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Author Threatens To Sue Book Reviewers Over Trademark Infringement 218

Posted by Soulskill
from the let-me-know-how-that-works-out-for-you dept.
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."
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Author Threatens To Sue Book Reviewers Over Trademark Infringement

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  • by Taco Cowboy (5327) on Wednesday September 12, 2012 @05:23AM (#41310311) Journal

    If DMCA can be applied to kitchen, maybe a chef who trademarked "salt" would sue anyone who dare to use salt in their cooking

    • by daem0n1x (748565) on Wednesday September 12, 2012 @05:47AM (#41310407)
      That would lower everybody's blood pressure! Seems like a good move. All food will taste like shit, though...
  • Well... (Score:4, Insightful)

    by Anonymous Coward on Wednesday September 12, 2012 @05:25AM (#41310323)

    I feel bad for the guy. He's been using the mark since 2004 for his business with his wife. That's their brand. Sending the C&D's to review sites was a mistake, but these obviously aren't going out from a lawyers office... he's trying to get it solved himself while Harper Collins gives him the finger.

    I generally don't like C&D's, but I don't like a huge publisher just screwing this guy and his wife because they can, either.

    • Re:Well... (Score:5, Insightful)

      by ledow (319597) on Wednesday September 12, 2012 @05:47AM (#41310411) Homepage

      As others have pointed out, "Carnival of Souls", even if trademarkable, is a pretty generic name and has been in use for FAR, FAR longer. Hell, I'm sure I've played at least one computer game where that was the name of a level, for instance.

      It's like me trademarking "Emotional Rollercoaster" and then trying to enforce it. If he had a case, it's only against HarperCollins. And if he had a case, it would be expensive and difficult to win and would make him a lot of money from them playing off his established trademark.

      I doubt he has a case. He has to enforce the trademark. But he does not have to enforce third-party reviews of the trademark (hell, that just adds to evidence of damages if anything else). But the second you sue HarperCollins, the first thing they will have done is work out if he had a case. Chances are that he just doesn't.

      • There's an instance of this same name in a article published today in /. about Magic the Gathering. It's a name of some card. So I guess it's an expression on public domain already. Therefore, the C&D letter is a troll.
      • Re:Well... (Score:4, Informative)

        by Endo13 (1000782) on Wednesday September 12, 2012 @08:18AM (#41311115)

        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.

        • Trademarks only have to be defended against uses that would dilute those marks. There's no reason to believe that reviewing a book bearing an infringing title would do anything to dilute the trademark in question, as almost any reviewer's use of the mark would be strictly nominative [wikipedia.org]. The case against Harper Collins is a different matter, assuming he has a valid trademark.

      • by JimTheta (115513)
        I think he'd have a case if someone was starting a book *series* called "Carnival of Souls".

        But a single-book *title*? That's an overreach.
    • Re:Well... (Score:4, Insightful)

      by mwvdlee (775178) on Wednesday September 12, 2012 @05:52AM (#41310429) Homepage

      Reading a bit I would agree with the very un-/. opinion that this is not completely without merit.
      The C&D's to review sites are plain wrong, but he may indeed have a valid claim to the trademark with the publisher or author.
      It's not so much the title of a single book, which cannot be trademarked, but a title of a series of books, which can be trademarked.

      • Re:Well... (Score:5, Informative)

        by Tx (96709) on Wednesday September 12, 2012 @05:59AM (#41310459) Journal

        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: (Score:2, Informative)

          by paiute (550198)

          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.

          • by neonKow (1239288)

            You can't go around trademarking terms already widely in use. It doesn't matter that it's not a copyright. It just means this guy should have his trademark challenged.

            • You can't go around trademarking terms already widely in use. It doesn't matter that it's not a copyright. It just means this guy should have his trademark challenged.

              AFAIK, you can pay your money to the USPTO, and they *might* issue a trademark, but it's up to you to sue and prove that you should have the trademark and should receive damages. So, yes, he might have a trademark on "Carnival of Souls", but he's unlikely to get any money for it.*


              *Unless he's the Disney corporation. They get most anything they want regards trademark and copyright.

              • by neonKow (1239288)

                I stand corrected. You can't go around trademarking terms widely in use and have your trademark hold up in court.

            • by Quirkz (1206400)
              McDonalds has a trademark on the word "smile." You sure you can't trademark terms widely in use?
          • by Rary (566291)

            Actually, unregistered trademarks exist, too, and are in effect simply by using a particular mark of trade. The "R" symbol is used to denote a registered trademark, while the "TM" symbol denotes an unregistered trademark. However, in the U.S., unregistered trademarks have limited protection.

        • Re:Well... (Score:4, Informative)

          by subreality (157447) on Wednesday September 12, 2012 @08:10AM (#41311061)

          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:5, Informative)

          by cpt kangarooski (3773) on Wednesday September 12, 2012 @08:24AM (#41311185) Homepage

          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?

