Comment by Brooke J. Egan
If you have ever gone into a bookstore, walked up to the customer service desk, and asked for the location of a specific book that had been recommended to you by a friend, then you know the plight of the literary title under trademark laws. When customer service directed you to the correct section of the bookstore, your desire was to walk up, pluck your book off the shelf, and continue with your day. What if, instead, when you went to the shelf, there were ten books with the same, or substantially similar, titles? Consumer confusion? You bet. The question for consumers and authors alike is whether a title should be protected from other titles that are the same or substantially similar because of consumer confusion.
This Comment focuses on same or substantially similar literary titles and the protection that existing trademark and unfair competition laws provide authors and consumers. Currently, the owner of a single-work literary title can only invoke unfair competition protection after secondary meaning and likelihood of confusion are established but has no other recourse under trademark law. This requires authors to pursue actively the award of secondary meaning as applied to their literary title and produces evidentiary battles in our judicial system. An all too common roadblock authors face in the decision to litigate is determining whether secondary meaning will be found. This problem exists because there is no specific timeline or checklist for a secondary-meaning award as applied to a literary title. Courts are guided by secondary-meaning factors on a case-by-case basis but often fail to document their analysis and provide a concrete starting block for later potential litigants.
This Comment recognizes that the current requirement that secondary meaning be established in order to get unfair competition protection for literary titles is both fair and just. However, it urges courts to assist authors and consumers through continued and detailed discussion of secondary meaning in opinions and writings. Authors, consumers, and members of the judiciary would benefit from a more detailed explanation regarding the achievement of secondary meaning for the single-work literary title. Authors would have a more accurate gauge to know when invocation of unfair competition protection for their literary title would be realistic and validate an expenditure of legal expenses. Consumers would benefit from a decrease in consumer confusion as to those literary titles that rightly deserve unfair competition protection. Members of the judiciary would benefit from judicial economy because claims of secondary meaning could be resolved aligned with precedent and progress.
This Comment attempts to identify the current judicial status of literary titles as a means of artistic expression through trademark principles, including the doctrine of secondary meaning for unfair competition protection. This Comment also attempts to highlight the existing gaps in secondary-meaning analysis as applied to single-work literary titles and supports a call for more judicial detail in secondary meaning opinions. Part II briefly introduces trademark and First Amendment law as they apply to literary titles and artistic expression. Part III introduces secondary meaning as the basis for unfair competition protection under section 43(a) of the Trademark Act of 1946 as Amended (Lanham Act). Part IV looks at series titles under the recognized series mark. Part V discusses the current status of single-work literary titles under the trademark system and details the standards for secondary meaning and likelihood of confusion that must be met for unfair competition protection. Finally, Part VI concludes that although the current status of single-work titles under section 43(a) of the Lanham Act offers sufficient protection, the time required for the establishment of secondary meaning needs clarification. It urges courts to specifically identify when secondary meaning is achieved so as to provide a benchmark for future applications of section 43(a) to single-work literary titles.
About the Author
Brooke J. Egan. J.D. candidate 2001, Tulane University School of Law; B.S. 1994, University of Notre Dame.
Citation
75 Tul. L. Rev. 1777 (2001)