Fiction Branding… Part 9
Lack of Knowledge…
For some reason, fiction writers have an aversion to learning anything about the one thing that makes them money. That is copyright and licensing that copyright.
For upwards of thirty years now, I have been trying to figure out why this aversion happens. Even though learning copyright is far, far more important than say learning how to pace a story or indie publish a story, writers just ignore it or if they are even aware, they simply say they will get to it someday.
Now, I tend to be kinder to writers who are just unaware of how copyright works vs those who purposely do not want to learn.
For example, when a writer comes up to me and asks “How do I copyright my story?” I know I am dealing with an uninformed writer. I don’t laugh, I just explain the basics that the story already has copyright protection when you put it in a form, but now that person needs to go learn the rest and I tell them ways to learn it.
When a writer comes up to me and asks, “How do I trademark my work?” I tend to just shake my head and tell them to get an attorney. A good one. And maybe try to read a few books on trademark for fiction writers.
Both the copyright question and the trademark question are almost entirely based on fear that even though this is their first story, someone will want to take it their fantastic idea that more than likely was done in the pulp magazines. Both questions show a complete lack of understanding in the history of publishing and fiction and how it really works. I’m okay with that because it takes time to learn this business and we all started from the same place.
But both those questions are also based on thinking that putting your work in some database done by governments will help it. Uhh, no, not so much on either copyright or trademark. In fact, registering a trademark can do more damage to the trademark than not, most of the time, especially if you don’t jump through all the hoops required over years and years of time.
A fun little truth. Most writers know their work is protected by copyright without registering it. (Registering it in a timely manner does add bonus stuff if your work is ever taken… the operative word is “If.”)
Before any of you ask, Kris and I register all our work that goes near Hollywood or gaming.
Most writers do not know that trademark attaches in much the same way as copyright when some mark is used for a product or business. And first in business with that mark tends to win if the mark is strong, been used to make money over a decent amount of time. It does not have to be filed to be protected.
And if right now you think you know exactly where you file your trademark, think again. Think real hard.
And under which category and in which database or even international. Your state? Lanham act? International (There is no such thing as an international trademark data base, but you can pay all the fees and file it in a bunch of countries if you are that paranoid.)
Filing is a form of notice to others that you have that mark and are using it. (If you are second in for a mark, hope the first in doesn’t sue you because even though you tried to file the mark, and they haven’t, the other party still will win in most cases as first in.)
But you filing and thinking it is protecting you means that you believe that another person wanting to use THE SAME MARK in the SAME AREA OF BUSINESS will do a search and wow are trademark searches difficult. Not even thinking of going into that here.
(Did you do a search before you started using your mark?)
So if your fear of someone taking your business name or product name has you not sleeping at night, you first need counseling help to get past that. And then for real answers you need a good IP attorney who will not just string you along for more thousands of dollars than you can imagine, but will tell you the truth.
Trademark can be critical to branding your work, and licensing your work. (And I can’t even begin to tell you how complex that one sentence is in the real world of licensing.)
Trademark is short for lawyers make money.
Trademark is for product brand names and business names and protections. It depends on the strength of the mark, the time in use, and the area of use in business. And the area of use, although for us in writing and publishing, that is international.
Focus on building brands, keeping each brand healthy and alive and making a little money, and don’t worry about the trademark until the time comes you need to. Then hire a good IP lawyer. But in the meantime, try to start to learn trademark for writers and indie publishers. Just a little bit of knowledge will make you more money in the long run than you might imagine.
7 Comments
Kate Pavelle
I have been cottoning onto the fact that I can be establishing a trademark without registering it in the Shopify class. Outside of that, my husband and I had an interesting experience with the Pittsburgh Steelers and trademark.
In the course of developing recipes and writing cookbooks on the side, he baked these lovely, round sandwich cookies and put three 4-pointed star cut-outs in the top so it looked like the Steelers logo. When he filled them with jam, he put tinted lemon curd under 2 stars to approximate their logo. This was just for us and friends, we didn’t use it to promote out cookbook, so no harm done.
But he brought a few to our French bakery, where Jean-Marc put them on a tray for later (Jean-Marc used to make Penguin pastries with jersey numbers for hockey, he is generous with information, and will trade his baked goods for our cookies.) A customer thought they were from the store inventory and wanted to order two dozen of our Steeler cookies for a party!
A discussion of feasibility ensued, and I brought up the trademark issue. My attorney husband looked up the description of their trademark – it excluded food items!
