Help! Trademark and Brand name Infringements and Lawsuits. Oh My!

triceretops · Feb 14, 2012

Just got this letter from the senior editor at my (Canadian) pub house. We've gone through final edits, and this has just now been brought to my attention:

"I'm currently going through the draft- and there are some issues

I'm doing a spell check and grammar check etc...

But I noticed many times you use brand names - Walmart - and you mention
Barbra Streisand - and "Somewhere" many other popular brand names.

You're going to have to go through your manuscript and either change everything that is a trademarked or copyrighted name into something generic
or you'll have to contact the management for those entities and request
permission (in writing) to use their name in your book. That means writing a
formal letter of request and including a copy of every single reference you
make to their name/product etc...this could take time and hold up the
production of your book.

I would suggest taking the easier route and just making everything generic.
I.e. If you use Walmart - change it to made up store name.

If you mention Barbara Streisand - say a popular songstress was playing on
the radio. Etc..

The concern is possible lawsuits down the line.

If you are using lyrics for a song you have to contact the American Society
of Composers, Authors and Publishers which
licenses music for composers in the US for permission to use the song.
Again.

There is another reason for this - let's say a murder takes place at the
Walmart you mentioned in your book - Walmart could see that as negative -
and launch a suit.

So we have to be very careful about these things."

Here is my response:

Okay, that sounds good. I can send you changes and all you have to do is "search and replace with". I'm very concerned, since this has been brought up late in the game, and I'm amazed that this escaped us all. Not all brand name, trademark, copyright or patent material is forbidden. And I think it's called fair use, or something like that. Nike, Weatherby, Dermablend Bandaid, Ford Ranger, Jeep Wrangler, these I believe are safe, as are similar products I use.

However, if you cast any institution, company, franchise, organization, city, property, state etc, into a bad light, that can open up the gate for litigation. Off the top of my head, the three below qualify for change. I'll let you know on the others very quickly:

"Cody" will have to be changed to a ficticious city, something like Brody. I cast the police department and citizens of a real city in a negative light. Not good.

"Wal-Mart" will definitely have to be replaced, with something perhaps like Galaxy-Mart, or some such. I have a monster rampaging through the store, tearing things to shreds.

"BFRO" stands for the Bigfoot Field Research Organization (out of Washington State), which is a real institution and I 'll change that to something like SRI, which stands for Sasquatch Research Institue, mabe out of California. I cast one of their researchers (ficticious name) in a negative light.

BTW, Disney are the worst for lawsuits. It just hit me that I've named the big wolf after one of their characters--Pinocchio. That could be trouble--real trouble. Let me check on that one too!"

Throughout the manuscript I do use brand names. I did not put any lyrics into the text, only a couple of song titles--"Somewhere" and "Somewhere over the Rainbow." I simply had a character sing in the shower and mentioned those songs. How can I face a lawsuit for using "Barbara Streisand." You've got me stymied on that one.

Virtually everything we drive, wear, sometimes cook and use in everyday life has a brand name, copyright, trademark or patent. It's almost impossible to use generic substitues for everything.

AWers, can you chime in on this? How could I have set myself up for lawsuits by using everyday brand names? I can spot the obvious ones. How serious is this?

Your help and suggestions would be more than appreciated.

Tri

Cyia · Feb 14, 2012

Anyone can sue for anything. It doesn't mean they'll win, but the annoyance is in the cost of fighting the lawsuit.

Having said that, there's nothing to prevent benign uses of public names, entities and products. Your characters can eat a Big Mac at McDonald's, so long as you don't claim the Big Mac turned everyone into a flesh-craving zombie horde.

Titles cannot be copyrighted.

Disney doesn't own Pinocchio.

Erin · Feb 14, 2012

I read books everyday that use brand names. I agree, don't use them in a negative light and try to change as many as possible to something generic.

If it's everyday, benign usage, like "she drives a BMW, but spends her paychecks at Walmart," there's nothing wrong with that. At EC, they had me list the owners of the few trademarks I used and they were listed in the opening credits, i.e. "BMW is a registered trademark of the Bavarian Motor Works."

Tasmin21 · Feb 14, 2012

The only brand name I was ever asked to change in one of my books was a well-known PC operating system, and the only concern was that mentioning a specific one would date the book.

