Harper Lee, the typically reclusive 87-year-old author of To Kill a Mockingbird, has made headlines twice over the last year by (1) initiating litigation against her former agent and by (2) filing an application to trademark the title of her famous—and only—published work, at least as the title is used on clothing.
Earlier this month, as I’ve discussed previously on this blog, Ms. Lee settled the lawsuit against her former agent, Samuel L. Pinkus. It was a sad case, if the allegations are true, alleging that Mr. Pinkus breached his fiduciary duties and manipulated Ms. Lee into assigning away the copyright to her classic novel (though still providing her some royalties) by taking advantage of the aging author’s declining health.
As for the second item listed above, even though Ms. Lee applied for a trademark of the phrase “To Kill a Mockingbird” on clothing with the U.S. Patent and Trademark Office just over a year ago, articles on it appeared in many media outlets last week, including in The Monroe Journal and The Huffington Post. The Monroe County Heritage Museum in Monroeville, Alabama, which has for years sold T-shirts and souvenirs with “To Kill a Mockingbird” without paying Ms. Lee, filed its opposition to Ms. Lee’s application on August 19, 2013 (available here; it includes pictures of the designs on the shirts).
If the commenters to the Huffington Post article are any indication, many people believe that Ms. Lee deserves a portion of the revenue generated from T-shirts and other souvenirs with the words “To Kill a Mockingbird” on it.
Lee is one of my literary heroes, and I deeply sympathized with her claims against her former agent, but, this time around, I hope either Lee withdraws the trademark application or the Museum defeats it.
Under U.S. law, a trademark “includes any word, name, symbol, or device … used by a … merchant to identify his goods and distinguish them from those manufactured or sold by others.” 15 U.S.C. § 1127. Going back to at least the 1970s, the Trademark Board has held that designs on garments (other than the mark of the garment manufacturer) could be protected as trademarks if the mark signifies to consumers a relationship to a particular merchant. An example of this was In re Paramount Pictures Corp., 213 U.S.P.Q. 1111 (T.T.A.B.1982), which held that the words “Mork & Mindy” were not merely ornamental on t-shirts because they indicated a secondary source of sponsorship, i.e., the television show Mork & Mindy, rather than the manufacturer of the shirts.
“To Kill A Mockingbird” is a bit more generic than “Mork & Mindy” — sure, we all know it to be the book, but the phrase predates the book and has an independent meaning, as compared to “Mork & Mindy.” However, it seems clear that Harper Lee could, in theory, trademark the phrase “To Kill A Mockingbird” as her own, and then show that the use of the phrase on the Museum’s shirts confuses consumers into thinking that Lee sponsored those shirts.
The big problems for Lee, though, are the issues raised in the Museum’s objection to her filing: that the museum has used this phrase on a variety of clothing goods since 1995, that they have owned the www.tokillamockingbird.com domain and operated a website there since 1998, that Lee has resided in the same county as the Museum her whole life, and that she even came to the Museum in 2008.
Legally speaking, the Museum has strong arguments that (1) Lee “abandoned” the use of the mark with regard to the Museum, the website, and clothing by not using the mark herself and by not objecting to their use and that (2) many consumers actually identify the use of the mark on clothing as pertaining to the Museum rather than to Lee.
Consider the Los Angeles Dodgers (a baseball team for those who don’t know anything about American sports). Prior to 1958, they were the “Brooklyn Dodgers,” then they moved to Los Angeles and didn’t do anything with the name “Brooklyn Dodgers” until 1981, when they started licensing some clothing with “Brooklyn Dodgers” logos. In the late 1980s, a restaurant opened in New York called “The Brooklyn Dodger Sports Bar and Restaurant.” The team sued, claiming trademark infringement, but the federal court held that “[the team’s] failure to utilize the ‘Brooklyn Dodgers’ mark for any significant, commercial trademark use between 1958 and 1981 constituted an abandonment of that mark and dramatically limits the protection to which that mark is entitled since its resumption.” Major League Baseball Properties, Inc. v. Sed Non Olet Denarius, Ltd., 817 F. Supp. 1103 (S.D.N.Y. 1993).
A trademark isn’t like a copyright, which you can sit on forever: trademarks are meant to be used and are limited to the particular goods on which you use them. You can’t just claim a trademark in a new field of commerce over fifty years after you first used the mark and more than a decade after others have started using it in other fields.
Putting aside the legal arguments, frankly, I think it’s rather odd that Lee would so abruptly change her position on the usage of the title of her book on clothing, and I wonder what effect this change of heart may have on her legacy.
As I said in my coverage of the Faulkner Estate’s legal advocacy to narrow the fair use defense to copyright infringement, authors and their estates have to weigh the benefits of short term gains (in royalties and licensing fees) versus the long term gains of cementing their literary prowess for future generations (by encouraging others, like fanfiction writers and even creators of T-shirts and memorabilia, to spread their name).
While Lee isn’t receiving trademark licensing fees for the merchandise sold by the Museum, she probably benefits from the Museum’s dedication to her work. Many museum visitors go there because they’ve already read To Kill a Mockingbird, but others might be encouraged to read or re-read her work (and buy a copy of it) only after they went to the museum or saw one of those T-shirts on someone walking down the street somewhere else. Perhaps the museum will continue to sell To Kill a Mockingbird souvenirs and T-shirts even if they have to pay Ms. Lee a fee, but that probably depends on how much Lee wants for it. If she asks too much, it may chill references to her work, making it more likely that her currently popular book will lose its relevance in the future (an issue I discussed in a previous post, Preventing Literature from “Disappearing Up its own A-hole”).
Apart from the dollars-and-cents aspect, we can’t ignore the larger context here. This isn’t an author barely scraping by who bumps into a fly-by-night company cashing in on her creative work. It’s one of the most famous and well-compensated authors in America challenging her hometown county museum over what is, by this point, their shared history. Lee holds the copyright to her work, but should she really claim ownership over every aspect of culture related to To Kill a Mockingbird?