A Rose By Any Other Name Might Get You Sued – A Brief Discussion of Titles By Neil Wilkinson

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The title of the novel and movie Fahrenheit 451, by Ray Bradbury, refers to the temperature at which book paper burns. Fahrenheit 9/11, Michael Moore’s new movie, is a criticism of George W. Bush and his handling of events on and after September 11, 2001. The former is about a society that seeks out and burns all books, forcing its people to memorize and become one book or another. The latter, equally political in its own way though maybe more pointedly so, shares a portion of the title, and is to all but the most obtuse observer, a rather transparent attempt to play, for commercial gain, on the recognition generated by the former.

The question arises then, is this legal? Does it not in some way infringe a copyright? And if not copyright, what then? A trademark? Let’s take a look at how these things tend to play out.

The most recent fracas we have seen is the book by Al Franken, Lies and the Lying Liars Who Tell Them: A Fair and Balanced Look at the Right. Whether Al Franken’s look at the Right was any more fair and balanced than Fox Network’s look at pretty much anything, I’ll leave you to decide. But they did wind up in court, FOX NEWS NETWORK, LLC v. PENGUIN GROUP (USA), INC., and ALAN S. FRANKEN, and as can be seen from the transcript at the other end of this link, Fox did not fare well at all. Little help was available to them when it was pointed out that Bill O’Reilly had committed a very similar sin in making a play on a popular movie title to sell his book.

A short, simple answer is that, as a general rule, titles, by themselves, are not copyrighted. But they can, as can subtitles, be registered as trademarks. The legal test then becomes whether a play on words, as Michael Moore has done, confuses a potential consumer, or if the action of the alleged infringer dilutes the original mark, that is, has a direct adverse economic effect on the registered trademark.

It is reported that Ray Bradbury saw nothing at all amusing in the title of Mr. Moore’s movie, and in fact has asked for an apology. Were Ray Bradbury to decide that he did not like the use of the word “Fahrenheit” in the title of Mr. Moore’s movie enough to take legal action he would have essentially the same burden Fox faced in the Franken matter, a heavy one and one that does not often prevail. A reading of the transcript of the Fox v. Franken case illustrates that even when titles are registered, plays on words, parts of the titles, words within them, and the like have been held to be permissible as satires, parodies, or fair uses of the terms in question.

Consider Alice Randall’s The Wind Done Gone succeeded in warding off a claim from the heirs of Margaret Mitchell only to fail miserably in the marketplace for reasons altogether different from the court case. A point in that case was, in addition to permitting parody and satire, there was little chance that any consumer would have confused Alice Randall’s book with Gone With the Wind.

Or more recently, consider Donald Trump’s assertion that he has or will have the words “You’re fired” trademarked, thus creating a potential infringement every time the term is used, and in the bargain, and this is the real shocker, creating an income stream for Mr. Trump.

Donald Trump, reality TV star and rapacious New York developer, has filed to trademark the phrase sweeping an underemployed nation. That’s right, if The Donald gets the nod from The U.S. Patent and Trademark Office, he’ll be able to exclusively slap the words “You’re Fired” on clothing and “games and play things,” and use it in connection with “casino services.” Along with peddling overpriced apartments, Trump runs some spectacularly underperforming Atlantic City gambling joints. Trump’s two trademark applications, which you’ll find below, were made after the January 8 debut of The Apprentice, the NBC hit that has thrust Trump (and the alleged billionaire’s swirling hairdo) back onto the front pages. We’re waiting to see if Trump tries to patent the signature hand motion he uses to dispatch Apprentice contestants. On a related note, a check of trademark records shows that the firm “You’re Outsourced” is still available for the taking. See: Donald Seeks to Trump “You’re Fired” Market, The Smoking Gun, March 18, 2004.

It can be argued that such a move has little chance of success as it pertains to the words themselves. They are simply too generic, too often used, and have arguably been in use since the first time anyone gave anyone a job and then sent them packing.

However, should you decide to create a teleplay called “You’re Fired,” about, oh let’s say the topsy-turvy world of arc-welding, where novices are each week given some quantity and different types of metal along with a torch and a mask, and the person doing the worst spotwelds gets the axe, it might then be argued that your show is modeled after the show The Apprentice. Then you might have a problem. But even The Donald would have to show that your welder show could reasonably be confused with the zany escapades of Trump’s ladder-climbing wannabes.

