Your Fictional Literary Character: Trademark Cash Cow or Unprotectable Loser?
By: JOHN C. PICKERILL
March 2007
Have you just created the next great fictional character - a Mickey Mouse or Harry Potter who will become a household name and surely make you millions? You might be surprised to find out how difficult it can be to initially protect the name of your new creation from opportunistic “fans” or unscrupulous entrepreneurs.
Under trademark law, a trademark must create an association in the public’s mind with the actual source of a product or service. Generally, the title of a single creative work or the name of a literary character is not protectable as a trademark. A book title is thought to identify a specific literary work rather than create the requisite association in the public’s mind with the source of the book - the publisher, printer, or bookseller. Thus, the title does not function as a source-indicating trademark. Similarly, mere character names are generally denied trademark protection in connection with a work of fiction in which that character appears, because the name merely identifies the main character in the story instead of the book’s source.
Don’t hold off on writing the next Harry Potter novel, but before sending it off to the publisher, finish reading this article.
Obviously, many character names, such as Harry Potter, Indiana Jones, and Mickey Mouse have developed strong trademark protection in connection with a wide variety of goods, so it is possible to protect these properties. You just need a creative trademark strategy.
While a title of a single work does not receive protection, the name of a series of books or other creative works may be protectable if the name serves to identify and distinguish the source of the work instead of just the title. Similarly, a character name can function as trademark if the character name is properly used as a source-indicator in connection with goods that are not the book itself.
The name “Harry Potter” did not immediately receive trademark protection when the first novel came out, because the name referred to a character and a single book title rather than a consistent source of goods. However, once a second book was added to the series under the name “Harry Potter” and/or the owner of the “Harry Potter” property started using the name in some other source-identifying sense, “Harry Potter™” became a protectable trademark.
If you wish to build trademark significance in the name of a book character, plan to create a series of books and begin using the mark prominently as a source identifier from the start. For example, if the name of your title character is “Joe Pat the Sewer Rat,” begin using the name as an identifier for a series of books rather than the name of a single work. Your first book could be titled “The Joe Pat the Sewer Rat™ Book Series: ‘Joe Pat the Sewer Rat and the Legend of the One-Eyed Alligator.’” Such a title will provide you with the best chance of gaining early protection in the character name. In addition, if you market a wide range of goods such as Joe Pat the Sewer Rat™ dolls, calendars, and t-shirts, consumers are likely to believe the products all emanate from a single trademark source, rather than merely refer to the character in a book.
With book titles or character names, there will always be an issue as to whether consumers recognize the term in a trademark sense. As a result, it is very important in these situations to strictly adhere to trademark usage rules to ensure consumers clearly perceive the term as a trademark. Make sure to use the ™ and ® symbols as appropriate, and always use the trademark as an adjective identifying the actual product (i.e., “Joe Pat the Sewer Rat™ action figures”).
With a little creative planning and strategic application of trademark law, you should be able to ride the name of your literary creation to an early retirement. Assuming, of course, you have a good attorney to handle your licensing deals. :-)