Literary Titles and Trademark Protection

Trademark registrations for most book or movie titles (”literary titles”) are difficult to obtain.  While copyright laws protect the actual content of creative works, literary titles are generally not entitled to either copyright or trademark protection.  Even where the literary title is unique, such as The Curious Case of Benjamin Button, the United States Patent and Trademark Office (”USPTO”) and courts typically do not allow trademark registration.  The USPTO and courts alike reason that literary titles are per se “inherently descriptive” unless the title has “wide promotion and great success” or is part of a series of creative works, such as Nancy Drew or Twilight.  See Herbko Int’l Inc. v. Kappa Books, Inc., 308 F.3d 1156 (Fed. Cir. 2002).  Thus, under the current legal doctrine, single literary titles (like The Curious Case of Benjamin Button) are not registerable, while series titles (like Twilight) are registerable.

For many, this legal doctrine is both confusing and frustrating.  The vast majority of creative works do not reach the high level of promotion and success necessary (also known as “secondary meaning”) to overcome the per se “inherently descriptive” designation by the USPTO, and few creative works actually evolve into a series.  The denial of trademark protection for single literary titles is significant and arguably unfair.  Literary titles can be valuable assets, used as bargaining chips in lucrative licensing opportunities for related merchandise.  A valid trademark registration for a literary title can make an appreciable difference in the ultimate value of a licensing agreement.

With a little creative lawyering, however, one can bypass the USPTO’s hard stance on single literary titles and secure trademark protection for works otherwise unregisterable.  Although a single literary title may not be registerable for the literary work itself, one can secure trademark protection for the title of the work by registering it for use in connection with other goods or services. For example, while the USPTO would likely deny registration for The Curious Case of Benjamin Button for use in connection with a movie, the USPTO would likely grant registration for the same title for use in connection with clothing or other  merchandise.

Though perhaps a bit crude, another approach is to simply intend on writing another book or producing another movie reasonably close in time to the release of the first literary title.  With this approach, one may file an Intent to Use Application with the USPTO after publishing the first literary title.  Even if one doesn’t ultimately write that second book, the Intent to Use Application can buy the precious time needed for the literary title to garner secondary meaning, thereby overcoming the USPTO’s restriction on registration.  Significantly, while the Intent to Use Application is pending, third parties are deterred (but not enjoined) from using that particular literary title.  Thus, the Intent to Use Application may provide an effective hedge that keeps third parties from using your literary title while you either write your second book or acquire the secondary meaning.

There are a number of other approaches one can take in securing protection, including state and foreign trademark registration.  Depending on the factual predicate of your case, one approach may be better suited than the other, or a combination of approaches may be most effective.  If you are interested in learning more about securing trademark protection for your literary title, please feel free to contact us to speak with one of our attorneys at Acumen Law Group.

Authored by Dominika Szreder Fard, Esq.

Square Peg, Round Hole: Preventing the “Tortification” of a Contract Claim

The vast majority of legal practitioners are familiar with the parol evidence rule, which prevents a party to a written contract from contradicting, or supplementing, the terms of a contract by introduction of evidence outside the four-corners of the document. An example of this extrinsic (or outside) evidence is found in oral or written representations made before the final contract is executed. To prevent the introduction of extrinsic evidence, parties frequently negotiate “integration” clauses into a contract; that is, a clause which defines the written contract as the entire agreement between the parties, superseding all prior negotiations and agreements. Thus, where a contract contains an integration clause, the parol evidence rule may be successfully invoked, and the party challenging the contract barred from introducing extrinsic evidence.

But, what happens when the party challenging the contract boot-straps a fraud claim to a breach of contract claim? Does the parol evidence rule apply to bar extrinsic evidence? The answer is “NO,” as the parol evidence rule is a principle of contract law, with no application to tort based claims. Indeed, many perceptive attorneys have recognized this loop-hole, and have circumvented the parol evidence rule by crafting fraud based claims out of facts that support nothing more than a garden variety breach of contract claim.  These attorneys are the flag bearers of what Judge Kozinski so eloquently called the “tortification of contract law” in Oki America, Inc. v. Microtech Int’l, Inc., 872 F.2d 312 (9th Cir.1989).

So, is the sanctity of a contract lost, and extrinsic evidence introduced, whenever the party challenging the contract alleges a fraud occurred in the negotiations leading up to the contract? Not necessarily, according to Judge Richard Posner in a recent Seventh Circuit Court of Appeals decision in Extra Equipamentos E Exportacao Ltda. v. Case Corp., 541 F.3d 719 (7th Cir. 2008). In Equipamentos, the court addressed the enforceability of a “big boy” clause, which in legal parlance is referred to as a “no-reliance clause.” A typical no-reliance clause states that the parties have not relied upon any oral representations leading up to the execution of the contract. Reliance is, of course, a critical element of any fraud claim, so the inclusion of a no-reliance clause may defeat such a claim. The plaintiff in Equipamentos sued the defendant for fraud, maintaining that he signed a release based on false statements and promises made by the defendant. In response, the defendant argued that the no-reliance clause precluded any such fraud claim. In holding that the no-reliance clause defeated the plaintiff’s fraud claim, the court cautioned that big boy clauses may not be enforceable if one of the contracting parties is not actually a “big boy,” like an unsophisticated person or a party not represented by counsel. In such a scenario, a court will conduct an inquiry into the circumstances surrounding the negotiations to ensure that the unsophisticated party understood what  rights he or she was waiving in the no-reliance clause.

The lesson of Equipamentos is clear: it behooves legal practitioners – and business owners – to consider “big boy” clauses in their contracts to head off fraud claims where the actual dispute involves nothing more than a breach of contract. If you are a business owner interested in learning more about no-reliance clauses, in the transactional or litigation realm, please feel free to contact us to speak with one of our attorneys at Acumen Law Group.

Authored by Bardia Fard, Esq.