Author Threatens to Sue Book Reviewers over Trademark Infringement

For those who have not read The Onion today, I have your daily dose of crazy all ready for you.

Jazan Wild, a comics creator who is most well known for suing NBC in 2010 for $60 million over copyright infringement, is now pursuing a different lawsuit against HarperCollins. Wild is claiming that one recent HC title, Carnival of Souls by Melissa Marr, infringes upon his trademark.

Not copyright – trademark.

Wild is claiming that HarperCollins is using the trademarked phrase as the title of a book to intentionally confuse readers into thinking that a fantasy novel which was published last week was related to a comics series which Wild had published in 2006.

Crazy, right?  Any sane person would have put a few minutes thought into the matter and realized that such an obvious phrase as Carnival of Souls would likely have been used as a title many times before. In fact, Bookfinder turned up at least a couple dozen different books, movies, TV episodes, and more – some of which dates back to 1962. And if you look inside books, Google says that it found the phrase no less than 5600 times (with some duplication, obviously).

But that’s not the end of the craziness. No, it’s with the book reviewers that the crazy truly begins.

Wild is now sending cease and desist letters to any book reviewer who has mentioned or posted an excerpt from the new novel. He’s accusing them of trademark infringement.

The Bookalicious blog posted a copy of an email they got from Wild today. This blog posted a review of the new novel, not an excerpt, and Wild is freaking out over the fact that they mention the title of the book:

To whom it may concern,

This is a cease and desist. “Carnival Of Souls” is a trademark owned by Jazan Wild and Wild alone has the exclusive right on the United States of America to use the mark in classes 16 and 41 of which a novel is included. Posting a chapter from a novel using this mark is a willful and malicious infringement of Wild’s mark. Please remove.

The Trademark Infringement:
http://bookalicious.org/2012/09/review-carnival-of-souls-by-melissa-marr/

The guy also shows up in the comments thread following that notice to continue the craziness. For a raving lunatic he is quite a nice person.

I probably don’t have to say this but:

Authors, don’t be this guy. First, don’t file frivolous nonsensical lawsuits but most importantly don’t threaten book bloggers. One threat sent to one blog and everyone is going to know about it. The book community is large but juicy stories like this will spread fast.

In the past I’ve pointed to the Lendink lynch mob as an example of how not to react to piracy, and one of my recommendations was to figure out who to ask for advice.  I’ve already pointed out a couple law blogs, so let me add a third source.  Dear Author is a book review blog run by a lawyer, Jane Litte. In addition to the book reviews each week she posts on a legal topic relevant to authors. I’m going to pass this along to her and see if she thinks it’s worth explaining just how crazy this guy is.

via Bookalicious

image by mlcastle

40 thoughts on “Author Threatens to Sue Book Reviewers over Trademark Infringement

    1. At least he didn’t try to register the letter “e” as a trademark, something that occurred to me as a student, in a haze of illicit fumes, and seemed a good plan at the time. So he’s not completely crazy.

      1. This is a cease and desist. It has been noted that you use the letter “e” in your comment, and this letter is a trademark owned by Eeee, and Eeee alone has the exclusive right in the Universe to use this letter. Posting a comment using this mark is a willful and malicious infringement of Eeee’s mark. Please remove.

    2. Trademarking a title? That’s not crazy at all. Disney would eat your lunch if you tried to use, say “Finding Nemo” for just about anything.

      Titles are frequently part of trademark brands and trade dress.

      HarperCollins *seriously* screwed up here and I fully expect them to get taught a harsh lesson by the court.

        1. I certainly hope the IP holders to the two movies called CARNIVAL OF SOULS, not to mention the band Carnival of Souls and indeed KISS, which had an album called CARNIVAL OF SOULS, will get into the mix on this!

          1. I know you are being silly, but trademarks apply to fairly specific markets. There are only two live Carnivals Of Souls trademarks (both owned by Jazan Wild), but they are not in the field of movies or music.

  1. Sounds like the time the Pebble Beach Company claimed that selling any image of the famous Lone Cypress, be it a photo, painting, sculpture, or whatever, was a trademark infringement since the company also used an abstract version of the natural landmark as their company logo. Their lawyers managed to intimidate a lot of local artists for several years.

