Precedential No. 36: TTAB Enters Summary Judgment Cancelling Trademark Registration for the Title of a Single Creative Work
The Board granted Petitioner Mattel's motion for summary judgment in this cancellation proceeding involving the registered mark LAUGH & LEARN in the design form shown below, on the ground that the phrase is merely the title of a single creative work and therefore unregistrable as a trademark. Respondent Brainy Baby sold both a VHS tape and a DVD under that title, but the Board found that they featured essentially the same content, and some additional content on the DVD was insufficient to show that the VHS and DVD versions constitute a series of works. Mattel, Inc. v. The Brainy Baby Company, LLC, 101 USPQ2d 1140 (TTAB 2011) [precedential].
The title of a single creative work is not considered a trademark, and is therefore not registrable on the Principal Register. "The policy for this is clear. Because a trademark can endure for as long as the trademark is used, at the point that copyright protection ends and others have the right to use the underlying work, they must also have the right to call it by its name."
The title is merely descriptive of the single work and does not function as a trademark. However, if a term is used to identify the source of a series of works, then the term is registrable, even though it may be included in the title of each work in the series.
Here, in the challenged registration the goods are identified as a "series of prerecorded videotapes, audio cassettes, digital video discs and compact discs featuring live and animated educational materials intended to develop and improve the creative and intellectual faculties of infants and children." The issue before the Board was whether respondent was using the mark for a series at the time it filed its application.
Respondent had sold, at the time it filed its application, a VHS tape and a DVD using LAUGH & LEARN as the title of each. The VHS tape and the DVD contained the same "featured program" consisting of "forty-five minutes of elementary learning concepts geared toward toddlers." The DVD, however, includes some additional features: a "scene selection" menu and an "Extras" menu providing information on the making of the Respondent's videos, outtakes, previews of other works, and a DVD-Rom Activities page that provides a website link when the disk is inserted in a computer.
The Board found no genuine dispute that "the additional content on the DVD is insufficient to show that the VHS and DVD versions are a series."
The featured program on both the VHS tape and the DVD are the same creative work, and the addition of the minor enhancements in the DVD does not transform this single work into a series, any more than the variations in a live performance that occur from night to night transform the title of a single production into a series.
Moreover, the LAUGH & LEARN program is promoted in Respondent’s catalogs as a single work available in both VHS and DVD formats. The Board concluded that "consumers will understand that the DVD version, even with the enhancements, is merely the same work as appears on the VHS tape, both of which have the title LAUGH & LEARN, rather than regarding the DVD as another item in a series bearing the mark LAUGH & LEARN."
And so the Board granted the motion for summary judgment.
TTABlog comment: If the policy for the single-work rule is that others must have the right to use the title when the copyright in the work expires, doesn't that same policy apply to a series of works when they go out of copyright? The Board noted that, in a series, each work has its own individual title, and so "a series name is comparable to the title of a periodical publication such as a magazine or newspaper."
Suppose the DVD were title "Enhanced LAUGH & LEARN," or "LAUGH & LEARN version 2.0"? Would that help avoid this result?
Suppose one title in a series goes out of copyright. May one sell copies of that one work, under its original title, but using the "series" mark only descriptively: e.g., "Fred Builds a Castle," a book in the series "STORIES OF FRED" originally published by ABC Publishing Company? Or something like that?
Text Copyright John L. Welch 2011.
posted by John L. Welch @ 1/06/2012
8 comments
8 Comments:
Couldn’t agree more that the copyright rationale for the title-of-a-single-creative-work refusal is incoherent. McCarthy writes that “the ‘copyright’ argument is insecure because it could as well be raised against court enforcement of unregistered single titles and against registration of series titles” (Section 10:4.10). See James L. Vana, Single Work Titles and Group, Artist or Author Names – Registrability Revisited, 88 Trademark Rep. 250, 267-268 (1998) (trademark protection is unlikely to outlast copyright protection, and in any event a disclaimer printed on the certificate of registration would ensure that trademark protection “would never outlive the copyright in the underlying work.”).
And the TMEP needs to be looked at too. Section 1202.08(b) states that “puzzle books . . . are not treated as single creative works,” but the Federal Circuit explicitly found that “crossword puzzle books” are a single creative work in Herbko (64 U.S.P.Q.2d 1375). And a live performance by a musical band is not considered to be a single creative work, but a live performance of a play is? Why?
The Board said here that the policy for this refusal is clear, but it is anything but.
It’s also worth noting that in 2005 the Board considered the interface between trademark and copyright and concluded that its “primary concern must be whether a designation would be perceived as a mark and not the ramifications for third-parties that might eventually want to reproduce the work.” In re First Draft, 76 U.S.P.Q.2d 1183, 1189 (T.T.A.B. 2005).
The real policy is that the PTO does not want to get swamped with applications to register the titel of every published book as a trademark, so to avoid that they say no to everybody.
The First Draft case concerned the registrability of an authors name (FERN MICHAELS), not a book title, so the Board's observations regarding copyright law and its relevance to book titles is dictum, I think.
Based on recent and recurrent extensions of the copyright period, copyright doesn't expire either, so in effect, it's coterminous with trademark
First Draft did involve an author's name rather than a title of single creative work, but the Board's remark concerning copyright doesn't seem to be dictum in my view because it was part of the Board's analysis. In any event, it's interesting to see that in First Draft the Board did not seem too concerned with the copyright rationale.
To be clear, the Board was bound here by Federal Circuit/CCPA precedent, so I don't have a problem with the way it ruled. My point is simply that the copyright rationale doesn't hold water, so the cases and TMEP are something of a doctrinal mess.
I wonder if the Board is aware of a parallel limitation in the copyright law. Generally speaking, the title of a book is not copyrightable subject matter even if the content of the book is. For example, this page on the copyright office website specifically states that a title might instead be protected as a trademark and directs the user to contact the USPTO for further information. http://www.copyright.gov/help/faq/faq-protect.html
While this would involve a change in the law, it seems to me that, logically, a book title should be both copyrightable (if it is sufficiently expressive) and should be a trademark (if it is sufficiently inherently distinctive or has acquired distinctiveness, and has no confusion problem with a senior user). Certainly, if the title to a book cannot be protected by either copyright or trademark, then there is potential for a nefarious actor to create consumer confusion as to the source of a book with a copycat book title and to freeride off of the good will of the original author.
So, what does one do to protect an original, distinctive book title from such misappropriation?
I believe that one may invoke unfair competition law to stop someone from misappropriating a distinctive book title. What you can't do is stop someone from correctly identifying a work now out of copyright by its original title.
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