With so much changing in the publishing world and so fast, aspiring as well as seasoned writers are searching for answers. They are deluged by an avalanche of media stories about Kindles, iPads, ePub vs. PDFs, intellectual property rights — so much information it could make your head spin. Writers need answers but unfortunately are often left with more questions.
In the coming weeks, we will be asking some of those most commonly asked questions facing writers to publishing attorneys such as, Lloyd J. Jassin. He is a seasoned attorney who represents such clients as the E. Lynn Harris estate.
In our first question, we asked him his legal opinion about a commonly asked question he has heard over and over again regarding book titles.
Q: I have a great idea for a novel and an amazing title. Can I copyright the title so no one steals it? Should I trademark it too? If so, how do I do that?
Copyrights and trademarks, which are sometimes confused, provide different forms of protection. Copyright law protects the way authors express facts and ideas. Trademarks protect the goodwill associated with products and services. If you go to Amazon.com or the online Copyright Office records (www.copyright.gov), you will see countless examples of duplicate titles. Generally, titles (and short phrases) are not thought to possess enough original expression to warrant copyright protection. So, while you can copyright your novel, you can’t copyright the title of your novel. Unlike copyright, trademark law may protect a title that is part of an ongoing series (e.g., Debbie Macomber’s “Cedar Cove” series).
Trademark law protects against confusingly similar usage of source identifying words or symbols. If you wish to publish a book, or launch a series of books, you run the risk that someone may have already obtained rights to a confusingly similar title. Like any business, as you prepare to publish or launch your book, you want to select an appropriate title that is unique to you, and, if your book is an extension of your business, a title capable of identifying whatever your business offers, or intends to offer.
A trademark search, and a working knowledge of this nuanced area of the law, is how you determine whether you can use the title you have selected. When selecting a title an author must take into consideration both registered and unregistered marks. Failure to perform a proper search can result in threat of a lawsuit from someone who believes you are a competing with them unfairly.
Since a single book title does not qualify as a trademark, how do you protect your title while you are gearing up to publish book two in what you hope will be the next “Chicken Soup for the Soul” or “Harry Potter” series? If you plan to publish a series title, you may file a trademark application on a good faith or bona fide intention to use basis. Known as an “intent-to-use” (“ITU”) application, an ITU application allows you to “reserve” your mark for up to thirty-six months. One of the advantages of an ITU application is it puts people on notice of your trademark rights, and, if you ultimately make use of the mark commercially, the original filing date serves as the date of first use.
If you have a distinctive or registrable title, but are not yet ready to publish book number two, intent-to-use is ideally suited to your needs. When book two is published, you will have to file what is known as a Statement of Actual Use. You are entitled to a total of five six-month extensions before you have to file the Statement of Actual Use with the Trademark Office. The Trademark Office charges a fee for each six-month extension, as well as for the Statement of Use, so, an ITU application can get costly. For more information you can follow me at: http://www.twitter.com/lloydjassin
THE INFORMATION PROVIDED ABOVE IS OF A GENERAL NATURE AND IS NOT INTENDED AS LEGAL ADVICE. IF YOU HAVE A SPECIFIC LEGAL ISSUE OR QUESTION, SEEK THE SERVICES OF A COMPETENT ATTORNEY.