    • by Kupfernigk (1190345) on Wednesday September 12, 2012 @06:27AM (#41310583)
      This is Slashdot and nobody seems to have done a simple USPTO search!

      He has not (and I think cannot) trademarked a comic title. He has trademarked a trademark for sources of downloadable media content. From a read of the grant, this does not cover books or reviews. He cannot landgrab his trademark to cover areas outside its applicability. Much as I personally dislike HarperCollins, I suspect that the response of their lawyers will be (correctly) the same as in the famous Arkell v Pressdram.

      The USPTO search should be compulsory reading before commenting on these issues. It quickly shows whether someone has a case, may have a case, or doesn't understand how trademarks work. IANAL, this does not constitute legal advice or opinion etc., but in this case I suspect he falls into my last class.

      • by MysteriousPreacher (702266) on Wednesday September 12, 2012 @07:43AM (#41310893) Journal

        He has not (and I think cannot) trademarked a comic title. He has trademarked a trademark for sources of downloadable media content. From a read of the grant, this does not cover books or reviews.

        He has two registrations, the first of which most certainly does cover books.

        http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:m2hq6u.2.2 [uspto.gov]
        http://tess2.uspto.gov/bin/showfield?f=doc&state=4008:m2hq6u.2.1 [uspto.gov]

        I'd have thought the term already sufficiently generic enough to refuse these trademarks, let alone allow him to assert ownership over pretty much any fucking use of the phrase.

        Pro tip for Kazan Wild: Did you know that the phrase "The Good Book" is yet to be registered as a trademark for religious multimedia content. Go grab it, and while you're on your way down to the the USPTO, don't bother looking before crossing any busy roads you encounter.

        • Look carefully at class IC 016. Although in his description he includes "Novels", it's clear that the scope of 016 is "Goods made of cardboard or paper", and the IC merely references "printed matter". Although printed materials are in scope, it is a stretch of the imagination to extend this to include the title of a novel, or even a series of novels. It relates to publication or printing. One can, for instance, publish a series of books under the imprimatur of "Oxford University Press", because that is ap
      • by raynet (51803)

        You did notice that hey have two registrations of the mark in USPTO, one made in 2009 for 'Comic books; Graphic novels; Novels.' and second in 2011 for 'Downloadable motion pictures and television shows about drama, carnival themes, fantasy, supernatural themes; Motion picture films about drama, carnival themes, fantasy, supernatural themes; Motion picture films and films for television featuring children's entertainment'

      • by Snaller (147050) on Wednesday September 12, 2012 @07:59AM (#41310995) Journal

        "This is Slashdot and nobody seems to have done a simple USPTO search!"

        Because we use Google, not some weirdo search thing!

      • I suspect that the response of their lawyers will be (correctly) the same as in the famous Arkell v Pressdram.

        That predates me by just over a decade and so I had to look it up - Classic! http://www.nasw.org/users/nbauman/arkell.htm [nasw.org]

    • by PopeRatzo (965947)

      He's been using the mark since 2004 for his business with his wife.

      Just because you can cite a warm, fuzzy human interest story does not mean trademarking two common words is any less fucked up.

      Nor does it make his behavior, going after people who are reviewing a book that's not his any less fucked up.

  • He's got nothing... (Score:5, Interesting)

    by drkim (1559875) on Wednesday September 12, 2012 @05:40AM (#41310383)

    His comic was put out in 2006, but the title/phrase has been in use since at least 1962.

    He will have to show that people would somehow confuse this book, with his comic, which would be fairly hard.

  • The problem is in granting him trademark ownership of the phrase "Carnival of Souls" in the first place. He's just acting to defend it against any infringement as any other trademark owner would. Of course threatening reviewers is ridiculous but the publisher is going to have to pay him off. No way can they put out a book out with the same title as an existing trademark using for comics/graphic novels etc. Someone in Harper Collins legal department should get fired.
  • Soon /. (Score:2, Insightful)

    by aglider (2435074)

    will only talk about patent trials, copyright trielas and related counter-trials.
    Which will make the site boring (and sued by almost all comment publishers).
    Please, Moderators and meta-Moderators, quit from letting that crap to be published.
    We need the ol' good /. ! (aka SlashDotBang)

  • Jazan holds the trademark over "Carnival of Souls", and he has a legal obligation to legally defend it or lose it.

    It may seem silly to sue review sites, but the legal duty of a trademark holder is to actively defend illegitimate use of the trademark or risk dilution.

    • by Xest (935314)

      "but the legal duty of a trademark holder is to actively defend illegitimate use of the trademark or risk dilution."

      So if you don't defend someone who is using your trademark illegitimately, then there is a risk you will be diluted? That sounds a bit harsh.

      Don't worry, we know what you meant:

      "but the legal duty of a trademark holder is to actively defend against illegitimate use of the trademark or risk losing the trademark due to trademark dilution."

