I have a question that no one can seem to answer. It deals with characters in the public domain who are trademarked. Let's take, for instance, Tarzan. "Tarzan" is in the public domain, but it trademarked through ERB, Inc., as is "Lord of the Apes". ERB has gone after many writers, artists and the like, for their usage of Tarzan and trademark infringement. However, the name John Clayton II or Earl (Lord, Viscount) Greystoke are not trademarked. If I was to write a book, entitled "Greystoke & Man Cub", is that technically trademark infringement? Or does the name Greystoke not trespass onto that? Let's say I take it a step further and never use the name Tarzan, Lord of the Apes or even Jane (who are all trademarked) in the entire novel, since those other names mentioned are public domain, would I be able to use that?
I keep going to sites online that give this as an example, but they never really delve into the issue of trademark relations to names, or even places, from same works which are not trademarked themselves. Would one need an IP attorney in such a case? Or is this simple use of a character that is free to take, due to it being public domain?
Generally it would be important to an intellectual property attorney to look at the entire book to determine if there are copyright infringement or trademark infringement issues; and you should discuss with an intellectual property attorney in a private consultation.
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This has issues of both possible trademark infringement and copyright infringement. As you are looking to figure out what it is OK to do legally to prevent future problems, you would be wise to hook up with an intellectual property attorney who can advise you on the specifics of what you are planning to do.
Please note: This answer is not intended and should not be considered as legal advice. Such professional advice requires full disclosure to an attorney of a client’s circumstances and that attorney’s opportunity to analyze those circumstances against applicable law.
Have you consulted an intellectual property lawyer confidentially and were unable to receive an answer? You should be able to get a description of the factors that would go into what may or may not be permissible so that you can evaluate the risks. You seem to be assuming a lot of things and mixing characters and trademarks. If you assume that Edgar Rice Burroughs' copyrights are all expired that might impact the ability to copy the stories, or create derivative works. But that is not really connected to trademarks. A trademark is any word or symbol that is adopted and used as a trademark. It could be enforced against a use that is likely to cause confusion. And trademark rights can be established at common law, arising from use. Plus there is a general rule that use of a word in the title of a book is descriptive, but use for a series of books can be trademark use. Hire an intellectual property lawyer.
Characters are primarily protected by copyright. You could not write a book with Mary Popims as a character, even if if was a totally new story and had nothing to do with the other characters in the original book. (Well, if it was a parody you could...) Also, most reputable publishing houses have attorneys vet books before publishing. But better to review with an attorney before going to all the work of writing.
Peace be with you, and may love guide you.
Your description contains both copyright and trademark issues which would be best analyzed with an intellectual property attornney. Copyright protections may exist as to some character aspects of Tarzan developed in sequels and later works. If your creation is too similar to those later works, no matter the names you use, your work would infringe. Trademark infringement may arise even though you do not name your character the same as the actual trademarks. You may run into issues of dilution or consumer confusion.
The image or name of a copyrightable fictional character that serves as a trademark but which appears in a work that has entered the public domain under copyright law cannot be used by another in commerce if that use is a “trademark use” and it creates a likelihood of confusion under trademark law.
But ALL other uses of that public domain fictional character – and the works in which it appears – are lawful. Such as writing a new book which includes that fictional character as it exists in the public domain (note that some fictional characters – Sherlock Holmes, for example – evolve over time so that some versions contain still-copyrightable elements).
An example is useful. “Betty Boop” is a copyrightable fictional character whose image and name serve as trademarks but which appears in works that have entered the public domain under copyright law. The owner of the “Betty Boop” image and name trademarks sued a company that sold posters, dolls, and apparel that displayed the image and name. The courts held that the trademark owner could not prove it owned trademark rights in the image and that the alleged infringer’s use of the “Betty Boop” name on its products was not infringing because its use was “functional” – that is, it had to be used to identify the products displaying the “Betty Boop” image. You can read the court ruling here (focus on pages 1073-1078): https://scholar.google.com/scholar_case?case=14482448232671339726 [Fleischer Studios, Inc. v. AVELA, INC., 925 F. Supp. 2d 1067, 1073-1078 (CD Cal. 2012)].
Speak with your own California-licensed intellectual property attorney before you use another’s copyrightable character in a new work you’re creating or before you use it on a product or to advertise a service. Good luck.
The above response is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.
It appears from your description that you might not be liable for trademark infringement. However, this information needs to be confirmed by an experience trademark attorney to search names that you are planning to use. In addition your question raises several copyright infringement questions depending on the content of your proposed book and the currently existing copyright protection for various Tarzan / greystoke novels.
I suggest that you were Cain and experienced intellectual property attorney to advise you about potential liability after a full review of your proposed book.
Mr. Sack's postings on Avvo are of a general nature, based on the facts provided and are not intended to be taken as legal advice or to establish an attorney-client relationship.
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