http://ipkitten.blogspot.com/2022/03/dont-you-dare-use-name-of-book-for-that.html
When this Kat was just setting out, a wise lawyer described IP protection in terms of a vast sea, dotted with islands. The islands represent the boundaries of IP protection, while the rest of the sea waters are free for all to navigate.
Neat, but a tad incomplete. There are creations that do not quite belong either on the island or in the deep blue sea. They may not be entitled to formal IP protection, but they still enjoy intangible value.
Consider a book title, especially in connection with the television or movie adaptation of a literary work. Titles create expectations on the part of their readers; when those expectations are dashed, impairment of value has taken place. The question is: what kind?
Let us begin with copyright. Those looking for copyright protection for the book title will be disappointed. For example, as Circular 33 of the U.S. Copyright Office states –
Words and short phrases, such as names, titles, and slogans, are uncopyrightable because they contain an insufficient amount of authorship. The Office will not register individual words or brief combinations of words, even if the word or short phrase is novel, distinctive, or lends itself to a play on words.
So, “Catcher in the Rye” may be a wonderfully creative book title, but it does not enjoy copyright protection.
Still the Circular does hold out a ray of hope, noting that-
[u]nder certain circumstances, names, titles, or short phrases may be protectable under federal or state trademark laws.
But those special circumstances turn out to be limited. The U.S. Manual Trademark Manual of Examining Procedure (“TMEP“) has this to say in section 1208.08:
The title, or a portion of a title, of a single creative work must be refused registration, unless the title has been used on a series of creative works. …. Herbko Int’l, Inc. v. Kappa Books, Inc (“the title of a single book cannot serve as a source identifier”); In re Cooper, (“A book title . . . identifies a specific literary work . . . and is not associated in the public mind with the publisher, printer or bookseller . . . .”).
[T]here is a compelling reason why the name or title of a book cannot be a trademark, which stems from copyright law. Unlike a copyright that has a limited term, a trademark can endure for as long as the trademark is used. Therefore, once copyright protection ends, and the work falls in the public domain, others must have the right to call the work by its name. Moreover, if the work sought to be registered is not copyrighted, the public may copy it at once and would be as clearly entitled to call it by its name (case citations omitted).
The upshot is that anyone hoping to find IP refuge on either the copyright or trademark island will be disappointed. Still, there is value in the name. After all, the use of the book title serves to simplify a prospective reader’s search costs when looking for a movie.
One can either describe a restaurant chain by referring to its headquarters in the Chicago area, its roots in San Diego and its visionary leader, Ray Kroc. Or, one can simply refer to it as McDonalds. Similarly, one can refer to a literary work in terms of Atticus Finch, his daughter, Jean Louise (“Scout”) Finch, Charles Baker (“Dill”) Harris, and the reclusive Boo Radley. Or, one can simply refer to it as “To Kill a Mockingbird.”
Come on, Kat’, says Merpel. ‘The two situations are not identical. In the first, the name serves as a source indicator, enabling me to more efficiently find the goods/services that I am searching. But in the second, the book must be called something, since it is how one can identify a specific literary work. The book title and its contents are tied in a unique, literary conjugal fashion, as the TMEP explains.’
Even if this Kat grants Merpel her distinction, it does not dispose of the claim that the book title enjoys value–precisely because it is wedded to the contents of the book. Given this relationship, use of the book title in certain circumstances can create misleading expectations.
Let us take Jane Austen’s book, “Mansfield Park”. In the last two decades, there have been two movie versions (1999 and 2007) both called “Mansfield Park”, and both claiming to be “based” on the novel. However, neither purports to be faithful to the text in all its material particulars (indeed, the 1999 movie also makes use of letters of the author). It is stunning not only how the two movies each departs from the text of the novel but, no less strikingly, how each differs from the other.
This Kat found both movies unsatisfying. This was not due to their cinematic value per se (reasonable Kat viewers can differ on this), but because his expectations, formed by the book’s contents ansd anchored in his mind by the book title, had been impaired by the wholesale departures and distortions in the two movies.
From the vantage of viewer expectations, there are two choices in producing a film based on a book, especially if the book is well-known. First, the producer, under the same title, can adapt the literary text into the movie medium, remaining as true as possible to the material particulars of the text. For sure, there will aways be differences between the literary text and the movie, but they will not do harm to a viewer’s expectations.
Second, the producer can create his or her own version of the novel, this by extracting and adapting the basic story line, but then reformulating it in new artistic terms. But, in so doing, one would expect to call the resulting movie by a name other than the name of the original book.
For those who might furrow their brow in response to such a position, one need only think of “West Side Story” (the theatrical version in 1957; with movie versions in 1961 and 2021). Or consider the 1995 cult movie, “Clueless“, roughly based on the 19th century novel, “Emma“, (also) by Jane Austen. “West Side Story” is not “Romeo and Juliet in New York”; it is “West Side Story”. “Clueless” is not “Emma in Beverly Hills”; it is “Clueless”. Names matter and they have value. When they are misused, they impair that value.
For sure, marketing and promotion can refer to “Romeo and Juliet”, or “Emma”, to whet a prospective viewer’s interest. This, provided that no viewer expectation is created, whereby what what he or she is about to see is the cinematic version of the Shakespeare or Austen literary creation.
As such, while the book title may not enjoy copyright or trademark protection, it does serve to fashion reader/viewer expectations. These expectations, in turn, imbue the book title with a sui generis value which, while not entitled to its own IP island, is still deserving of some consideration while afloat in the deep blue sea.
Picture on upper right by Hansueli Krapf and is licensed under the Creative Commons Attribution-Share Alike 3.0 Unported license.
Piture on lower left is by Louis Wain (1860-1939).
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