondary meaning, even if it has not been registered as a trademark, as in this case concerning the protectability of William Bennett's title The Book of Virtues.

Let's consider how these principles might play out in various situations.

Given that Nemesis is a fairly obvious title for a work evoking a mood of menace or suspense, given that by the time Roth published his novel there were already several other books called Nemesis in print, and given that readers are accustomed to distinguishing among novels by their authors as well as their titles, it is virtually unthinkable that the Asimov estate or the Christie estate could prove that the public associated the title Nemesis exclusively with Isaac Asimov, Agatha Christie, or anyone else.  And, for a host of reasons, a reader looking to buy Christie's Nemesis is unlikely to end up buying Roth's book by mistake.  So, Roth doesn't have to lose any sleep about the unoriginality of his title.  Similarly, if I were to call my novel Nemesis, Roth probably could not successfully pursue a claim against me.

But what if I were to entitle my novel Swamplandia?  Karen Russell recently released a popular and well-regarded novel by that distinctive name. There does not appear to be a single other book listed on Amazon, in-print or out-of-print, called Swamplandia.  Under the circumstances, a court might be tempted to conclude that the only reason I adopted the title Swamplandia was to confuse book buyers into mistakenly buying my book when they really meant to buy Russell's. I fear that Karen Russell might have a plausible claim against me for unfair competition -- at least if I were to publish a book called Swamplandia right now. But if, like most books, Swamplandia eventually fades from the consciousness of the book-buying public, it might lose its "secondary meaning," and another author could then safely adopt the same title -- or one that is very similar. That's effectively what the court decided in the venerable case of International Film Service v. Associated Producers, 273 Fed. 585, 587 (2d Cir. 1921) (involving the title "Broken Doll").

So, given the passage of time since F. Scott Fitzgerald published his little novel, could I call my novel The Great Gatsby?  As a matter of copyright law, no problem.  And "The Great Gatsby" does not appear to be a federally registered trademark for books or movies (although, curiously, there is a "Great Gatsby's" registration for auction services).  As a result, there probably would be no claim for infringement of a registered trademark.  Nevertheless, given the distinctiveness of the title, the enduring fame of Fitzgerald's novel, the fact that the work has been adapted for the movies, and a host of other factors, I would be cruising for a lawsuit if I chose The Great Gatsby as the title for my novel unless (and maybe even if) the cover was filled with wall-to-wall disclaimers.

That said, there are several other books currently in print by authors other than Fitzgerald that do have "Great Gatsby" in the title -- namely, non-fiction books of literary criticism, such as this one.  If I were using "The Great Gatsby" in my title to refer to Fitzgerald's book, it might qualify as nominative fair use and therefore not be an infringement. In other words, if I make it clear enough that my book is about The Great Gatsby, but that it is not Fitzgerald's book or some kind of sequel, then my "nominative fair use" defense will likely succeed.  (It would probably help to have a subtitle or prominent disclaimer on the cover that further clarifies this is not The Great Gatsby, but a book about The Great Gatsby.)

The same general legal principles that apply to recycling of book titles hold true as well for recycling song titles and movie titles.  However, as described in this piece in Slate, the Motion Picture Academy of America has a system designed to minimize duplication of movie titles, including a procedure for arbitrating title disputes.  Still, "video doppelgangers" are common, as discussed in this Entertainment Weekly article.  As to the music industry, Kate Kiefer of Paste magazine posted this blog about duplicate song titles.  And this site maintains a list of duplicate song titles, with some 3,092 entries.  The "most recycled song title"?:  "Home."

In short, using a title that has previously been used on another book is, more often than not, perfectly lawful.  In a relatively rare instance where your title is likely to create confusion with a previously published book, your publisher will likely urge you to adopt a different, safer title -- like Nemesis.




15 comments:

  1. In the EU the position regarding titles may be different. See http://www.bailii.org/ew/cases/EWHC/Ch/2010/3099.html

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  2. I am writing a book too. it's title though it taken by this movie. so i changed it. then i found ou the changed title was taken by ANOTHER movie. i don't know what to call it now. Can i use the title the movie was titled still? the book is nothing like the moive. HELP!

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    1. I want to use a quote from amovie for my book only 4-words the film is a global success.

      The book is facutal and does relate to the theme of the movie in sense of topic only.

      The film is fiction.
      The book will not use anything else from the movie.
      Can I use quote. Also the quote could be said by anyone although it is made famous by movie.

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    2. Get consent from the film studio. You would be republishing part of the script so you need consent.

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  3. Is it okay to use a title that is used in a video game as long as your book as nothing to do with the video game?

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  4. Oh, so now an author can no longer use the title of a song to be the title of his writings so he will not be accused of violating the trademark law? Did I just got that right? But using it in a series of works is okay? What's the difference? I need a trademark attorney nyc soon for clarifications!

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    Replies
    1. you have it completely wrong.

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  5. What about if I use the title inside my own title, such as: "Facts of The Great Gatsby that you didn't know", would that be infringement?

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    Replies
    1. The article seemed clear on that. Your title is obviously not trying to imply that your book is The Great Gatsby, a sequel to it, or to even confuse someone to be expecting the Great Gatsby.

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  6. I'd like to know if it is ok to use the name of a book title in a company name, i.e. "Brave New World Travel". Thanks

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  7. Good thing they published the right of writers over the net. I remember my friends from law firm seo, also discussed some legal rights and the rights of the writers were also part of their seminar.

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  8. can I use a quote from a movie as a book title the quote is 4 words only. the book is factual but does connect to the theme of the movie.

    The book does not refer to the movie in any other way only those 4 words.

    The film is a global success and the line is connected to the movie.

    I have seen it used on the web as a forum which also connects to the movie.

    thank you.

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  9. I was thinking of writing a children's book on reptiles. I wanted to call it "Is Your Mama a Mamba?" Is that wayyy to close to the title "Is Your Mama a Llama?"

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  10. Is it only the capitalized 'For Dummies' registered as trademark?
    I'm want to put '....for dummies' in my book title, can I?
    Thanks

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  11. Is there any protection for a cookbook writer's work against a food manufacturer using his/her book's name as a brand name for one of their products? For instance, a book title that is well known and usually associated with a specific recipe. Then a food manufacturer creates a commercial recipe inspired by the book recipe and use as a brand name for their product that famous book's title.

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