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Trademarking a name from a book

Discussion in 'General Business Forum' started by eteb3, May 22, 2020.

  1. eteb3

    eteb3 UKBF Regular Free Member

    241 42
    Can I trademark a character's name from a book while the book is still in copyright?

    Eg, let's say I wanted to start up as Voldemort Tutoring. Am I breaching Rowling's copyright?

    On the face of it, I'd say yes. But on the other hand it's a very minor part of the copyright work that I'm lifting, and so it may not be covered by copyright restrictions.

    Thanks for any pointers.
     
    Posted: May 22, 2020 By: eteb3 Member since: Jul 18, 2019
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  2. dotcomdude

    dotcomdude UKBF Enthusiast Free Member

    514 105
    Trademark and copyright are completely different things, and copyright doesn’t give ownership of a word.

    So I would say yes, you can apply to trademark the name. Whether you receive any objections is another matter...
     
    Posted: May 22, 2020 By: dotcomdude Member since: Jul 27, 2018
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  3. atmosbob

    atmosbob UKBF Ace Free Member

    4,464 1,053
    I would be very surprised if J K Rowling does not have the name trademarked.

    A friend trademarked a subtitle of a book he wrote and retired on the proceeds when Penguin copied it.
     
    Posted: May 22, 2020 By: atmosbob Member since: Oct 26, 2009
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  4. sarky

    sarky UKBF Regular Free Member

    164 41
    Society of Authors has a blog about this: https://www.societyofauthors.org/Ne...er-2017/Before-You-Sign-Rights-and-Characters

    Particular interest for you is "[the publisher] may also have relied on the law of passing off, which is intended to stop someone trading on another’s reputation. Passing off applies if someone is confused into thinking that the new goods were designed or licensed by the original creator. "
     
    Posted: May 22, 2020 By: sarky Member since: Jul 7, 2010
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  5. NickGrogan

    NickGrogan UKBF Ace Full Member

    2,567 615
    Shouldn't be a problem from a copyright point of view, as long as you are not looking to benefit from JK Rowlings workings in any way. Voldemort Tutoring wouldn't pass this test, with Voldemort being a teacher. Changing the spelling can help - worked for Duran Duran. Voldemort industrial bearings, less of a problem.

    But if you use a name like Voldemort, you are going to make SEO almost impossible. There are too many pages dedicated to the movie, covering almost every keyword that you'll have to beat to get anywhere on Google.
     
    Posted: May 22, 2020 By: NickGrogan Member since: Nov 15, 2012
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  6. Scottishgifts4u

    Scottishgifts4u UKBF Contributor Free Member

    99 33
    Now that’s something that would never even have occurred to me.
     
    Posted: May 23, 2020 By: Scottishgifts4u Member since: Jul 6, 2017
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  7. The Byre

    The Byre UKBF Legend Full Member

    10,354 4,334
    No, but Warner Brothers Entertainment (or the parent company AT&T) would descend upon you from a great height for passing off if you even went within a mile of that name, or any other name within the Potter books. And that would be with or without being able to register a trademark.

    Their legal division in London has about 20 solicitors aided by about another 100 paralegals and secretaries whose job is to stop people like you trading on their IP.

    The same applies to any and every well-known fictional character, especially if a giant company has blown a few hundred million to make a movie featuring that name.
     
    Posted: May 23, 2020 By: The Byre Member since: Aug 13, 2013
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  8. eteb3

    eteb3 UKBF Regular Free Member

    241 42
    Thanks all for your replies: very useful, so I'll can the Voldemort idea.

    Another TM question coming up...
     
    Posted: Jun 14, 2020 By: eteb3 Member since: Jul 18, 2019
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  9. NickGrogan

    NickGrogan UKBF Ace Full Member

    2,567 615
    Now showing on the first page of google :)
     
    Posted: Jun 15, 2020 By: NickGrogan Member since: Nov 15, 2012
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  10. gpietersz

    gpietersz UKBF Ace Full Member

    1,575 392
    Posted: Jun 15, 2020 By: gpietersz Member since: Sep 10, 2019
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  11. ExoPaul

    ExoPaul UKBF Contributor Free Member

    91 35
    I would imagine it is harder with Voldermort in that JK Rowling created the name. You could use the name Harry for example, because Harry is a name used by many, but Voldermort is almost an invention rather than a generic name.

    There is an interesting thing like this currently happening based on Mickey Mouse.

    Basically the 95 year term for created works, that applies to Mickey Mouse, expires in 2023. This will mean that Mickey Mouse will enter the public domain and can be used by anyone.
    So far so good, we can all make money using Mickey Mouse yeah? Well no....

    Because it is not the character that expires, but the piece of art that was used during Mickey's first ever introduction to the world. So your Mickey Mouse has to look identical the original drawing of Mickey in 1923, which is a lot different to the current Mickey Mouse you now see at the gates of Disneyland. And because the newer version of Mickey is covered by its own 95 year copyright, that newer version will take another 60 years to be available to use.

    But you can use his name right? Well you could, if it was copyright, but it is not, instead it is Trademarked and that involves a different battle that is not under the copyright law.

    Okay, so we can sell copies the old cartoon version of Mickey Mouse yeah? Well actually yes, and no. You can sell it, but it has to be the original 1923, unedited, un-improved version. You cannot sell the enhanced version, or any edit version of the cartoon as they are classed as modified (and therefore new versions of) works of art and come with their own 95 year copyright expiry from the date of creation.

    So it can be in colour rather than the black and white version? No, because the black and white version is the original that is out of copyright and any colour version is a newer works still under copyright law for more years yet.

