Wednesday, September 12, 2012

Author's "Carnival of Souls" mark takes reviewers on a not-so-fun, and unnecessary, ride

I've spent some time this afternoon reviewing the Complaint in Jazan Ward's claim against HarperCollins over the Carnival of Souls and Enter the Carnival trademarks. And although I'm not sure he'll succeed, it's by no means the craziest thing I've ever seen. As for his complaints against the bloggers, there I'm not so convinced, and it's quite possible he may wish he had never tried anything.

For those of you who don't know what I'm talking about, an author of graphic novels named Jazan Ward has brought a claim against HarperCollins claiming that HarperCollins' new series of novels called Carnival of Souls infringes a trademark he has registered in those same words. Using various legal theories he wants to have HarperCollins change the name of the series and pay him damages for infringing his mark. Recently Ward has also started to send cease and desist (C&D) letters to various book bloggers and other reviewers telling them that they can't review the Carnival of Souls books because by doing so they're promoting a property that infringes his mark.

This claim may sound like it's crazy. It's not. At least not necessarily. And in fact, there's one particular part of the lawsuit that should be very interesting to small developers or indie authors who may find themselves up against a big media enterprise. But going after the reviewers is a different story.


What is a trademark and how do they work?

It may help in looking at this situation to understand what is a trademark. Think of a name like "Halo". That's a trademark owned by Microsoft for its popular video game series. Because they've registered the mark they always write it as "Halo®". What that mark means, to the owner of the mark, is actually "[Text string that represents my video game franchise]". So Microsoft can't, for example, write a slogan like "There's a Halo® around this game" because what that says when Microsoft writes it is "There's a [text string that represents my video game franchise] around this game". To Microsoft, in the context of video games, "Halo" means only one thing: its games.

Bear with me. This is picky but important.

Since to Microsoft the term "Halo" used in the context of video games means only its games, if anyone else uses the term "Halo" and isn't talking about Microsoft's game, Microsoft has to take steps to stop them from doing that. So if Sony launches a game about angels and calls it "Halo" then Microsoft has to sue Sony to make sure that consumers know that the word "Halo" means Microsoft's game and nothing else. That's an obligation under trademark law, and if Microsoft doesn't bring that suit then it risks having a court someday declare that it no longer has the right to have the term "Halo" used for only its games. It's also the reason the ® is there: as a symbol to the world that this isn't just a word, it's a trademark, and you had better not try to steal it for yourself. Trust me: this kind of thing keeps lawyers up nights.

But Microsoft can't go back in time to stop people from calling their games "Halo". Here's what that means: imagine a video game that was launched in 1995 called "Halo" but where the publisher of that game didn't register a trademark on the term "Halo". That game gets to keep being called "Halo", because it came first. But if they launch a sequel today in 2012, that sequel can't be called "Halo" because now Microsoft has its trademark. Put another way: anyone who came before the mark gets a free pass, but anyone who comes after doesn't.

It would have to be that way, otherwise you couldn't get a mark if someone else has ever used the term. Think of the McDonald's slogan "I'm lovin it!" Do you really think that's the first time anyone has ever said that about a meal? But McDonald's was able to register it, which makes sense when you realize that they can't go back in time and claim infringement for anything that came before.

I hope that explanation helps now that I'll start talking about Carnival of Souls.

Ward sets out pretty clearly that he has a registered mark in "Carnival of Souls". He makes an argument that HarperCollins should have done trademark searches before choosing to give their new series that name which I'm not sure I buy, but then he sets out that he actually put them on notice that he had the name trademarked and they used it anyway. I'm not going to get into that; it's a very fact-specific analysis and rapidly becomes very he-said, she-said with lots of discussion about whether Ward met all the relevant technical criteria with respect to registration of the mark and usage of it after registration. But there's a patina of credibility to it.

I'm much more interested in one of his other claims, and in his approach to the bloggers. I'll address them in order.

Reverse confusion

One of Ward's claims against HarperCollins is something called "reverse confusion". This is a very little-known type of suit, but it's important for indie developers and authors to know about. Reverse confusion exists where you have the following set of facts:

  • A little guy launches a property and registers a trademark for it.
  • A big company comes along and uses the same name and starts a massive media campaign around the name.
Here's why this is a problem. On those facts, who do you think is ripping off whom? Do you think the big company is ripping off the little guy? Or the opposite? The natural response is for people to think that the little guy is trying to free-ride off the big company. And people who think that are less likely to buy the little guy's property, even though the little guy did nothing wrong and in fact did everything right. To prevent this, the law says that where the little guy can show these facts, the big company will owe money to the little guy to compensate not just for the infringement but also for the little guy's damaged reputation.

Reverse confusion is an important legal doctrine for small creators. It's one thing that protects you against large companies stealing your ideas and your work. It's not easy to show, because it requires you to demonstrate that people think you're ripping off the big company and that they're not buying your product because of that. But if Ward is able to demonstrate it, he will get compensation.

