In Which I Review My Own Book For Potential Legal Issues.
So, first, to get it over with: I wrote a book. It’s called My Mother Had Me Tested! and it’s a collection of funny mad science/geek-related short stories. Please have a look. If you think you might enjoy it, please read the free sample. If you still think you might enjoy it, please buy it. Here’s the link: http://amzn.com/B00WFV3YZU
Now that the plug is done – and I would never suggest that you should buy my book to make the rest of this post easier to follow, no way, not for a minute – I’m going to go over some of the potential legal issues involved with the publication of my book, My Mother Had Me Tested!. (Okay, I’ll stop now. From here on out it’s just MMHMT, and no more links. Promise. 🙂 )
Also, please keep in mind that nothing in this post is intended to be legal advice. I am reviewing my own work and pointing out generally interesting issues regarding it. My goal is not to provide specific answers to legal questions, but show examples of how one might approach these issues, and help you to be more aware of the potential for liability which your own creative endeavors might create. Always consult an attorney licensed in your jurisdiction and familiar with the relevant law *ahem* before making legal decisions.
On with the review!
ISSUE ONE: COVER ELEMENTS
This one’s easy. I licensed the cover illustration from an online stock photo company called CanStockPhoto. They have a required copyright disclaimer: I included it. The font I used I found online and, after review, I decided that my usage of it for this purpose was acceptable. (Digital font files, by the way, can be copyrighted. Generally speaking, type itself cannot.) There’s no visible person, actual or not, so I don’t have to worry about a likeness release. (More about use of likeness below.) If there were, I’d need one or need to make sure the person I licensed the photo from had one. Stock Photo sites usually make this clear – if it’s marked “editorial,” you probably shouldn’t use it for commercial purposes. If it’s not, it’s probably released, but you should still check. If you commission a cover photo or illustration, make sure your artist provides a likeness release as well as a copyright license if necessary.
Finally, I made the cover myself, so I didn’t have to worry about the copyright on the assembled elements. If I’d had an artist do it for me, I’d have needed a copyright license, but I didn’t, so I didn’t. Next question!
ISSUE TWO: USE OF THE PHRASE “MY MOTHER HAD ME TESTED.”
The title itself was, and I’m going to take off my lawyer hat and put on my My-God-what-are-you-doing-you-insane-client hat and just say it, inspired by a long-running gag on the CBS television show The Big Bang Theory. Dr. Sheldon Cooper, a character on the show who has some… issues… responds to any accusation or implication that he’s insane by saying, “I’m not crazy. My mother had me tested!” (Eventually we meet Sheldon’s mother, who confirms this, but adds that she wishes she had spent the additional money to find out what was wrong with him.) So, do I need to fear the wrath of Chuck Lorre?
Well, I think it’s obvious we should all fear the wrath of Chuck Lorre. But in this particular case, I don’t think I need to fear the wrath of the lawyers of Chuck Lorre. The title line is actually spoken in the book by a person who, other than being rather irascible and extremely intelligent, is nothing like Dr. Cooper. It’s generally relevant to one of the themes of the book, which is that “mad” scientists aren’t necessarily actually crazy. There’s no direct or (other) implied reference to TBBT.
With regard to trademarks and/or association, tarnishing or endorsement, “My Mother Had Me Tested” is not a registered trademark (yes, I looked) nor, in my opinion, could it be registered or otherwise claimed as a trademark or service mark by TBBT in such a way as to prevent its use as a title. Generally speaking, titles can’t be trademarked, and the use of a trademark in a title which isn’t likely to confuse the public is permitted. It is immediately apparent upon review of the description of the goods that they have nothing to do with TBBT. Given the lack of any other connection or reference to TBBT, a claim that the usage was tarnishing (more on tarnishing below, but tarnishing would require the phrase to be a trademark in the first place, which it isn’t) or implied association or endorsement would, in my opinion, likewise fail. There’s just not enough there there.
I should say that I am a fan of TBBT, and I am not looking for a fight. While don’t think they’ll care, if they were to contact me, I would be perfectly fine with putting a disclaimer on the book description that said, “Not associated with The Big Bang Theory,” or whatever reasonable disclaimer they might request. I don’t think it’s necessary, so I didn’t put one on there. If they asked, I would do it as a courtesy. If I were representing an author in a similar situation, that’s how I’d suggest we respond.
