Author Threatens To Sue Book Reviewers Over Trademark Infringement 218
Nate the greatest writes "Do you know what is crazier than sending DMCA notices to a site like Lendink which doesn't host any content? It's when an author threatens to sue book reviewers over trademarks. Jazan Wild, a comics creator, is sending out threatening emails to any and all book blogs who review a recently published book called Carnival of Souls. The book was written by Melissa Marr, and it happens to use a title which Jazan Wild owns the registered trademark. He's also suing the publisher for trademark infringement, but HarperCollins is laughing it off. The book blog Bookalicious posted the email they got from Jazan. Needless to say they did not take down the review."
Re:Well... (Score:5, Informative)
FTA: "Any sane person would have put a few minutes thought into the matter and realized that such an obvious phrase as Carnival of Souls would likely have been used as a title many times before. In fact, Bookfinder turned up at least a couple dozen different books, movies, TV episodes, and more – some of which dates back to 1962. And if you look inside books, Google says that it found the phrase no less than 5600 times (with some duplication, obviously)."
You do get that, right? A phrase used dozens of times as the title of books, movies, and TV episodes. If it was an original phrase that had never been used before, then his case might have some merit, but it's not, and he's just trolling.
Re:Well... (Score:2, Informative)
You do get that, right? A phrase used dozens of times as the title of books, movies, and TV episodes. If it was an original phrase that had never been used before, then his case might have some merit, but it's not, and he's just trolling.
I am no lawyer, but the difference here is the difference between a copyright, which you automatically get upon creation, and a trademark, which you have to apply for and pay the USPTO for.
The author's take on this (Score:5, Informative)
The author's take on this is further down in the comment section of Bookalicious. Quoting the key parts:
I want you to understand something. We contacted Ms. Marr and Harper Collins, way back in June and asked them to please respect our trademark. (...). My wife and I have built our company Carnival Comics over the last 10 years. In that time, we invested endless hours and tons of money building our brands. We have been very blessed. Carnival Of Souls, our series was the number 1 ebook on Blackberry for over a year. It was featured in the LA Times. (...)
So we protected our time and money and brand by registering a trademark for CARNIVAL OF SOULS. I started using the mark in commerce, way back in 2004. I applied for registration in 2009. and the USPTO granted me a mark.
The person you should be mad at is Harper Collins, who themselves own trademarks for book series. This is a big company, looking at someones lifetime of work and just taking it. We begged them to do the right thing. I had hoped Mrs. Marr would stand up for the rights of trademark owners, but she did not. Would you be angry at J.K. Rowling for stopping someone from putting out a HARRY POTTER series? She has a trademark as well.
See my point? I am not doing anything but trying to save my series from an out and out attack by a billion dollar corporation that feels they are above the law. I knew that if they released the Marr book, I would be the bad guy, for trying to defend my trademark. But what else can I do? Would J.K. sit back while someone else released another HARRY POTTER series. I think if you look at the facts in the case, you will see, that Harper Collins, should have not released a book and series, with a mark that they knew, was already out there.
Re:Next, chef sues recipe users ! (Score:1, Informative)
If DMCA can be applied to kitchen, maybe a chef who trademarked "salt" would sue anyone who dare to use salt in their cooking
1. DMCA has exactly NOTHING to do with trademark claims.
2. IF someone were to trademark the word "salt", it would not apply to the use of salt but the use of the word "salt", for example in a recipe.
3. If such a trademark were ever actually granted, and they did NOT file suit against someone else using it, that would amount to failure to protect the trademark, thus rendering it invalid. So they HAVE to sue (or at least issue cease and desist).
4. Such a trademark would not be granted. You have to show that the TM is synonymous with your brand and isn't already a commonly used term.
5. Trademark does not cover any possible use of a word. Rather, it covers uses of the word in which one brand could be mistaken for another brand of similar or otherwise related items.
In short, you're either clueless or a troll. Based on your first post position, I think it's safe to call you a Troll.
Re:Well... (Score:5, Informative)
Movie: http://en.wikipedia.org/wiki/Carnival_of_souls [wikipedia.org] (1962)
KISS Album: http://en.wikipedia.org/wiki/Carnival_of_Souls:_The_Final_Sessions [wikipedia.org] (1996)
(some band I've never heard of): http://en.wikipedia.org/wiki/Carnival_of_Souls_(Miranda_Sex_Garden_album) [wikipedia.org] (2000)
I could go on, but my toast is burning.