Attacks on bloggers and reviewers

Now let's look at Ward's attacks on bloggers and reviewers. In the initial posts on this situation, bloggers expressed some pretty strong confusion and hostility toward receiving C&D notices from Ward. He has gone into the comments of various blogs to reply with a standard form response, one of which is linked below.

I can't quite tell whether he's doing this because he thinks that he has to for trademark defense reasons like I described in the Halo example, or because he's trying to minimize the number of reviews that the HarperCollins book gets. But either way, I think his reasoning doesn't quite require him to send C&D notices to bloggers. Why? Because of the reverse confusion lawsuit that he's brought instead.

If he's making a trademark defense: the bloggers aren't adding to the confusion and aren't doing anything independently wrong. They are accurately reporting on a book that today purports to be called "Carnival of Souls". Even if Ward wins his lawsuit, bloggers would be entitled to say "Book X, which used to be called Carnival of Souls". This is permitted under a rule called "referential fair use" which says that even if something is a trademark, if you want to review it you're allowed to call it by name and you're not infringing by using the mark in your review. It comes from a case about New Kids on the Block, who sued someone giving them a bad review by saying the review couldn't use their trademarked name. Nice try.

If this is the argument Ward is using, he's claiming that by associating his Carnival of Souls mark to the HarperCollins book these reviewers are adding to the confusion. Maybe, but today they have no reason to believe they're wrong, so they're entitled to use the name that the book is currently called. Even if the name is subsequently found to be infringing that's not their problem. It's Ward's. And he is suing HarperCollins to get damages to compensate him for this. I can't see why he would need to target the bloggers separately.

If his goal is minimizing reviews: he also might be trying to mitigate his damages. Anyone who sues someone is required to make sure that they don't just sit there and let their losses pile up. If you hire a contractor to fix your pipes and they don't show up and you want to sue them, you still have to go find a new contractor to fix your pipes. Your damages are the difference between what it cost you to pay the new contractor and what you would have paid the old one. I can see a similar argument here: Ward could argue that he's contacting all the bloggers because he's trying to minimize the damage that HarperCollins' infringement is causing, by making sure that bloggers don't contribute to the confusion.

But I don't see the obligation to mitigate as requiring him to go this far. He's required to mitigate his own damages. The bloggers are doing him no damage, though. The damage was caused by HarperCollins, by creating the reverse confusion that led the bloggers to talk about the allegedly-infringing books using the Carnival of Souls name. Again, he's already suing HarperCollins for this.

So the bloggers aren't causing him any independent damage that he would need to mitigate in this way. And if he doesn't win his main lawsuit, then threatening reviewers with litigation if they review a non-infringing book... that's a risky strategy. One that could leave him exposed to a pretty sizable counterclaim from HarperCollins.



This has been a long post but it's a complex issue. I don't know how the main lawsuit is going to end. Ward raises some interesting arguments. But one thing is for sure: picking on reviewers isn't just bad form. It's also not a winning argument. And very possibly a losing one.


LINKS:
Link to Wild's original complaint against HarperCollins:
http://www.nationscourts.com/m6_July/wild.pdf
Post from Digital Reader describing Wild's C&D letters to reviewers and containing long comment from Ward:
http://www.the-digital-reader.com/2012/09/11/author-sues-book-reviewers-over-trademark-infringement/#.UFEYxo1lQ3i
New Kids on the Block v. New America Publishing:
http://scholar.google.com/scholar_case?q=%22new+kids+on+the+block%22&hl=en&as_sdt=2,48&case=14061770079632631584&scilh=0

2 comments:

  1. Nice post. You write about 1700 words on a topic that only interests me peripherally at best, and you totally had my attention throughout.

    Something that might warrant more attention (if this tempest-in-a-teapot issue turns out to have legs -- and how's that for mixing metaphors?) is the issue of how common a "mark" is before the trademark is applied for, and the related question of how likely "confusion" is. To many people, "Carnival of Souls" is instantly recognizable as a classic 1962 horror film -- so why did this schmo get to trademark it for his little comic book?

    ReplyDelete
    Replies
    1. Thanks for reading (especially if the topic didn't interest you!)

      Your question blends two issues, one of which I had meant to get to in the body but it was already a Wall of Text. Trademarks are registered against categories of goods, so there can be multiple owners of the same mark for different goods. Mattel tried to argue once that Barbie is so famous that no one else should get to use it for anything and they lost. So it's totally possible for there to be a "Carnival of Souls" movie and even for that title to be trademarked for movies, but it's still available to be used for books.

      But there's a second question in there which is: what if there were tons of books called "Carnival of Souls"? If there's enough that there would legitimately be confusion between this book and a prior one, or that there are so many prior uses for books that it's just not distinctive enough to mean "[text string that represents only my book]", then he shouldn't get the mark. I'd imagine this will be one of HarperCollins' defenses.

      Delete

Thanks for commenting. Posts and comments aren't legal advice; requests for legal advice in the comment probably won't get answered. Sorry to have to do this but someone someday is going to make me glad I did...