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.

What Can You Do If Your Co-Author Denies You The Credit You Deserve?

A friend of mine, whom I will call Julia, recently co-wrote an article with one of her supervisors at work.  Julia did the lion's share of the research and writing and was told that she would be given a co-author credit when the article appeared in print.  Indeed, a preliminary version of the article (blessed by her supervisor) specifically listed Julia as co-author.  However, between the time she wrote the article and when it was scheduled to appear, she took a job with a competitor.  Lo and behold, when the article was ultimately published, Julia had suddenly become, in Orwell's phrase, an unperson.  Not only was her name omitted from the by-line, but her co-author gave her no credit at all, not even a fleeting mention in a footnote.  Slimy.  

What could she do?  What should she do?  

This is, of course, a woefully common fact pattern.  Credit is, of course, a key consideration in all types of writing, ranging from million-dollar screenplays to scholarly papers where the writer has no expectation of any payment. Regrettably, as is so often the case, there may be a wide disparity between the legal remedies theoretically available, on the one hand, and the practical cost-effective options, on the other.

As to what Julia could do, here are the principal legal remedies that credit-robbed writers have sometimes successfully pursued:

1.  Copyright.  The most direct attack would ordinarily be for Julia to file a lawsuit seeking a declaratory judgment that she is the joint author and co-owner of the copyright and seeking an accounting of any revenues (to which, as co-owner, she would be presumptively entitled to half).

However, in Julia's case, the article was written within the scope of her duties to the company -- i.e., at the direction of her boss, on company time, using company computers, accessing subscription databases, such as Lexis-Nexis, paid for by the company, for the purpose of demonstrating the company's expertise in the subject area.  For these reasons and others, her contribution to the work probably constitutes "work made for hire," as defined in Section 101 of the Copyright Act, belonging to the company.  Indeed, her supervisor's contribution to the article is also probably "work made for hire."  As a result, the company -- rather than either of them individually -- probably owns the copyright.  As a result, my friend could not seek a declaratory judgment for joint ownership of copyright -- much less pursue a claim for copyright infringement.  Indeed, one co-owner of a copyright owner cannot ordinarily sue the other for infringement.

That said, if you are a freelancer or an independent contractor, you, unlike Julia, might have a basis for a declaratory judgment action.  Here, for example, is the Court of Appeals decision in an epic battle by songwriter Shirley Goodman to obtain a declaratory judgment that she was the joint owner of the copyright in the rock and roll classic, "Let the Good Times Roll".

2. False Designation of Origin Under the Lanham Act. Until 2003, my friend could have brought an action under the federal Lanham Act, which prohibits various forms of unfair competition.  For many years, the federal courts held that a contributor to a creative project could sue, under the Lanham Act, for false designation of origin if she was not given proper credit -- or any credit -- for her work.  For example, in Lamothe v. Atlantic Recording Corporation, two members of the band Ratt sued other members of the band, alleging that they had wrongfully been denied credit as co-writers of the band's songs.  An appeals court held that one of the purposes of the Lanham Act is to ensure that "the producer of a good or service receives appropriate recognition and that the consuming public receives full information about the origin of the good."  The Lanham Act even offered the possibility of triple damages if the defendant's conduct was egregious.  But then came the Supreme Court's decision in Dastar v. Twentieth Century Fox Film Corp.  Dastar is a complicated case, which I won't try to summarize here, but the effect of the decision was to slam the door on the use of the Lanham Act in cases of alleged false attribution of creative credit or omission of credit.

3.  Breach of Contract.  After Dastar, Julia's last best hope for a successful lawsuit would probably be a claim for breach of contract.  Not all contracts have to be in the form of signed writings in order to be enforceable.  In many instances, an oral agreement on authorship credit could be enforceable.  Or a contract might be inferred from the circumstances (e.g., the draft with Julia's name on it).  [Don't get me wrong: it's always better from a legal perspective to have a written, signed contract, and some agreements, like "work made for hire" agreements and copyright assignments must be in writing.]  Basically, Julia's claim would boil down to:  you promised to give me credit, you broke your promise, and I was injured as a result.

There are a few other possible legal theories: unjust enrichment, state deceptive trade practices laws, state artist's rights statutes, etc.  But none is especially likely to be more successful than a straight-out breach of contract claim.

But let's get real.  Julia's boss wasn't paid for the article.  So even if she were to win a breach of contract case, she probably would not receive more than token damages.  It's too late for a court to order that her name be included in the by-line of the printed article.  Contract damages on the theory of injury to her professional reputation would be extremely speculative and, as a result, unavailable.  With no real prospect for recovering interesting money damages, Julia could never get a lawyer to take her case on contingency.  If she has to pay a good IP lawyer his hourly rate, she would soon find herself writing four figure checks.  Maybe one of volunteer lawyers for the arts groups discussed in this post would help, but Julia may actually have too large an income to qualify for their services.