    1. We just received a Cease and Desist letter from the Pebble Beach Company because they think our online store that sells radio-control planes and cars is deluting their brand and confusing consumers. I guess they forget that Pebble Beach is the name of a cove, which is where they got it from in the first place.

  2. This story was worth reading just for the line: “For a raving lunatic he is quite a nice person.” :)

    But seriously, this is why we can’t have nice things, or at the least why we can’t have reasonable copyright and trademark laws.

  3. The thing is, Trademarks are… weird.
    They don’t necessarily be original, or unique, or special. They *have* to be defended from even otherwise harmless use or be considered abandoned and void…
    The Movie Starman? Look in the credits and you’ll find they had to get clearance from DC COMICS to use that title.
    For that matter, DC COMICS controls (owns, I think) the classic 40’s CAPTAIN MARVEL yet they can’t publish a title with that name because MARVEL COMICS trademarked the term in the 60s while Fawcett owned the character. And SUPERHERO? The two *share* the copyright so, nobody can actually call their superheroes superheroes without either of the two’s consent.
    So, don’t be so sure this author is in the wrong.
    Not legally.

    1. Do you think they’re going to win a lawuit against HC? If not, then there is little reason to pursue the book bloggers. Those could always be dealt with after the successful *snicker* lawsuit.

      1. Dunno if he even *has* a case.
        That’s for the courts to decide.
        But if he had it, going after the reviewers would be necessary.
        Reviews are a form of product advertising, after all. Letting them refer to the “infringing” use without challenge could be seen as acquiescence.
        Trademark law is weird.
        Theoretically, HC deep pockets aren’t supposed to matter but historically, plenty of companies just drag procedings until the little guy runs out of cash.
        And then there’s the CISCO iPhone precedent, so maybe he wants to be bought off.

        1. It’s not that weird. It’s pretty straightforward. They protect cases where there is a “likelihood of confusion”.

          There is zero chance that I’m going to accidentally buy a review when I meant to purchase this author’s book.

          There is arguably a chance (albeit small) that the IOS training manual I just bought was for the iPhone rather than my Cisco router.

          It sounds like this guy applied for, and received, a trademark and he is protecting it in a confusing context. That doesn’t mean he can go after reviewers.

          It sounds like there is an excellent case that the trademark should never have been granted, though. I’m not sure how costly it is to shoot these things down, but one would hope that the process is straightforward and (relatively) cheap.

  4. I am pretty sure that legally you cannot copyright a title, which is probably why this guy went the trademark route. And trademarks HAVE to be defended to be maintained, which is why you end up with giant corporations sending threatening letters to mom-and-pop small business that are obviously no threat. Trademarks can also be licensed, so maybe he hopes they will offer him money. I agree with fjtorres that trademark lawsuits are unpredictable.

    1. I think the first half of your comment is probably the whole reason for the lawsuits. I doubt he expects to win anything, but he MUST defend his trademark against any “threat”, however absurd, or risk losing it.

  5. Nah, based on your description, he’s just another of the many “normal” people that are either mildly irrational, clueless, misguided, or some combination of those. No need to smear the name of friendly crazy, developmentally behind people like me unless he has declared he’s one of us. ;-)

  6. I’m not a lawyer (and I don’t play one on TV), but I’ve found a reference that says that Wild might have grounds to defend his trademark–but only because it’s a series of books, not a single title. Quote from CopyLaw.com:

    “Titles. Titles, while not protected under copyright law, are sometimes protected under trademark and unfair competition laws. However, one-shot titles, no matter how clever they are, are not automatically entitled to trademark protection. To be protected, titles must achieve “secondary meaning.” Secondary meaning is akin to the commercial magnetism of a title. As a rule, to be protected, titles must be “broadly known.” Series titles, unlike one-shot titles, make good trademarks candidates. In addition, a title in one medium, will be protected in another.”

  7. Sounds like part of the problem may be that he does claim to have a trademark that mentions novels. This author is certainly a fool, but it says little good about the staff at the USPTO that they’ll let him get away with claiming to own a book’s title.