Like the others said, so long as you're not saying "Soft drink XYX gave me rabies" you're probably ok, and I'm a bit puzzled by the request.

Stacia Kane · Feb 14, 2012

Also, song titles are not copywritable. You can use them all you like (I certainly do). Lyrics, no, but titles yes.

As long as your use isn't defamatory--like the "Big Mac spread zombie virus" example--and as long as it's specific--like, don't use "Kleenex" to describe toilet paper or "Coke" to describe a clear lemon-lime soda--you can mention any trademark or celebrity you like without permission, and I'm actually a bit astounded by a publisher insisting you remove all of them or ask permission. I know of a few houses that require you to acknowledge trademarks on a separate page, which I think is a bit much--a list of brand names and the trademark holders--but they certainly don't make you say something like "Barbra Streisand's name used without permission" or whatever (and those are erotic works so I can see the concern there even if I disagree with it).

You have not set yourself up for lawsuits, provided your use falls into the guidelines above. Your publisher is being overly cautious, IMO.

veinglory · Feb 14, 2012

I only once had an epublisher insist I change a brand name, and they went belly up a few months later--and so may not be the rod by which to measure such things. None of the others ever made such a request.

Jamesaritchie · Feb 14, 2012

That's absolute nonsense. You need an editor who has actually read a novel. Seriously, an editor who believes this is one who has no experience whatsoever, and hasn't even taken five minutes to do a Google search for the truth.

Have all the monster you like charging through Walmart. And, of course, no writer has ever portrayed New York City and its Police department in a bad light.

I really don't understand how anyone who has ever read a novel could believe any of this.

Nor is it true that anyone can sue over anything. Anyone can attempt to sue over anything, but suits like this aren't going anywhere, and every lawyer I've had experience with would laugh and refuse to take the case.

And no one would dare say that a Madonna song was playing on the jukebox, or that the character was at a Foo Fighters concert.

Using trademarked names isn't fair use, it's simply perfectly legal. Nor is casting a city or police department in a bad light forbidden. Of even a Walmart, for that matter. Dos New York City have problems, does it do things wrong? Is the police department always honest, with never a crooked cop in its history?

Do you like Walmart? Do you think it's a shining example of what shopping should be? Are you allowed to express your feeling about Walmart? If you can, so can your characters.

The single spot where you have to be careful is with Disney, but even there, just mentioning a character is legitimate. What you can't do is have a Disney character as a character in your own story.

IceCreamEmpress · Feb 14, 2012

What the crap?

These people have no idea what they're talking about. Seriously, this is completely wrong information. If I got a letter like that from an editor, I would move heaven and earth to cancel my contract.

I'm going to pick out just one bit of spectacular misinformation:

Ill-Informed Editor said:
f you are using lyrics for a song you have to contact the American Society
of Composers, Authors and Publishers which
licenses music for composers in the US for permission to use the song.

ASCAP is only one of several music licensing organizations in the US (BMI and SESAC are the two other biggies). But ASCAP doesn't even handle "mechanical" licenses (which include reprints of music and/or lyrics); they only license performance and broadcast (which includes jukebox, etc.) rights. To obtain a reproduction license, you need to go to the music publisher or other rights holder directly.

Now, sometimes ASCAP is the easiest way to find out which organization or individual is the rights holder for the music created by one of its members. But if the songwriter in question is a BMI or SESAC member instead, or not a member of any composers' licensing organizations, asking ASCAP will just be a waste of your time.

Torgo · Feb 14, 2012

Arrant nonsense. You can use whatever brand names you like, so long as you aren't saying anything defamatory about them or trying to trade off their names in some way. Just referring to real people, businesses or trademarks is fine.

Song lyrics will need to be cleared. Song titles are probably OK, although it's a slightly grey area - I wouldn't worry in the least though about the example you have given.

Pinocchio is (c) Carlo Colloddi, but as he died in 1890 it is long out of copyright. (Characters created specifically for the Disney movie will still be in copyright, I guess.)

I'm shocked your editor has sent you this letter.

triceretops · Feb 14, 2012

I'm relieved. I absolutely thought I was going out of my fricken mind. I've published several books and never, ever had this issue brought up, Except, another Canadian publisher. I'm just wondering if their laws are that much different than ours concerning this topic?! Crikey.

