To Poach a Mockingbird: Harper Lee’s Trade-mark Battle

So much for southern hospitality. Celebrated American author Harper Lee finds herself embroiled in a trademark clash for the right to register the title of her own 1961 Pulitzer-winning novel, To Kill a Mockingbird.

Specifically, Lee is in a legal battle with the Monroe County Heritage Museum in Alabama; a non-profit that has maintained a long-standing exhibit dedicated to Lee and her novel, whilst also selling merchandise tied to the novel in its gift shop.

Why is Lee Fighting for Her Own Book Title? 

On September 12, 2012, Lee filed an “intent to use” trade-mark registration for the title of her literary work. Based on Lee’s filing with the United States Patent and Trademark Office, the trade-mark would be used for “clothing for men, women and children, namely T-shirts, hats, jackets.” Per procedure, the trade-mark was published for opposition, following the initial application. Opposition is a process that allows any party that believes it may be damaged by the pending trade-mark registration to contest the filing. It would seem unlikely that any party could contest Lee’s claim to an original title to her own novel which, in itself, is an entirely fictional account set in a fictional town in Alabama. However, during the opposition stage, the Monroe County Heritage Museum made itself known by doing exactly that. The opposition filing against Lee’s registration occurred on August 19, 2013.  Essentially, the Monroe County Heritage Museum asserts that it has a better claim to the mark because it has been using it since 1995, that customers associate the brand with the museum, and that Lee’s registration and usage to produce her own merchandise would damage the “distinctiveness, uniqueness, effectiveness and prestigious connotations” of the museum’s brand and merchandise.

Trademark, Copyright, or Door #3?

Why can’t Lee just register or copyright the book title? Per U.S. trade-mark law, under the Lanham (Trademark) Act, titles of literary works in themselves may not be registered as a trade-mark unless they are in a series, such as the “Chicken Soup for the Soul” collection or the “For Dummies” do-it-yourself books. Lee had no recourse under U.S. copyright law either, because the United States Copyright Office does not consider book titles to be intellectual property. As set out in 17 USC § 102, copyright law does not extend protection to “idea, procedure, process, system, method of operation, concept, principle, or discovery” per se. Circular 34 published by the U.S. Copyright Office further explains the limitations of copyright protection with respect to names, titles and short phrases. As such, Lee could neither copyright the title nor register a trade-mark, as the novel is not part of a series, but in fact, the sole creative work published by Lee in her lifetime.

To add to the author’s legal woes, until a few days ago, the 87-year-old Lee was involved in a separate copyright lawsuit against her former literary agent and other named defendants for allegedly depriving her of book royalties. The case was dismissed.

Would Lee Have Better Luck in Canada?

Perhaps a few years ago. In Canada, owners of intellectual property may register a book title as a trade-mark only if the mark is not “clearly descriptive” per s 12(1)(b) of the Trade-marks Act, meaning that the mark must convey something more than subject matter or content.  As such, one may argue that To Kill a Mockingbird, as a book title deeply entrenched in symbolism and metaphor, surpasses the “clearly descriptive” threshold because one would have little idea of the book’s content or subject matter from the title alone. However, in Drolet v Stiftung Gralsbotchaft (2009 FC 17), the Federal Court, by denying the defendants relief on an alleged trade-mark infringement relating to the title of a book, appears to have set a high threshold for deeming a book title to be not “clearly descriptive” so as to convey subject matter or content. Indeed, Justice de Montigny opined that the title of a literary work is “inherently descriptive,” which begs the question of whether any other case involving book titles may be able to surpass the content or subject matter threshold in s 12(1)(b), or whether Canadian trade-mark law has effectively aligned itself with legislation in other common law jurisdictions by shutting out legal protection for book titles.

In this matter, Lee may be in need of her own Atticus Finch to set things right.

Ying Cheng is an IPilogue Editor and is in the BCL/LLB program at the McGill Faculty of Law in Montreal, Canada.

Editor’s Note (25/09/13): The last paragraph, under the heading “Would Lee Have Better Luck in Canada” was updated to correct a mischaracterization of s.12(1)(b) of the Trade-Mark Act.