With regard to copyright, a single five-word sentence could theoretically be copyrighted, but in my opinion and given the relevant context, any claim of copyright by TBBT in that five-word sentence would fail. While I think that if it were copyrighted, this would unarguably be a Fair Use, we don’t go there. In and of itself, “My mother had me tested.” is not a particularly novel or creative work. (There is, for just one example, a similar running gag in the writings of famed outdoor humorist Pat McManus.) It is an element, if an important element, in a much larger copyrighted work (namely one or more TBBT scripts) and when removed from it, is not itself sufficiently original to warrant the protection of a copyright.
ISSUE THREE: REFERENCE TO TRADEMARKED GOODS
In one scene, there is a reference to “The Clapper,” which is a gizmo that allows you to switch electrical devices on and off by clapping your hands. “Clapper” is a registered trademark (USPTO Reg. No 1428261) used to identify acoustically operated switches. Just to make things fun, it’s not a particularly flattering reference (a character refers to it in his head as “infomercial junk.”)
The first point of analysis here is that the book is not an acoustically operated switch, nor is it an advertisement for acoustically operated switches. There is zero likelihood of confusion here. The reference is properly structured: it’s capitalized, and does not genericize the mark. I didn’t include the ® symbol, but in my opinion, it was not necessary, because I am not trying to put people on notice that the mark is registered and protectable since my use of it is not related to the actual goods nor a commercial usage. So far as straight trademark infringement, I’m good.
Similarly, there is no question of association or endorsement – in other words, I’m not saying or implying that this is an approved usage, or that the people who make the Clapper endorse my book. There’s just nothing there that would make a reasonable person think either of those things were true. This will usually be true of such usages, but when in doubt, talk to an intellectual property attorney.
There is, however, the issue of “tarnishing.” Tarnishing is a legal concept where the holder of a mark claims that a usage, even if not directly infringing, diminishes the value of the mark or otherwise unfairly benefits the unauthorized user to the detriment of the holder of the mark. To be entitled to “tarnishing” protection, a mark must usually be a “famous” mark – I’m assuming arguendo that “Clapper” is a famous mark. If you want to use a trademark because of its cultural associations, that’s actually a reasonable indication that the mark may be famous, because otherwise the reference wouldn’t work. So beware!
In any event, in this case, the Clapper is already the subject of innumerable cultural references very similar to the one I made. Calling it “infomercial junk” might be pushing it a little, but not only is it in my opinion in line with the general cultural perception of the device, it’s protected opinion. And since there is no likelihood of confusion, nor is it unclear to a reasonable person that this is an opinion, the First Amendment would be, in my opinion, a complete defense to any accusation that the usage was tarnishing. Again, when in doubt, talk to an intellectual property attorney.
ISSUE FOUR: REFERENCE TO TRADEMARKED SERVICES
At several points in the book a character refers to Google, the well-known Internet search engine, and to Craigslist, the well-known Internet listing site for goods and services. The references, however, are entirely factual, and properly structured (the names of the services are capitalized, and it is clear that they are specific services, not generic references.) The holders of the marks, in my opinion, simply have no basis for complaint. In my opinion there’s no likelihood of confusion, and the usages are not damaging to the uniqueness of the marks, nor do they tarnish the marks or the underlying services. And that’s really just about that.
ISSUE FIVE: REFERENCE TO ACTUAL PERSON “FRED ROGERS”
Without getting into the actual circumstances (Buy the book and fi… no, I promised I wouldn’t do that again.) one of the characters in one of the stories appears to be Mr. (Fred) Rogers, the beloved children’s television personality. Uh-oh. Now I’ve done it. Or have I?
Not so much, it turns out. The very first thing that the character does is say that he’s not Mr. Rogers (and then explain why he looks like Mr. Rogers.) Which is good, because he’s going to do something very un-Mr.-Rogers-like. But still. What are the potential issues here? (Note: It is entirely possible for a person to trademark their name and/or likeness. I’m not going to do another review of potential trademark issues but it is a factor which must also be considered when doing this kind of analysis.)
First, there’s the basic issue of using Mr. Rogers’ name, which is part of his “likeness.” Using someone else’s likeness may be a violation of their Right of Publicity, which in the US is a state-level right. My own state, Illinois, has one of the strictest ROP statutes in the country. (765 ILCS 1075, and yes I do have that memorized. Just to keep lawyers on their toes, Illinois’ act refers to “identity,” of which “likeness” is a part, but it is more typical to refer to “likeness.”) However, courts have ruled that state ROP statutes are subordinate to the First Amendment of the US Constitution, subject to the usual limitations on defamation and commercial speech. Since this is clearly an artistic usage, it’s very unlikely a court would find it subject to the Right of Publicity.