    Len Feldman’s comments illustrate an exception, but he’s talking about something resembling the “Dummies Guide to” series. It is the series that can be trademarked and the series has to be “broadly known.” I doubt this guy’s books fit that category.

  8. I am wondering why the story isn’t: Large Media Conglomerate Steals Small Businessman’s Trademark, Laughs and Kicks Sand in his Face?

    That’s what actually happened here. What’s HC going to start doing next? Publishing books by Steven King?

  9. Ok. So I am crazy because in 2004 I decided to do a comic book series titled CARNIVAL OF SOULS. In 2005 I was blessed enough to have it published and it did really well. So I went on to start my own company and even had CARNIVAL OF SOULS become the #1 ebook on Blackberry for over a year.

    From there I have had the series do really well on Amazon, reaching the #1 spot several times. So I decided in 2009 to register my series as a trademark. I have every right to do so. Yet in 2012 HarperCollins and Mellisa Marr, want to take my registered “CARNIVAL OF SOULS” trademark and put it on top of her new book. Which even a stand alone book is an infringement, however, it is well known that this is a “CARNIVAL OF SOULS” series. It is listed on Amazon as a series, under the hardback version of Marr’s book. It has been said in several places officially that this is a new series.

    Ok, AGAIN… I am minding my own business and running my business, when a Billion dollar company, makes a decision to out and out take my series name and mark. And I am the focus? Not that kind of unethical practice?

    They have no right to do this. What if I did that to them?

    We contacted HarperCollins in June and asked them to stop using my series name and mark. They threatened to take my mark. They listed all kinds of other uses of the title from other classes of goods… like movies and cds and such. They said the name was common and basicily I should be ashamed for having chosen it. Even though they must now have the crappy name for their new million dollar book series. All of this treatment because I did what… protect my work with a trademark?

    Look I have a trademark in classes 16 and 41 for novels, comic books and graphic novels. You can only trademark series, not single items. So yes, there are other CARNIVAL OF SOULS out there. The ones before my mark can stand; the ones after my mark are infringing. They want my mark. They have published a series with the title “CARNIVAL OF SOULS”
    my series is called “CARNIVAL OF SOULS.” What am I missing? Should I really have never applied for a trademark, because Melissa Marr and HarperCollins may one day in the future decide they want my title? This is insanity. Place your anger where it should be… on that.

    And finally as to sending out cease and desists to bloggers… here’s the facts. I sat back from June to Sept and received endless “Google Alerts” with “CARNIVAL OF SOULS” being promoted all over web. Not my “CARNIVAL OF SOULS” series but rather a trademark violated version. On Sept 10th the night before my 24th anniversary, I had had enough. I went down the “Google Alert” list and sent the cease and desists to whomever had posted my mark. No bloggers were singled out. This was to let everyone posting this book know that the “CARNIVAL OF SOULS” mark is a registered trademark that HarperCollins is knowingly and willfully violating. The bloggers are not doing a damn thing wrong. They are doing their job and got caught in the crossfire, and for that I am sorry. It is HarperCollins and Melissa Marr who have done the wrong thing since day one. And I have to defend my series.

    Now let’s let the courts decide the matter.

    1. Hi Jazan,

      You say that it is an infringement to use the registered title of a Series as a title for a standalone book. Is there any precedent or case law on this subject? And also, is that only in the USA or also in Europe?

      You mention that the Melissa Marr book was part of a series, but did they use the title for the series or only for that book? And do they plan to use a different name for the series?

      You also say that Melissa Marr has done wrong. But she is not named in your petition as co-defendant. Also, I can tell you from personal experience that publishers do not necessarily use the title that the author wanted – especially HarperCollins!

  10. Having actually read the brief, I would say that he definitely has legal standing. He has far more of ‘Carnival of souls’ and far further back. So Harper Collins screwed the pooch on this. They don’t want to have to eat the money to recall and retitle the books. They gambled he was small time and wouldn’t bitch. They lost. He was polite. However, sadly there are things that have to be forced. This is a core problem with society.

  11. If this guy has his way, he’ll be trademarking the entire English language. Fool! It already belongs to me! To me! To ME! Bwa-ha-ha-ha!