    • by thegarbz (1787294)

      It may seem silly to sue review sites, but the legal duty of a trademark holder is to actively defend illegitimate use of the trademark or risk dilution.

      No but, just two separate sentences. It may seem silly to sue review sites. Period.

      Actually it IS silly to sue review sites. There's never been a documented case anywhere that says when someone writes a review of something that it causes a trademark to be invalid. That notion is simply absurd as is the action of sending a C&D to the reviewers.

      Jazan suing HarperCollins is understandable and defendable in this trademark case, but don't excuse all actions by this guy who I can only assume has sought some "

    • by Coisiche (2000870)

      Indeed, he's just defending his trademark. And in his pursuit of that I want to see him take on Gene Simmons over KISS using "Carnival of Souls" as an album title.

      That would really be worth getting popcorn to watch.

  • by Kergan (780543) on Wednesday September 12, 2012 @06:41AM (#41310621)

    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.

    • by mrbester (200927)

      So what about Buffy The Vampire Slayer: Carnival of Souls?

    • by Coisiche (2000870)

      That's as maybe but I suspect J. K. Rowling might have run into a hitch if she'd titled her first novel Harry Potter, The Witch and The Wardrobe.

      • That's as maybe but I suspect J. K. Rowling might have run into a hitch if she'd titled her first novel Harry Potter, The Witch and The Wardrobe.

        Now you've got me imagining Harry and Hermione locked together in a closet. There might be a fanfic in this...

    • Re: (Score:3, Insightful)

      by Anonymous Coward

      Would you be angry at J.K. Rowling for stopping someone from putting out a HARRY POTTER series? She has a trademark as well.

      No, I would not, because there wasn't already material published under that name. A quick google search will show that the title "Carnival of Souls" is the title of a Horror movie from 1962, which has had a remake as recently at 1998. It was also used in the title of a KISS album in the mid 90's.

      Doing a little more digging I find a comic published on Amazon for the Kindle called "Jazan Wild's Carnival of Souls", with the TM attributed to both Carnival Comics AND Jazan Wild (one of the authors). A little mor

      • by samazon (2601193)
        Movie and various types of music are NOT covered under the TM he has (16) - which covers written/printed material. I'm sure he can't sue over the Buffy book because of the preface of "Buffy the Vampire Slayer" in the title. I don't think anyone here understands what, precisely, goes into writing a novel, or a series of novels. One of his major issues is that the themes of the new book are the same as the themes he uses, and so is the target audience.
    • by martinX (672498)

      If it's the title of a series, surely the smart thing would have been to disallow a trademark for "Book Title" and allow one for "Author's Name's Book Title". That would have allowed him sufficient coverage, and given other authors the ability to use the same title without confusion.

    • Would you be angry at J.K. Rowling for stopping someone from putting out a HARRY POTTER series?

      No. But I would be angry if she tried to stop somebody putting out review of a Harry Potter book based on the Harry Potter TM.

      What a jerk.

  • by Arancaytar (966377) <arancaytar.ilyaran@gmail.com> on Wednesday September 12, 2012 @07:00AM (#41310709) Homepage

    The headline implies that an author is suing the reviewers of his own book.

  • Carnival of Souls [wizards.com] is surely prior art!

    • Prior art is for patents, not Trademarks.

      Doesn't matter how many people might have drawn a Glowing Arch to look like an M, only MacDonalds can use it as a Trademark once registered, at least in the Fast Food Industry.
      • by aglider (2435074)

        Correct, Cpt. Hook.
        So how can I infringe a traded mark like "Carnival of Souls"?
        I should sell books with that very same title and fairly similar plot. Which was not the case, AFAIK.
        Or I should sell anything with the same mark.

        • by samazon (2601193)
          But see, it is the case. Very same title. Similar plot, from what I got... from reading.. the law suit documents...
  • Needless to say they did not take down the review.

    Unfortunately these days it is not needless to say this...

  • by oheso (898435) on Wednesday September 12, 2012 @07:24AM (#41310797)
    Surely I can't be the first to notice this? HarperCollins couldn't have paid for publicity like this ...
  • I read Carnival of Souls. It was alright, I guess.

    Sue me.

  • http://www.imdb.com/title/tt0055830/ [imdb.com] which is from 1962. It's a terrific film BTW.
  • It's a fantastic book, possibly the best I have never read.

    I just wanted to let you all know that.

    Carnival of Souls...Carnival of Souls...Carnival of Souls.

    Not the shitty one by Jazan Wild, but the GREAT one by Melissa Marr.

    By the way, I have a book coming out titled, "Jazan Wild".

  • by ewhenn (647989)
    Here is a link all of his wares on Amazon. Feel free to review crap on him. Hit the greedy bully fuck where it hurts... the wallet. http://www.amazon.com/JAZAN-WILD/e/B006GFY0LS/ref=ntt_athr_dp_pel_pop_2 [amazon.com]

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