Comments on: Trademark Dispute Against My Favorite Author

By: Karen O

Karen O — Fri, 20 Jan 2012 20:58:26 +0000

I realize this blog dates to 2009, but in light of the activities on the web on January 18, 2012 related to the SOPA/PIPA legislation, I found this thread interesting. Both beg the question of where does the freedom of one person to voice an opinion or comment about something used in the common vernacular end, and the person who “coined” the phrase or name begin. This is why there are so many law books–everyone has an opposing opinion and can prove it by law.

By: Chiron O'Keefe

Chiron O'Keefe — Thu, 25 Jun 2009 05:32:59 +0000

Thanks so much for responding. I do realize you can’t give out legal advice and I appreciate the advice.

Best,
Chiron

By: Andrew Flusche

Andrew Flusche — Thu, 25 Jun 2009 01:37:16 +0000

@Chrion – Thanks for the comment. Unfortunately, I cannot give out legal advice on the blog. However, I will say that books can usually refer to brands in the story under the doctrine of fair use or “nominative use.” I suggest referring the publisher to a trademark attorney if they are worried about your content.

By: Chiron O'Keefe

Chiron O'Keefe — Wed, 24 Jun 2009 21:38:39 +0000

Great article, and very timely for me. I’ve been contracted by an e-publisher to release my novel. She’s been giving me grief since I reference Winnie-the-Pooh characters. She says I could be sued by Disney. Here is an example of the references.

In one case the character is wearing Tigger pajamas. In other case the character is bantering with another character and says that Pooh bear is a lovely archetype.

Is she right? I’m not selling a book about these characters and it’s a fiction novel. She’s now decided to hold back publication and says I’m using trademarks which could get us sued. I had to change a scene where two characters are meeting in Starbucks because she claimed that was trademark infringement. My husband says she’s completely wrong because I’m not selling any products or linking myself to a product.

From what I read in your post, I think he’s right. Could you clarify for me?

Thanks so much, I really appreciate this.

Best,
Chiron O’Keefe

By: Steven Melendez

Steven Melendez — Wed, 29 Apr 2009 21:51:08 +0000

Actually Andrew, I did just what you didn’t recommend, and for exactly the reason Gayle mentioned, out of sheer disgust at the lawyers outrageous claims toward Leo. I couldn’t help myself, screw the legal ramifications basically. I personally feel that any lawyer who tries to “cease and desist” someone over general ‘talking’ (in the internet sense of talking anyway) should have their degree torn up and be disbarred for stupidity on an enormous level… Then again, I am not a lawyer, just a humble web guy, so what do I know

By: David Cain

David Cain — Tue, 28 Apr 2009 19:57:31 +0000

Right on Andrew, thanks again.

By: Andrew Flusche

Andrew Flusche — Tue, 28 Apr 2009 19:35:49 +0000

@David – Thanks for pointing out your article. Quite a good read! And thanks for the link; I helped out with yours as well.

By: David Cain

David Cain — Tue, 28 Apr 2009 13:53:26 +0000

Hi Andrew,

Good to hear about this from someone with some legal knowledge. I wrote an article about this last night, take a look:

http://www.raptitude.com/2009/04/get-up-stand-up/

I think it’s important to talk about but I can’t claim to know much about what this means legally.

Thanks,

I’ll link your post from mine.

By: Gayle Hurmuses

Gayle Hurmuses — Mon, 27 Apr 2009 19:37:01 +0000

Andrew, regarding your comments to @COD, I disagree, while I would not suggest to anyone that they post the phrase in defiance (as such a suggestion MAY be actionable), it would in fact be brilliantly funny if a groundswell of disgust led to such an occurrence.

I find this sort of attempt to kidnap the language and hold it hostage to be annoying at best and disgusting in general.

By: Andrew Flusche

Andrew Flusche — Mon, 27 Apr 2009 18:57:26 +0000

@Michael – Generally speaking, winning a copyright infringement claim based on a 7-word phrase would be difficult, if not impossible. Many hurdles would have to be overcome, such as the fair use defense.