    So what can we actually do with this? Well, not a lot really. You could build a restaurant and have the picture of the old 1923 Mickey Mouse called "World Famous Mouse" on the menu and logo. You could, if you are lucky find an original copy of the movie from 1923 (not a newer version of the old movie), and try and sell it, but with a different name as the title.

    So while it may seem odd that Disney is allowing Mickey Mouse to enter the public domain when it makes them so much money and is the core of their brand, the reality is that the original copyright from 1923 is no longer needed and probably makes little to no commercial money for them now, whereas the newer version they currently use has a 95 year protection (from when the artist published the updated model) and they can apply to protect it again when it runs out.
     
    Posted: Jun 16, 2020 By: ExoPaul Member since: May 26, 2018
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  12. eteb3

    eteb3 UKBF Regular Free Member

    241 42
    Someone I know lobbied for libraries on copyright for a couple of decades.

    He reckoned every time Mickey Mouse nears the end of his copyright period, Disney lobbies Congress for an extension to the copyright period - for everyone. Wikipedia offers some support on that:

    https://en.wikipedia.org/wiki/Histo...xtension_of_U.S._copyright_term_over_time.svg

    Let's watch what happens in 2023!

    All your points about adaptations constituting a new work are interesting - hadn't considered.
     
    Posted: Jun 18, 2020 By: eteb3 Member since: Jul 18, 2019
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  13. ExoPaul

    ExoPaul UKBF Contributor Free Member

    91 35

    I think the belief is that Disney are going to let it slide this time around due to the fact that the money to be earned from the original is not going to be anywhere near the cost of fighting it. And as I said, they have so many other copyrights on newer adaptations of it that last for years, including the more updated version of Mickey, that they would probably choose to put pressure on extending that copyright rather than one from almost 100 years ago that is only used for nostalgic history rather than commercial reasons.

    I believe, but don't quote me, that DC Comics had something similar with Superman, where people can use the original Superman badge is public domain but because they have updated it for different movies and comic books with so many variations, all the more recognisable forms of it still have copyright, and with the name trademarked, it is almost worthless to anyone wanting to make money out of the original design. Yes, you could sell T-shirts with the badge on it but the money made from the sale of an outdated design people are not familiar with on mass, especially younger generations, is hardly worth DC fighting by extending copyright.
     
    Posted: Jun 18, 2020 By: ExoPaul Member since: May 26, 2018
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  14. The Byre

    The Byre UKBF Legend Full Member

    10,354 4,334
    Anyone in the music biz knows all about updating!
     
    Posted: Jun 18, 2020 By: The Byre Member since: Aug 13, 2013
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  15. gpietersz

    gpietersz UKBF Ace Full Member

    1,575 392
    They do, and the US and EU have been using international treaties to make life + 70 the global minimum (it used to be life +50 here).

    That is a long time. It means some books that were written when Queen Victoria was on the throne (e.g. some of Shaw's early works) are still in copyright!

    I think the theory is that when someone sits down to write a book or whatever the might be put off if their great grand-children might not get royalties from it.
     
    Posted: Jun 18, 2020 By: gpietersz Member since: Sep 10, 2019
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  16. atmosbob

    atmosbob UKBF Ace Free Member

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    The truth is more mundane. Germany lobbied for an extension from 50 to 70 years as an aid to publishers keeping German books in print. This was adapted by all the countries of the Berne Convention bar the USA. The US has a policy of not appearing to follow other countries but was starting to fall behind. Mickey Mouse was used as a smokescreen.
     
    Posted: Jun 19, 2020 By: atmosbob Member since: Oct 26, 2009
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  17. gpietersz

    gpietersz UKBF Ace Full Member

    1,575 392
    The UK and some other European countries had life + 50 until an EU directive required a minimum of Life + 70, and Australia and Canada still do, although the latter are now likely to be to extended as part of the terms of trade treaties.

    The EU directive was interesting because it was supposed to harmonise copyright terms, but ,on top of harmonising upwards it allowed longer terms than Life + 70 (so copyrights still expire at different times in different EU countries). For example, France has extended copyrights on pre-WW2 works and the UK has at least two works with perpetual copyright (although the legal term for one is not "copyright" it comes to the same thing).
     
    Posted: Jun 19, 2020 By: gpietersz Member since: Sep 10, 2019
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  18. atmosbob

    atmosbob UKBF Ace Free Member

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    This suggests that there is some omnipotent official in the EU issuing directives in a vaccuum. What I stated about German debates over helping keep books in print was joined by other minor language countries joining in the debate. It was well discussed for several years and agreed before any EU directive.
     
    Posted: Jun 19, 2020 By: atmosbob Member since: Oct 26, 2009
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  19. gpietersz

    gpietersz UKBF Ace Full Member

    1,575 392
    Not what I meant - I was responding specifically to what I quoted to point out that not all Berne conventions countries other than the US adopted life +70.

    Germany may been the main promoter of life + 70 in the EU, but the US (and continues to be) was in the rest of the world.

    The reason you give makes it somewhat ironic, because in the age of ebooks and print on demand the effect of extending copyright is to make books less widely distributed.

    Doubly so when Germany is pushing it because there is a strong case (there is a book on the topic by an economist - I forget the names of both) that one of Germany's economic advantages historically (18th/19th centuries) was its weak copyright laws (so textbooks were cheaper, so the population because better educated).
     
    Posted: Jun 19, 2020 By: gpietersz Member since: Sep 10, 2019
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  20. atmosbob

    atmosbob UKBF Ace Free Member

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    The submissions and debate went on for years but started in the pre ebook era.

    It still is a very real problem with minority language countries. The majority of university courses in Europe can be taken in English. Finding a Norwegian hardback textbook is almost impossible.
     
    Posted: Jun 19, 2020 By: atmosbob Member since: Oct 26, 2009
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