When a work is copyrighted, it is copyrighted under its own title, which becomes a part of the manuscript enjoying protection. That seems simple enough. But what of a title that has the name of a famous person as its subject, or a public figure, or an event? Other titles, like those in the Chicken Soup series, are registered trademarks, e.g., Chicken Soup for the Soul™. But the words “Chicken” and “Soup” singularly and collectively are not. A cookbook then, offering recipes for soup containing various and sundry parts of descendants of gallus gallus, would not likely constitute an infringement of the popular tomes, given that the Chicken Soup series employs the term as not only a play on words, but to identify the self-help, self-improvement, or inspirational material contained in the books. In that case, dilution or consumer confusion, if any at all, would be minimal, and any economic impact unlikely.

Further to Ray Bradbury’s chagrin at the use of the word “Fahrenheit” in the title of Michael Moore’s movie, another cursory search of U. S. Trademark registration shows the use of the word “Fahrenheit” in a number of ways, including a perfume. That gives rise to a question regarding Mr. Bradbury’s level of aggravation, which may be simply his politics, though I must confess, that is purely speculation on my part. It is pretty clear that the title of Michael Moore’s movie is made all the catchier in the wake of Ray Bradbury’s artistry.

A recent U.S. Supreme Court case, Shields v. Zuccarini, while not directly on point with the issue of book titles, enumerates the elements of the legal test that make Internet domain names “identical or confusingly similar” to established marks. In this case, the JoeCartoon.com™ website was infringed, with the court reciting what has essentially become “black letter” law, and which may yet prove to cost Michael Moore a portion of his haul from Fahrenheit 9/11. That test considers “(A) the degree of inherent or acquired distinctiveness of the mark; (B) the duration and extent of use of the mark in connection with the goods or services with which the mark is used; (C) the duration and extent of advertising and publicity of the mark; (D) the geographical extent of the trading area in which the mark is used; (E) the channels of trade for the goods or services with which the mark is used; (F) the degree of recognition of the mark in the trading areas and channels of trade used by the marks’ owner and the person against whom the injunction is sought; (G) the nature and extent of use of the same or similar marks by third parties.”

As a parallel, the Supreme Court copyright case, Campbell v. Acuff-Rose Music, Inc., involved a claim of infringement by the owners of the Roy Orbison song Pretty Woman. 2 Live Crew, after being denied permission to use a form of the title in one of their own songs, Oh Pretty Woman, used it anyway. The court case that followed upheld Luther Campbell’s right to use their title.

Infringement cases, whether trademark or copyright, also explore and consider the motivation behind the use of the allegedly infringed term. That logically leads to an examination of Mr. Moore’s motives in his choice of titles for his movie. It is reasonable, therefore, to inquire whether or not Mr. Moore’s movie would have been as successful as it has proved to be had he named it something a little less recognizable. Fahrenheit 451 occupies in American popular culture a perch nearly as lofty as that of Joseph Heller’s Catch-22. It is recognizable worldwide, having, like Mr. Heller’s novel, been translated into numerous languages, having enjoyed seemingly endless printings, and having been made into a popular motion picture. Would the movie have drawn as much attention had it been named differently, say something a bit less recognizable like Dubya Golfed, and with no real or apparent play on anything other than the George W. Bush and the events of September 11, 2001? Who’s to say? That, like most high-profile infringement cases, may wind up being decided in the courts.

In the end, it may be a toss-up between Mr. Bradbury and Mr. Moore. Many authors have given their books titles which already existed on bookstore shelves. But that is not the complete test, as we have seen. And, more interestingly, intellectual property issues can easily involve more than one area of the law. Whatever happens, it would make an interesting battle.

This article is not intended to offer legal advice, that’s what you hire your attorney to do. It is, however intended to offer some discussion on some of the more prominent intellectual property issues in the news these days.

Neil Wilkinson is a practicing attorney and holds a Master’s Degree in Professional Writing from Kennesaw State University (KSU) in Kennesaw, Georgia, and Master of Laws (LL.M.) from the University of Georgia School of Law. Neil is also an adjunct professor of Intellectual Property Law in the MBA program at the KSU Michael Coles School of Business. He has published articles in legal and general interest publications, as well as poetry and short fiction in regional publications. With two novels completed, A Day in the Life of A Reasonable Man, a picaresque farce involving a fussy, overly-grammatical everyman who finds himself the plaintiff in a lawsuit against the most powerful televangelist in America, and Laughing Academy, a psychological/legal suspense novel, Neil continues work on other novels in various states of construction. Currently, he is seeking literary representation.