So what should Julia do?

The right strategy in these cases varies wildly depending on the dynamics of the writer's situation.  These steps might make sense for Julia, but they might make no sense for you.

1.  Figure out in advance what your objectives are.  In Julia's case, her principal goal in writing the piece was to obtain professional recognition.  It's too late now to get credit in the printed article.  But it might still be feasible to ask that a correction be published in conjunction with the online version of the article, acknowledging her contribution.  This would enable her to point to the article as her own, include it on her resume, etc., so it is a goal that may be worth pursuing.  Your goal, by contrast, may be reasonable financial compensation, another project to work on, an apology, a email you can point to acknowledging your role as co-author, shaming of your co-author, or sweet revenge -- each of which may require a different strategy.

2.  Gather your evidence. Pull together and preserve all emails, drafts, letters, contracts, invoices, etc. relating to the project.  Review whether there is any objective, documentary evidence of the promise of credit.  Or does it come down to your word against your co-author's?

3.  Decide whether you dare to complain. There are times when it's frankly not worth it to fight over credit -- an undistinguished article in an undistinguished publication, no money at stake, the risk of offending someone whose goodwill you depend upon.   For example, if Julia were still working at her old company, making an issue over the denial of credit might have cost her a raise, a promotion, or even her job.  Those considerations might have had a bearing on whether and how she pursued her grievance. But, because she is no longer working under her co-author, she has little to lose in fighting for the credit she deserves.  I am not suggesting that writers should hesitate to complain when they've been screwed; all I am saying is that it's important to maintain a sense of proportion about any dispute.

4.  Decide whom to complain to. Obviously, the first person you will complain to will be your co-author.  But are you willing and able to complain to others?  Keep in mind that if you announce to a third party that your co-author robbed you of proper credit you may run a risk that your co-author might claim you have libeled him.  (If I only tell you that "you're a plagiarist," it isn't libel; but if I make the same statement to your boss and can't back it up, it could be.  See this interesting article on libel claims arising from plagiarism allegations.) If you are planning on complaining to your co-author's boss or the publication's editor or making your grievance known to the public at large (e.g., on your blog or a gripe site), it may be wise to consult a lawyer first.

5.  Decide how to complain. A face-to-face meeting is often the most effective means of resolving any dispute.  Emails and letters have the virtue of giving you time to collect your thoughts and providing a record of what has been said.  Your  complaint should generally make clear (a) your basis for claiming that you were promised a certain form of credit; (b) the way in which the promise was breached; (c) what you want your co-author to do by way of remedy; and (d) the deadline for implementing the remedy.  These are the classic elements of a lawyer's letter.  If you threaten litigation, it should not be an idle threat.

6.  Decide early on how far you are willing to go.  If litigation is a genuine consideration, see that lawyer sooner rather than later. Consider whether there is anything you would be willing to give in return for the remedy you are seeking.

7.  Keep a record of what you've done to pursue your complaint.  Memorializing your conversations and keeping copies of your emails and letters of complaint may be important both offensively and defensively.

8.  Be persistent but never harass.  

9. Mediation? Is there anyone that both you and your co-author would trust to help facilitate a resolution?
10.  Small claims court?  Julie could pursue a claim for breach of contract in small claims court.  In most jurisdictions, individuals need not appear through a lawyer, although corporations must.  You can't recover much money in small claims court; usually the court's jurisdiction is limited to claims of a few thousand dollars. In Julia's case, however, the problem is that she really doesn't have any financial damages, and, even in small claims court, they don't award you money just for being right.

In some contexts, there may be non-judicial means of seeking redress.  In the film industry, the Writers Guild of America and the Directors Guild of America have rules on properly crediting writers and mechanisms for enforcing them.  Universities often have ethics committees that will review disputes over proper crediting of co-authors.  Some scholarly and professional organizations will also investigate accusations of failure to credit and the related offense of plagiarism.

So what should Julia do?  If she had a claim of co-authorship of a hit Broadway musical or a Michael Jackson song, full-fledged litigation might be worth considering. But, with no pot of gold at the end of the rainbow, the most cost-effective result she could reasonably hope for is to argue, bluster, or cajole her co-authors into giving her credit in the online version of the article.  And an apology.

The next time, she will know to document her agreement on co-author credit by an exchange of emails.  On bigger projects, as discussed in this prior post, she should consider entering into a simple collaboration agreement.

[Hat tip to DJF for editorial suggestions.]

Can I Mention Brand Name Products in My Fiction?