  12. This isn’t a “megabillion-dollar company after the little guy” article simply because the trademark owner is also going after (arguably) smaller reviewers with C&Ds. A book review is a textbook example of fair use. There goes public sympathy.

    I doubt the case has any merit because of trademark dilution even before the 2009 registration, but that’s for a court to decide.

    1. Going after the reviewers is exactly where things went wrong. He almost admits above that it was a mistake to send a “cease and desist” to people that weren’t violating anything. Instead, the reviewers should, at worst, have been given a heads-up that HarperCollins was infringing on a registered trademark and let the reviewers decide if they want to pass that information on.

      As I said above, the USPTO granted him the trademark and the argument should really be about whether it should have been granted in the first place. He is doing nothing wrong by going after HarperCollins, just as HarperCollins may be correct in saying this is just another case of the USPTO falling down on the job.

  13. Once again, we have a Digital Reader article which can’t get its facts straight. It is not “crazy” to defend a lawful trademark. The sites in question didn’t just review the book, they used promotional materials directly from HC. Whether you like or not, posting trademark-infringing materials will get you a C & D, even if you didn’t know the stuff you posted was infringing.

    Wild was not “freaking out over the fact that they mention the title of the book”. He was asserting that the sites were posting material that violated his trademark.

    I have no idea whether or not Wild will win his lawsuit. I think his C & D could have been worded more accurately. But it was a legitimate attempt to protect his trademark (which despite the irrelevant insinuations about prior use) was awarded to him.

      1. I agree that it was poor marketing, but that doesn’t make him crazy or excuse the fact that you can’t seem to get your facts straight. Read up on trademark law. Trademarks have to be defended or they are lost. If the man wants to defend his trademark, he has to send C & D letters. I think he should have sent differently worded letters, but that’s not the most relevant think about your article. You distorted what really happened.

        Let’s give you the same treatment:

        I have your daily dose of crazy. Some crazy blogger named Nate Hoffelder (who claims to be an ebook expert, but can’t seem to find anyone who can report accurately on the biggest story in ebooks*) published a blog entry about a trademark dispute and completely embarrassed himself by demonstrating his complete lack of understanding of trademark law. Any sane person would have put in a few minutes to read up on trademark law and discovered that how common a phrase is has nothing to do with the legitimacy of a trademark. Then, the craziness continues as he goes on to give other bloggers lessons in how to blog. He seems to be a nice guy for a complete idiot who writes out of ignorance, but come on, bloggers, don’t be that guy.

        See, that doesn’t feel so good, does it?

        *http://the-digital-reader.com/2012/09/12/bye-bye-9-99-and-price-competition-in-ebooks/

        1. Maybe you are correct, but I would have thought the action must be taken against the responsible party. In general, U.S. law tends to protect those not associated with the infringement.

          Does he have to go after Barnes & Noble and Amazon? If a movie theater puts up promotional items for a movie that is later found to be violating a trademark, must the owner of the trademark send legal threats to the movie theaters in addition to the movie publisher? If I purchase an item that is later found to be infringing, am I no longer allowed to sell the item on eBay?

          I’m interested. I’m not overly familiar with trademark law, but I assumed it wouldn’t be as aggressive as you are suggesting.

          1. The Ebay question has long been answered; you cannot sell good which infringe on trademarks.

            But the book review blogs are another matter. They’re posting the allegedly infringing content for news and commentary value. If this were a copyright issue it would be a clear fair use justification, but I’m not sure about trademark.

            My guess is that suing them would be like suing a news blog for posting a picture of a faux Gucci bag.They’re not using it in commerce so it very likely isn’t an infringement.

          2. I’m no expert, but the U.S. federal law concerning trademark dilution has always seemed pretty extreme to me. It creates an incentive for trademark holders to object to almost any use of their trademark to refer to a similar product.

    1. “what’s wrong with this one?”
      Generally the same thing.
      Just because there is a precedent to behave like a litigious asshole, does not mean the suit happy poopholes are in the right.

    2. PS,
      Funny you mention that case as it has to do with infringing on Tarzan trademarks. If Wild has a case, then Edgar Rice Burroughs estate probably has a case against Jazan Wild, because this is an obvious dumbed down tarzan rip-off.

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