We have all been told not to judge a book by its cover, but what about judging a book by its title? While creating an artistic work, creators and distributors take care to ensure that the title of a work will draw in readers and be representative of the work. Rights holders then often spend considerable time and effort publicizing the title of the work to entice consumers to buy their product. To prevent others from capitalizing on their efforts to popularize the title of a work, rights holders may want to trademark the name of the book. Until recently, Canada was one of the few jurisdictions in which one could register a book title as a trademark. However, in 2009 Canada followed the practice of many other jurisdictions, including the United States, to disallow the registration of a book title for a trademark.
In Drolet, v Stiftung Gralsbotschaft and Foundation of the Grail Movement the Federal Court considered whether a party could register a trademark for a book title. In the case, the plaintiff sought to expunge the defendant’s trademark registration for the title of a book central to the Grail Message movement, a religious movement based on a series of Germanic writing in the 1920s and 1930s. The claim was that the marks were descriptive of the goods and services, the book written by the defendant. Accordingly, the plaintiff sought to expunge the registration of the defendant’s book title as a trademark.
The Court determined that the title of the text was not clearly descriptive as it was less explicit than other marks generally refused after a descriptiveness test. Yet the Court held that “the title of literary work is inherently descriptive not because it conveys information on the content of the work, but because it is the only way to identify the work in question. Thus, one cannot dissociate from the work itself. How could a publishing house identify a book it publishes other than by its title?”
The problem with registering a book’s title for trademark protection is the potential for future conflict with the Copyright Act. Trademark protection does not have a life-span so long as the mark is in use. However, Copyright has a set term determined by parliament and set in the Copyright Act. At the end of this term, a work enters the public domain. If a book title were eligible for trademark protection, the Court reasoned this would undermine the intentions of the Copyright Act. This would prevent works in the public domain from being published under their trademarked title.
A trademark is not intended to be used as a surrogate for other protections, or to shore up a rights holder’s protections further than other legislation intends. The various legal protections provided under Intellectual Property legislation operate in largely separate domains. Courts are loath to allow protections provided in one area to bleed over into others. This is why the Court was so concerned with the potential conflict between copyright and trademark.
In addition, under the Copyright Act the title itself may not protected, unless it is original and distinctive but general copyright protection will protect both the work and its accompanying title.
While the trademark cannot be registered, the title may still be protected under the tort of passing off or under s7 of the Trademark Act. This remedy would allow rights holders to protect their work from unauthorized affiliations even without the trademark registration. The Court also suggested in the Drolet case, that the defendant could advise readers of the book’s quality on a page within the text or by using advertising.
The ruling pertains to single titles, not to series, periodicals or issues of a collective work such as “The Hunger Games”. In this case, the title of the series can be trademarked because it would denote that a new issue was affiliated with that particular series. This ruling could also have implications for other art forms such as movies, or song titles and similar works protected by copyright. Titles serve a similar function for other artistic works and create the same problems when the works enter the public domain. Therefore, perhaps television serials may not be able to trademark the individual episode titles but could register a trademark for the series title. This way, viewers would know that that particular episode title belongs to the series to create a consumer connection between the defendant’s wares and a certain quality. However, since the ruling in the Drolet case, the Courts have not yet tested the limits or scope of the ruling.
Written by Allison McLean for The Trademark Group.