I mean, dear gawd, I have a character taking a swig of Jack Daniels.

Thank you for your help. BTW, who the heck does own the rights of Pinocchio? I thought it was a Disney character.

Torgo · Feb 14, 2012

triceretops said:
Thank you for your help. BTW, who the heck does own the rights of Pinocchio? I thought it was a Disney character.

He is in the public domain. The precise version of the character in the Disney movie, and the particular depiction in the movie, are (c) Disney, yes, but only to the extent that they own their version of Cinderella or the Seven Dwarfs.

Sheryl Nantus · Feb 14, 2012

AFAIK... your editors are idiots.

As mentioned before - unless it's portraying someone or something in a bad light I don't think there's any reason to make up generic names for the obvious.

How legit *is* this publisher?

I'd fire back a bit of common sense. Good luck.

Torgo · Feb 14, 2012

Stacia Kane said:
Also, song titles are not copywritable. You can use them all you like (I certainly do). Lyrics, no, but titles yes.

Oddly, I had a training course yesterday about copyrights, trademarks and other legal issues for publishers. Song titles seem to be a little bit of a grey area. Referring to a song title seems to be fine, but there was an example we were given of a textbook publisher who wanted to make the title of each chapter in the textbook one of the song titles from a particular Beatles album. That was apparently flying a little too close to the wind for the lawyers concerned.

Al Stevens · Feb 14, 2012

"Mechanical licenses," most of which are managed by the Harry Fox Agency for its affiliates, license you to make sound recordings of copyrighted compositions. Harry Fox sets the licensing fees, which are reasonable.

It is unrelated to the issues being discussed here. Unless you are going to include audio in your e-book, of course.

Al Stevens · Feb 14, 2012

With respect to the original issue, one of the publishers I queried sends authors a form to fill out on which you list all such references--businesses, towns, real people, products, etc--in your book and the contexts in which they are used. They even want to know if you use loosely-disguised names in place of the real ones.

The author is responsible for research and permissions.

"Not all items you list will require permission but we need them listed so we can verify if permission is needed or if a rewrite is required. From a legal standpoint, what you determine to be fine to say or use may not be the case."

So there is genuine concern out there. This is a reputable, respected publisher, not one to be blown off because they ask these questions.

stormie · Feb 14, 2012

Years ago, there was an article about using brand names in stories. Several representatives of large companies were interviewed. They all said it was okay to use their brand names as long as the writer capitalized the first letter (Kleenex), or wherever it should be capitalized (like Q-Tip).

triceretops · Feb 14, 2012

So there is genuine concern out there. This is a reputable, respected publisher, not one to be blown off because they ask these questions.

I'm giving the benifit of the doubt here, too, aware that this publisher was exhibiting caution. She is rightly under the impression that the United States is sue-happy. She also said she worked in the TV and film industry, stating that she always had to get permission to use a celebrity's name. Now, isn't TV and film a lot different than the printed word?

It's quite possible that this publisher has been sued in the past, and that, I don't know. But I'm aghast at her determination that just about every brand name and trademark must be passed by permission. I've never seen this before.

She cites my contract. I'm going to dig up the hard copy contract and see exactly what is stated. I do know that permissions always fall on the writer, so that doesn't surprise me. But I will be totally shocked to find that Everything must be passed according to their Hoyle, with a massive list of permissions.

Tri

triceretops · Feb 14, 2012

All I could find under AUTHOR'S WARRANTY was:

To the best of the author's knowledge and belief, said Work contains no matter which may be deemed libellous, and that the Work does not infringe upon any copyright, any privacy rights, or on any rights of a third party.

That's seems pretty standard.

Chris

Torgo · Feb 14, 2012

She's wrong. She's just wrong. Don't say anything libellous or say that Big Macs carry Ebola; you'll be fine. Ask to see an opinion from their legal department.

triceretops · Feb 14, 2012

Torgo said:
She's wrong. She's just wrong. Don't say anything libellous or say that Big Macs carry Ebola; you'll be fine. Ask to see an opinion from their legal department.