Re:Well... (Score:4, Informative)
If it was an original phrase that had never been used before...
You're thinking of patents and prior art. Trademarks don't work that way - they belong to whoever registers them in specific categories.
Re:Well... (Score:4, Informative)
The thing is, it's a trademark. Trademarks must be defended against any potential threat, or you risk losing them. It doesn't matter how strong his case is. In fact, I doubt he expects to win anything. He's just doing what he has to so no-one can say he didn't defend his trademark and just take it away from him later.
Re:Next, chef sues recipe users ! (Score:5, Informative)
2. IF someone were to trademark the word "salt", it would not apply to the use of salt but the use of the word "salt", for example in a recipe.
No, if there were a SALT mark, it would not apply to the word 'salt' where that word is used to mean an actual salt substance, e.g. common table salt. It would be generic in that context, and anyone could use it. OTOH, if you had a line of clothing called SALT, or SALT-brand brake pads for automobiles or something, that would be fine. If it helps, think of Apple, which has the APPLE mark for computers and consumer electronics, but has no power in the realm of fruit.
4. Such a trademark would not be granted. You have to show that the TM is synonymous with your brand and isn't already a commonly used term.
Again, as with APPLE for computers, you can use commonly used words as valid marks. You just can't use them in the context in which they're already commonly used. APPLE is a generic mark for fruit, and thus unprotectable; but it was arbitrary for computers, and thus quite strong.
3. If such a trademark were ever actually granted, and they did NOT file suit against someone else using it, that would amount to failure to protect the trademark, thus rendering it invalid. So they HAVE to sue (or at least issue cease and desist).
No, a mark holder does not have to file suit or even send off nasty letters when other people use the same thing. That's not required at all. So long as the relevant group of customers are not confused about the commonality of sources of goods and services labeled with the mark, there is no confusion, and no danger to the viability of the mark, and thus no need to take action to defend it lest it be lost.
Re:Well... (Score:5, Informative)
You do get that, right? A phrase used dozens of times as the title of books, movies, and TV episodes. If it was an original phrase that had never been used before, then his case might have some merit, but it's not, and he's just trolling.
No, that doesn't matter.
Trademarks don't care about originality; you can get protection for your mark even if you copied your mark from somewhere else.
Trademarks don't care about novelty; you can get protection for your mark even if the word or symbol that constitutes the mark already existed prior to your use of it as a mark.
You think that Apple or Nike invented the words they use as marks?
Re:Well... (Score:4, Informative)
Re:Well... (Score:3, Informative)
You forgot the Magic: The Gathering card "Carnival of Souls", which was printed and released in 1999.
http://magiccards.info/ud/en/55.html [magiccards.info]
Re:Well... (Score:3, Informative)
You find it baffling that a law that prevents people from naming a toxic cleaning solution the same name as a popular cola is a bad thing. Because thats what trademark exists for. To prevent confusion in salable items. /. is a trademark? or that the distinctive shape of a coke bottle is also one (called trade dress). As you commented, 'Carnival of souls' is a generic term. Did you know that according to the Lanham act, a Generic mark, like "laptop computer," cannot receive trademark protection even if they have a secondary meaning. The rule against generic trademarks is particularly important for holders of famous marks, because their marks may lose protection if they become common nouns or adjectives in the public eye. Formerly-trademarked words like "aspirin" and "cellophane" have lost their protection due to genericide. So according to you its a common phrase. In whose lexicon? No. according to USPTO, its a fanciful mark.
The first trademark statute, enacted in 1870, was struck down by the Supreme Court in The Trade-Mark Cases, 100 U.S. 82 (1879), for exceeding the powers granted by the patent and copyright clause of the Constitution. Congress responded with the Trademark Act of 1881, which was based on its Commerce Clause powers.
The current federal trademark statute is the Lanham Act of 1946, codified in Title 15 of the United States Code.
The Lanham Act establishes a procedure for federal registration of trademarks. If a trademark meets certain qualifications, it can be listed on the Principal Register, which affords it many benefits. Federal registration is not mandatory to receive trademark protection, but a mark owner seeking to enforce trademarks in US federal court needs either a federal registration or a violation of the Lanham Act's specific sections on false advertising or unfair competition. Wild claims both.
Did you know that