While wandering through the “young teen” fiction section of a local bookstore recently, I noticed a series of supernatural fiction books by author Rachel Hawthorne in the same section as the Stephenie Meyer Twilight books (yes, I had to mention Twilight again sometime, didn’t I?) While I haven’t read any of Hawthorne’s books, her Dark Guardian series is apparently centered around teenage girls and werewolves and teen romance so it seems to be aimed at a very similar demographic to Meyer’s books. What struck me, despite the very different cover art for the two series of books, is that if you just looked at the spines of the books on the shelves, all you can see is the titles. And the titles bore distinct similarities.
Meyer’s book series has the following titles: Twilight, New Moon, Eclipse, Breaking Dawn
Hawthorne’s Dark Guardian books are titled as follows: Moonlight, Full Moon, Dark of the Moon, Shadow of the Moon
I was wondering if this might make a good TM hypo. It brings to mind cases like the Barbie Girl song case, Rogers v Grimaldi etc where titles can be protected as TMs, but only to a point.
For infringement, is it possible a consumer (or her harried mother) could confuse Twilight with Moonlight, or Full Moon with New Moon? Could Dark of the Moon confuse consumers looking for a copy of Eclipse? And what about the placement of the books in the same section of the bookstore?
What about dilution? Could this be a case of blurring?
I know Stephenie Meyer obviously doesn’t own the words Twilight, New Moon, Eclipse, and Breaking Dawn and, even if she did, others would be entitled to use similar words to describe their own books. But I must admit that when I came upon Hawthorne’s titles in the bookstore, I did wonder if maybe they were intended as parodies of Meyer’s books and titles. At the very least, I picked up one of the books to see what it was about – so maybe initial interest confusion, anyone? Is Hawthorne engaging in any form of unfair competition or is she just engaging in free speech in choosing the titles for her books?
The issue isn’t Rogers v. Grimaldi (that’s about whether something that’s a trademark can be used in a title). It’s that it’s black-letter trademark law that the title of single works cannot serve as trademarks. The series name, and sometimes the author’s name, can be trademarks, but not single titles.
What about common law marks or unfair competition law?
Presumably, a phrase like “The Twilight Saga” can be registered for Meyer’s book series? If so, could a book titled “Moonlight” with similar themes marketed to a similar demographic infringe or dilute Meyer’s series mark?
<sarcasm> But is there any infringement if even a sophisticated literary analysis cannot distinguish between the products in question, thus turning them into fungible commodities? </sarcasm>
Sadly, this sort of thing goes on all the time in publishing, both of print material and otherwise. There’s a sort of reverse loss of distinctiveness assumed in publishing. As an example that gives away too much about my age, consider the number of prog-rock albums in the early 1970s that adopted a cover design and cover art that was difficult to distinguish from that of Yes (not the originator by any means, but probably the biggest seller, and almost certainly the most-rabid fan base)… and, I have it on good authority, impossible to distinguish in a dimly lit record store while stoned. What made it really amusing was the adoption of this cover meme on a Led Zeppelin album.
I guess the short version of this is that in publishing, reverse passing off and passing off are not viewed as violations.
Jacqui –
Yes, the series title can be protected as a mark, but the name of any one of the books cannot be. Generally speaking, the rule makes sense because there’s no reason to think the name of a single book operates to indicate the source of other books.
There wouldn’t be any kind of unfair competition claim based on the title, but the similarity of the titles could matter if there was a claim along the lines of “the books look too much alike.” Such a claim would probably focus primarily on the book covers, discounted for prominence of author names. But setting aside such a claim, in which similarity of title might be used as a piece of evidence, the answer is yes: another book called “Moonlight” with similar themes could be marketed to a similar audience.
Loved it!!!!!!
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