That's where she's going, and to her CEO for some type of decision. I did make a compromise and had her change a few locations, just to stay on the safe side, where her suggestions did have merit. But...if I'm forced to go into that manuscript and change every tool, vehicle, food, product, shoe, liquor brand, franchise, celebrity, song title, etc,... I will be one pissed off mo-fo. I absolutely did not overdo these things--they were sprinkled sparingly. We're ready for galleys, and here we are fooling around with this...

Tri

Jamesaritchie · Feb 14, 2012

Al Stevens said:
With respect to the original issue, one of the publishers I queried sends authors a form to fill out on which you list all such references--businesses, towns, real people, products, etc--in your book and the contexts in which they are used. They even want to know if you use loosely-disguised names in place of the real ones.

The author is responsible for research and permissions.

"Not all items you list will require permission but we need them listed so we can verify if permission is needed or if a rewrite is required. From a legal standpoint, what you determine to be fine to say or use may not be the case."

So there is genuine concern out there. This is a reputable, respected publisher, not one to be blown off because they ask these questions.

Filling out such a form is insane, no matter who the publisher is.

And whoever the publisher is, no they don't need to know real names, real towns, or loosely disguised names.

There is one way, and one way only, that you can get in legal trouble from using real names. If you absolutely hate your dentist, and if you make a dentist character recognizable as the dentist you hate, have him raping his patients while they're under anaesthesia, you will go to court, and lose, even if you change his name.

But brand names, real towns, etc., no, the publisher does not need to be handed a list, and you damned sure don't have to fill one out.

A writer who even knows which brand names and the like he used is beyond hope.

BenPanced · Feb 14, 2012

Jeez. How many times has Comedy Central run the MechaStreisand episode of South Park and not been sued?

Terie · Feb 14, 2012

Maybe you should start going through books on your shelves and compiling a list of every trademark and celeb name you find to prove that it's perfectly fine.

Al Stevens · Feb 14, 2012

Jamesaritchie said:
Filling out such a form is insane, no matter who the publisher is.

I filled it out. I'm not insane. And I understand the issue from their perspective.

Jamesaritchie said:
But brand names, real towns, etc., no, the publisher does not need to be handed a list, and you damned sure don't have to fill one out.

Certainly if you don't wish to be signed by this publisher.

Jamesaritchie said:
A writer who even knows which brand names and the like he used is beyond hope.

Beyond whose hope? I mention Hugh Hefner in the story. Why would I object to saying so now if she wants me to? What's the big deal? I can't hide it forever.

The original poster's editor is clearly off the mark by insisting that all such references be deleted out of hand. That's just ignorant.

But there are much less extreme circumstances than your dentist example in which an author can get into trouble over invasion of privacy issues. The Marjorie Kinnan Rawlings case, for example. A simple, humorous reference to a neighbor's quirks resulted in years of court battles involving Rawlings and the publisher. And a $1 settlement after all that.

Al Stevens · Feb 14, 2012

Terie said:
Maybe you should start going through books on your shelves and compiling a list of every trademark and celeb name you find to prove that it's perfectly fine.

Trademarks and celebrity names are fair game sans libel. The publisher prefers to make that call, however. So your neighbor goes on America's Got Talent (yuk). Does that make her a public figure not covered by privacy laws? Do you trust yourself to know where to draw the line?

I think this particular editor in the OP got some guidance and went overboard with it.

Help! Trademark and Brand name Infringements and Lawsuits. Oh My!

triceretops

Cyia

Rewriting My Destiny

Erin

Listening to my other selves

Tasmin21

They will come from below...

Stacia Kane

Girl Detective

veinglory

volitare nequeo

Jamesaritchie

IceCreamEmpress

Hapless Virago

Torgo

Formerly Phantom of Krankor.

triceretops

Torgo

Formerly Phantom of Krankor.

Sheryl Nantus

Holding out for a Superhero...

Torgo

Formerly Phantom of Krankor.

Al Stevens

Al Stevens

stormie

storm central

triceretops

triceretops

Torgo

Formerly Phantom of Krankor.

triceretops

Jamesaritchie

BenPanced

THE BLUEBERRY QUEEN OF HADES (he/him)

Terie

Writer is as Writer does

Al Stevens

Al Stevens