A heated discussion ensued. “It’s in writing, I want to try it,” says my lawyer husband who is also a rabid football fan. “Big companies protect their trademark,” I said, not wanting us to get bogged down. “Are you willing risk the house over cookies? I know you can represent yourself, but how much time will it take? SERIOUSLY???”
We compromised on offering to bring cookies for the team in exchange for being able to use a casual image of said cookie in our blog.
He sent it to their legal.
He got a cease-and-desist letter for his trouble.
“I tod you so,” I said. “They’re as bad as the Mouse.”
Mostly I was relieved. I don’t want to be dragged kicking and screaming into a baking venture. WIBBOW!!!
But yes, they protected their trademark even though food products were not explicitly included. They protected it immediately and vigorously, because that’s what it takes to retain the ownership of such trademark.
It was instructive.
dwsmith
Really, really well done.
And no offense to your hubby who sounds wonderful, but this is why you get a dedicated IP attorney when dealing with anything trademark.
Again, well done!
Kate Pavelle
Thanks, Dean! The credit also extends to you and your reality checks on IP. My hubby is a fabulous contract and small business lawyer. He knows IP is not his forte, and is thinking of learning more since I keep harping on it 😁
Jason M
FYI Disney doesn’t beat its chest and tear up grass to scare off IP offenders nearly as much as it used to.
Check out the graph 2/3 of the way down this piece from Variety:
https://variety.com/2023/biz/news/mickey-mouse-public-domain-disney-copyright-lawsuits-1235844322/
Maybe because it knows that little time remains for many of its oldest characters before they pass into public domain?
Maggie King
Years ago I sold stuffed animals on eBay and one time (in a listing) I described a toy dog as a “Heinz 57” which is what we called mutts when I was a kid. Immediately got an email from someone related to the Heinz company telling me to remove the phrase (so I did).
C.E. Petit
One minor correction — Our Gracious Host said “There is no such thing as an international trademark data base, but you can pay all the fees and file it in a bunch of countries if you are that paranoid.”
• Yes, there is such a database — but it’s difficult to use, very much along the lines of “Don’t try this at home, especially without a law degree and at least some prior experience with non-US trademarks.” (Even though it’s free and largely in English.)
• There’s no longer a need to file in a bunch of countries to establish priority for a mark (and for an author, priority for the mark is what matters). One can instead file a Madrid Protocol notice after successfully obtaining registration in one’s home nation. Even that, though, doesn’t establish nation-by-nation priority — it primarily acts to prevent other problems that flow backward. {insert law journal article with 214 footnotes here}
And one inference that I’ve never seen refuted: Leaving aside “sheer laziness” (which is not to be discounted, especially among the artistes), the primary reason that I believe creatives generally have not learned about copyright, noncopyright rights logically-but-not-legally related to copyright, and trademark is that it’s not in the best interest of the transferee-industries that exploit these things to act as if they’re clear or not in the transferee-industries’ favor.
In particular, less than four years after that first short-story sale noted by Our Gracious Host, the entire basis of copyright law in the US changed (and the transferee-industries had well over a year’s prior notice). As one example, as of 01 January 1978, the traditional periodical contract clauses boiling down to “you give us your copyright, and we’ll return it 90 days after publication” was utterly legally unnecessary and indeed arguably an unfair trade practice. Periodicals have nonetheless continued to offer such contracts for a loooooooooong time thereafter — the most recent one that I’ve seen was in 2008, but I’ve been told of more recent ones. As another example, consider assertions that freelance-authored media novels were works made for hire.
Fixing/preventing this would have required consulting competent counsel… and, on the transferee side of things, overruling the bosses’ desire to keep things the same notwithstanding a fundamental change from “sale” to “license,” from “all rights” to “divisible rights” (admittedly, without making that clear,† either internally or in the legislative histories). On the authors’/creatives’ side of things, it would have required legally sophisticated individual creators… and noncoopted trade groups/organizations of creatives. We haven’t had any of those Over Here.
† That the Copyright Act is a strong candidate for “worst-written title in the entire United States Code” is one of those ironies that you just have to laugh at, because otherwise you’ll go either Tasmanian Devil or insane. Or both. Or become a lawyer (almost certainly worse).
dwsmith
C.E, thank you. I was just easier for me to basically say there was not an international trademark, which actually there isn’t exactly, then get into the fun of the Madrid Protocol. So thanks for talking about that.
And yes, I agree with your other points although I am fairly certain you just scared hell out of a bunch of writers, which actually when it comes to copyright, is a good thing. (grin)
And yes, I am old enough to have sold stories and written a bunch under the old copyright act. And not yet a law student, I sure didn’t understand that change and what had happened until after I got out of law school.
Thanks!