Michael J. McDonagh

An established writer who recently went to work becoming an author, trying valiantly to make someone give a damn and chronicling the process.

Writer’s Guide to Copyright and Trademark Infringement (Episode 2: Permissive Use and Obscuring brands)

Recap: So far, we’ve covered the fact that brands, characters, songs, poems, stories (in other words, pretty much everything) can be covered by intellectual property protections (in our context it’s usually copyright or trademark protection). That’s the bad news.

The good news is: the fact that something is protected doesn’t mean you can’t mention it or quote it or acknowledge it. You can still use it if you get permission, avoid the problem altogether if you obscure the brand (both of which I’ll cover today). Te fair use exception will be tough to cover in one post, let alone mixing in other ways to avoid problems, so I’m putting that off until next week.

If you take anything from this, understand that the three word responses you see to posts asking, “Can I do this?” on writer message boards probably aren’t sage tidbits of seasoned wisdom (unless they say, “this is complicated” or “be really careful”). My attempt to provide a broad, over-generalized summary of just enough basics to give you an idea how to stay out of trouble is going to take several blog posts.

Let’s start with the easy one: Permission.

It sounds goofy, but it’s not daffy to think you can get permission to use trademarked names or portions of copyrighted materials. [It’s funny because Goofy and Daffy are trademarked by a certain corporation that is closely associated with rodents (their litigious legal department) that also happens to use a rodent as its mascot]. If you think it’s important to your narrative to have all the kids drinking Sundrop soda and eating Little Debbie’s snack cakes, and you portray both of those items in a reasonably favorable light, they may be more than happy to let you. They will probably require that you use an acknowledgement like: “Sundrop® is a registered trademark of Dr Pepper/Seven Up, Inc. © 2013 All Rights Reserved, and is used with the express permission of the rights-holder” or something along those lines.

As I explained in the prior post, IP rights-holders have a legitimate concern about their material being used without permission. If they don’t police it, they can lose the ability to enforce it later. If the use is reasonably limited and you acknowledge the fact that your use is with permission, they may be more than happy to give it to you. The extreme example of this is product placement, where the trademark rights-holder actually pays to have the mark displayed (usually in a movie or television show). It’s a form of advertising – everyone sees Brad Pitt drink Sundrop and then start making out with Angelina Jolie (or vice verse) and suddenly you notice Sundrop in the beverage aisle the next time you’re shopping.

You aren’t likely to get payola for putting Sundrop in your book. You’re probably not even going to get a free Sundrop sun visor. But you may well be able to get permission to use the name by e-mailing their legal department (or even starting with the “contact us” address on the webpage). Bottom line is, it never hurts to ask.

The opposite end of the spectrum is occupied by said rat-infested corporation, which is completely over-the-top paranoid about its intellectual property portfolio. On his recent acquisition, Darth Vader was rumored to comment, “Whoa, dudes, you really need to chill.” I can actually call Disney out by name, for a slew of reasons including the fact that I am writing educational, non-fictional materials for no financial gain. I am voicing opinions and, to the extent I am mixing opinion and fact (the bastards [opinion] threaten to sue daycares for painting Disney characters on their walls [fact]), it is clear where I am doing so.

The fact is, even when writers screw up, they aren’t usually sued for it. The result is usually a letter from the rights-holder’s counsel informing you of the violation. If they aren’t dicks about it, they’ll just ask you to stop. If they are super nice about it, they will even let you sell the merchandise you already have on hand, as long as you don’t print any more with the offending use in or on it. If they are the most super-chill legal department in the universe, they may even send you the nicest cease and desist letter ever:http://brokenpianoforpresident.files.wordpress.com/2012/07/jd-letter-entire-big1.jpg

But you can’t count on getting that letter, nor can you plan your cover art budget around being funded by a whiskey company’s legal department. The odds of being told to destroy your books are exponentially higher than that.

In that example, the name itself wasn’t used, but the cover looked just like a Jack Daniel’s bottle, which is the company’s trade dress. When it comes to cover art, you want to avoid anything that could reasonably confuse someone as to the “source, sponsorship or approval” of your book. That is an area where the mark holders have little room to give, and you will very likely be required to destroy anything that was printed.

[Just by way of full disclosure, one of my close friends is an executive with Brown Forman, the parent company that owns Jack Daniel’s Properties, Inc., which owns those brands. That is not, however, why I think the C&D letter is awesome.]

Next, almost as easy: Obscure the brand.

Let’s face it, if your narrative is so tied to a specific thought someone else had that you can’t write around it, you probably have problems with the story that go beyond intellectual property rights. Nobody wants to read an Ode to Little Debbie. No matter how much you hate WalMart, your WalMart-bashing magnum opus is probably only going to be mildly interesting to the people you were in line with the day of the incident in question. If you named your character Katniss Evergreen years before The Hunger Games showed up in print, but are just now getting around to revising your old novel, the best news I can give you is this:

Get Over It.

Kill your darlings. Change your names. Nothing that specific should impact your narrative arc anyway. This is one of those happy places where my experience practicing law for 20 years and my experience writing and editing fiction both scream the exact same piece of advice. If your hatred of WalMart is such that you can’t carry a story through by calling your behemoth retail villain MegaMart, SuperMart, WeRTehSukMart, or AboutAMillionFuckingOtherThingsMart, the problem with the narrative is not the Walton Family’s intellectual property portfolio.

Most of the time someone can’t just write around this problem, it’s because (whether she wants to admit it or not) the product is either fanfic or a hatchet job. Passing mentions aside (because those are what fair use will boil down to), no brand, song, poem, or book should be so integral to your story that you can’t just change it. If someone finds that she can’t, what that really means is that her story is based too much on another person’s intellectual property to stand on its own merit.

There’s a word for that: Infringement.

I am not saying you necessarily have to write around every mention of a brand or research the USPTO archives every time you refer to a product to see if the name is trademarked. What I’m saying is that you need to know you can. If you got that cease and desist letter, or a directive from an agent or editor to make that change, it should be a question of search and replace, and not a major revision to your story line.

The next post will cover whether you really need to omit all references to specific songs or cars or beer or whisky (spoiler alert, you don’t). That said, as long as you could if you needed to, you should be in relatively good shape.

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