Writers frequently ask whether they can mention brand name products and services in their fiction.  The answer is "yes," provided that you take some common sense precautions.  Indeed, if it were unlawful to include brand names in fiction, countless product references in Bret Easton Ellis's novel Glamorama would have been expurgated, and David Foster Wallace could never have described in Infinite Jest an alternative present where large corporations purchase naming rights to the calendar years (e.g., "Year of the Whopper," "Year of the Trial-Size Dove Bar," "Year of the Perdue Wonderchicken," "Year of the Depend Adult Undergarment," and "Year of Glad").

The four areas of law to consider in connection with brand names are "trademark infringement," "trademark dilution," "trademark tarnishment,"and "defamation."

A classic case of "trademark infringement" is the unauthorized use of a name in a way that creates a likelihood of confusion as to the origin of the goods or services.  For example, if you were the manufacturer of aluminum foil and decided to name your foil "Glad," the Glad Products Company, manufacturers of Glad plastic wrap and Glad trash bags would likely think your use of the term is an infringement.  Even if Glad Products Company doesn't manufacture aluminum foil, aluminum foil is sufficiently close to plastic wrap to create a likelihood that some shoppers would be confused as to whether your aluminum foil is manufactured, licensed, or endorsed by the makers of Glad plastic wrap.  Keeping this principle in mind, it is evident why fiction rarely gives rise to trademark claims.  When David Foster Wallace imagines a world in which Glad Products has bought naming rights to the year that would otherwise have been called 2010 (under the old number/naming system), he isn't using "Glad" to sell his own confusingly similar goods.  He is, in fact, using "Glad" to refer to Glad Products' own goods.  Trademark lawyers call this "nominative fair use," and it does not constitute infringement.

"Trademark dilution" is a somewhat different legal theory that gives owners of famous brand names a legal right to prohibit others from using those names in a manner that would make them less "distinctive," less able to identify and distinguish the owners' goods or services.  For example, trademark owners have fits when writers of fiction or non-fiction use their brand names as generic terms for products or services.  The Xerox Corporation doesn't like writers or the public to speak of "xeroxing" documents, instead of photocopying them; Johnson & Johnson doesn't want their Band-Aid brand to become the generic term for bandages; and Google complains about the use of the term "googling" instead of using the Google brand search engine for "searching" the Internet.  Once in a while, a writer will receive a lawyer's letter from a company urging him/her not to genericize the company's brand names.  Usually, the dispute goes no farther than that.  Writers can avoid even mild reprimands of this sort by respectfully capitalizing brand names.

"Defamation" and "tarnishment" are the areas where there could, in rare instances, be greater cause for concern.  If, for example, you falsely depict a brand name product as being dangerous or defective, a manufacturer could be heard to complain.  Ultimately, the manufacturer should have to prove that some readers actually understood the disparaging depiction to be a statement of fact, not fiction, but there is seldom an artistic necessity to test that line.

Trademark "tarnishment" is a kind of hybrid between trademark dilution and defamation.  Such claims arise when a non-owner uses another's trademark in highly disparaging or offensive contexts. The best-known tarnishment case was a successful claim by the Dallas Cowboy Cheerleaders (who owned a registered trademark) against the makers of the pornographic movie, Debbie Does Dallas, in which the actresses were depicted in the cheerleaders' trademarked uniforms, to the extent that they were depicted in anything at all.  The Appeals Court's famous (at least to trademark lawyers) decision is here.  Notwithstanding the Debbie Does Dallas decision, some uses of trademarks in ways that the owner regard as highly disparaging may be successfully defended as parody, as described in this online article by Leslie Lott and Brett Hutton.

A sensible precaution:  if you are depicting brand name products or companies in an unsavory light in your novel or short story, it is often prudent to invent a fictional brand or a fictional company. If there is a compelling artistic reason to use real products and real companies in contexts that arguably disparage them, it is wise to seek advice, prior to publication, from your publisher's attorney -- or an attorney of your own -- on how best to minimize the legal risks.

The movie industry has always been exceedingly cautious about the use of brand names and the names of real people in films.  For example, the director Danny Boyle, told the press that he caused Mercedes Benz logos to be digitally removed from cars in his film Slum Dog Millionaire when the manufacturer objected to the depiction of its cars in Bombay slum settings.  (It is difficult to imagine a successful claim arising from such innocuous use, but movie studios are unwilling to run any legal risks that could conceivably lead to an injunction interfering with timely distribution of their films.)  More frequently, of course, companies pay the movie studios for product placement.  (There are even isolated isolated reports of paid product placement in novels.)  I can only speculate that the movie industry's obsession with the depiction of brands in fictional works is the source of the largely unfounded concerns about the depiction of brand names in written fiction.

Again, the use brand names in fiction is not a sleep-depriving issue.  It would be obsessive (and stylistically unpalatable) to use the R-in-a-circle symbol or the TM symbol every time you refer to a brand name in your text.  And, as long as you do not write falsely and disparagingly about real brands and the companies who manufacture them, you are unlikely ever to run into a problem.