Harper Lee’s Strange Quest to Trademark “To Kill a Mockingbird” and the Persuasive Opposition to It

TKaMB 123Harper 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?

*Images above show what my copy of the novel looked like at the end of Roof Beam Reader’s To Kill a Mockingbird read-along in July. You can find my thoughts on Lee’s novel here.

[See the updates on Lee’s quest here: To Kill a Mockingbird vs. I Kill the Mockingbird]

26 thoughts on “Harper Lee’s Strange Quest to Trademark “To Kill a Mockingbird” and the Persuasive Opposition to It

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  6. Luanne

    I don’t know about the notion that many people associate the phrase with the museum rather than with the book. I have never heard of the museum, and I bet that most of the world has never heard of it. But a large number of people have heard of the book (which then became the film and the play).

  7. Reblogged this on The Misfortune Of Knowing and commented:

    Harper Lee and the Monroe County Heritage Museum have reached a settlement over Lee’s lawsuit against the Museum for alleged trademark violations. The judge denied the Museum’s motion to dismiss the case, but, as I wrote in the post below, I found the Museum’s opposition to Lee’s allegations very persuasive. The terms of the settlement are undisclosed at this time, but they are presumably in Lee’s favor. I don’t know what the terms are, but it looks like Lee has been permitted to claim ownership over every aspect of culture related to “To Kill a Mockingbird.” Maybe next she’ll sue the state of Alabama for continuing to exist (obviously, a sarcastic comment).

  8. Pingback: Harper Lee’s New Lawsuit (Is Someone Taking Advantage of Her?) | The Misfortune Of Knowing

  9. Pingback: The Tragedy Of Harper Lee Suing Her Hometown Museum | Litigation & Trial Lawyer Blog

  10. I suppose each one of us, when confronted with uncomfortable situations, do allow emotions to overpower us. We need to acknowledge Ms. Lee’s advanced age and the insecurities this brings in, and try and understand some of her actions.

    Great post!

    Shakti

  11. I enjoyed reading about the legal issues surrounding Lee’s application to trademark the title of her book. I don’t know much about this and it’s thought-provoking to read your wonderful post.

  12. Pingback: To Protect a Trademark - IPLJ

    1. That’s interesting. I am not particularly sympathetic to attempts to claim royalties for long-dead authors’ works. I’d guess his books are out of copyright, but trademark might still be an issue. I’ll have to look into it! Thanks!

  13. Jaclyn

    Great post! I agree with your take on the short-sightedness of Lee’s (or her advisors’) campaign against the t-shirts. After all, people who wear them are likely people who loved the book and would try to inspire others to read it – better for book sales. You also made me think – I wonder if all of the t-shirts that Out of Print sells (of which I have several) are based on books in the public domain. I think so, but then I’ve never looked closely.

    On the topic of trademarks, I’d love to hear your take on the Honest Company/Honest Toddler dispute sometime!

    1. Hi Jaclyn! Lee’s recent actions are so strange. It’s out of character (I feel a little odd saying that about a person I don’t actually know!). Considering the allegations she made against Pinkus, I wonder about who is advising her. In that complaint, she alleged that her mental capacities were unaffected by the stroke she suffered, but I wonder about that when she claims to have been so manipulated by her former agent. I don’t know. It’s weird to wake up one day and think, “hey, wait a minute, I’m going to put a stop to something that’s been going on for almost 20 years! How dare they!”

      I hadn’t heard about the Honest Company/Honest Toddler dispute (where have I been?!). I’ll have to think about that one.

  14. It does seem strange that lee would come forward after being such a recluse for a seemingly mute point. She will always be associated with the phrase in the current culture, so why push it ESP if she’s not hard up for money. Good post- really interesting to read.

  15. Thanks for clarifying trademarks and copyright. I can see not violating a trademark, like if the words are written in the same script or logo-like form of the book jacket, but I never really could grasp how words in such short expression, and commonly said by some could be ‘owned’. You see it more and more. I am not sure I understand it in music or art either when it is just a hint of what someone else might have created. I know this is a famous book title, but it can be used in other context too. I just read thegherkinkerfluffle’s comment, and I think I agree with that perspective.

    1. Yes, people will do whatever they can to make money. The problem with too many trademarks and harsh copyright laws is that it chills speech. We shouldn’t need to pay royalties or a licensing fee for short quotes or other references (which advertise the original work)!

  16. I agree with the last paragraph of the gherkinkerfuffle’s comment and guess she’s been badly advised. A pity she just can’t let it go.
    But I have an idea – I’m going to sit on Portelet Common next summer selling ‘Tess’ merchandise 🙂

    1. Yeah, I think she’s been badly advised, too. Not only is this type of action odd for someone who stays out of the public eye, but it’s a little hard to believe she suddenly woke up one day and thought she had to put a stop to something that she’s known about for almost 20 years. It’s possible that her goal isn’t to make more money through licensing fees, but to stop the souvenirs and T-shirts because she thinks they’re tacky and not part of what she wants as her legacy.* Either way, she doesn’t have a strong legal argument after staying silent about the issue for so long. We’ll see what happens with it, though.

      *Not that “Tess” merchandise would be tacky! 😉 I love bookish T-shirts.

  17. I have to say I agree with others who have said that she deserves a share of the profits. The fact is that they wouldn’t be using the phrase if it weren’t associated with her book, so of course the credit of it goes to her. At the same time, I would think Lee would be generous enough to be glad her town’s tourism industry has benefited from her work, even if she is a reclusive individual. Surely there can be some compromise here?

    1. At first blush, it seems reasonable that an author should be able to control the use of their book title on merchandise, but there’s a much deeper context here. Lee wouldn’t have been able to write the story at all if she hadn’t grown up in Monroe County. Even if she had, nobody would have paid attention. Great books go unnoticed all the time: To Kill A Mockingbird was such an immediate success precisely because of the air of authenticity that came with it as a description of contemporary rural Alabama from someone who knew it well. When it came out, TIME magazine said it “teaches the reader an astonishing number of useful truths about little girls and about Southern life,” and The Chicago Sunday Tribune said it was “a novel of strong contemporary national significance.”

      They sell a lot of pictures of Kilimanjaro with snow on it, and tourists in Kings Point seem keenly interested in the green lights at the ends of docks. How much should the Hemingway and Fitzgerald estates get for that? If an author doesn’t want to write a novel around a thin-veiled actual place, they don’t have to; if they choose to do so, they bind their work to that time and place, for better and for worse. Lee’s history and Monroe County’s history have been inextricably intertwined, by Lee’s choice — and the claim now is that she owns every reference to that history? If everyone’s required to pay when they reference something else, then when is she going to start paying Monroe County back its fair share for giving her the setting, the themes, and the marketing pitch for the one and only thing for which she is known?

      Frankly, I refuse to believe Harper Lee woke up one day and said, “hey, that local museum that’s been down the road from me selling t-shirts for almost twenty years owes me.” In my humble opinion, the creator of the ideal lawyer has become a vehicle for less scrupulous members of the profession.

    2. Hi Beth! I hope there is a compromise here. I’m not sure that it’s the money that Lee is after. It’s also possible that she thinks the T-shirts are tacky and shouldn’t be part of her legacy. I do think that view is short-sighted, though. As I said in the post, it’s free advertisement for her. We’ll see what happens!

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