But wait. This Mr. Rogers is going to do something bad. Really bad. Is this defamatory? Have I libelslandered Mr. Rogers? No, because the character clearly identifies himself as not Mr. Rogers. No reasonable person would believe that the work is stating or implying that the actual Mr. Rogers would do this and/or agree with its being done. And, reading the work as a whole, contextually, it’s clear that this isn’t merely “plausibly deniable,” it’s abundantly clear to any reasonable person that the character has nothing to do with Mr. Rogers other than his outward appearance. Basically, he’s wearing a really, really good Mr. Rogers mask. Arguing that this is somehow defamatory to or associated with the real Mr. Rogers is like saying somebody wearing a Bill Clinton mask while he robs a bank is defaming or attempting to frame Bill Clinton for the robbery.
Behind all of this, of course, is the fact that the actual Mr. Rogers passed away in 2003. In general, it’s not possible to defame a dead person. So even if the use were defamatory (which it isn’t) I’d have that defense as well. However, in many states, the Right of Publicity does survive and is an asset of the person’s estate for quite some time after their deaths. So just because a person is dead, don’t think for a minute that you can automatically use their likeness in whatever way you wish.
ISSUE SIX: REFERENCE TO ACTUAL PERSON “SIR EDMUND HILLARY”
At one point, something is described as being “high enough to impress Sir Edmund Hillary.” Sir Edmund is of course the famed mountaineer who along with Sherpa Tenzing Norgay was the first to reach the summit of Mount Everest. The analysis is largely the same – the usage is brief and doesn’t state or imply any association or endorsement, merely makes a common cultural reference. The use of the name is clearly artistically relevant and therefore any claim of infringement of the right of publicity would similarly likewise fail.
Note that it’s theoretically possible that if the “high” reference had been to intoxication of some kind, that this could be a sufficiently unflattering usage as to cause a problem. It would still be tricky to overcome the cultural/artistic reference issue, which would lead to protection from the First Amendment, but it might at least form a good-faith basis for complaint. Basically, don’t use real people’s names or likenesses in association with illicit or immoral activities unless they’re already known to be associated with such activities, even if you’re not implying that they are in fact participating in or associated with such activities.
ISSUE SEVEN: INDIRECT REFERENCE TO AN ACTUAL PERSON NOT SPECIFICALLY NAMED
One of the characters in one of the stories has a name which, while not the same as his actual name, is a reasonably straightforward manipulation of the name of an actual living person. And, re-donning my crazy-client hat, I’ll admit here and now that I did this on purpose because I needed a name for the character and I thought naming him after my friend would be cool. Could this get me in trouble?
Well, first and foremost, the actual living person is a friend of mine, who I am reasonably sure will not care (hopefully, he will be flattered.) Given that people have paid large sums of money for the right to “be” a character in a book who is killed in a gruesome fashion, it should be obvious that the most important thing is that you make their appearance in a context they will find flattering or at least entertaining. If they aren’t mad, they won’t sue you. As long as I didn’t make him a puppy-kicking child molester (or vice versa) I don’t think my friend would care anyway, but it so happens that the use is very flattering.
Also, while the name is somewhat similar, the person in the story doesn’t have that much in common with my friend. If it wasn’t for me admitting it (which I wouldn’t do if I were worried) no reasonable person would think that the character was in any way intended to describe him personally. If a reasonable person wouldn’t make the association, then there can be no claim of endorsement/association/infringement of the right of publicity or defamation.
One thing one often sees authors comment on is that bad people in their stories are named after people who bullied them, or who were jerks to them, etc. While I’ve done this myself, it’s something to take some care with. If the name is a common one, and the character is not reasonably similar to the actual person, there’s no issue with this. However, if you just take a real person and “transplant” them into your story, same name, same appearance, etc, then you have a potential defamation issue. Use a little common sense, and when in doubt, talk to a friendly *ahem* attorney about it if you really want to do it.
So there you have it – seven issues (and I could have come up with more) that needed legal review just from one book of five short stories! While every artistic work is different, I hope this will inspire you to consider such issues more carefully in your own creative endeavors. Or at least make you more sympathetic to the poor author who also happens to be a lawyer.
Thanks for reading!