Legal Writing

Use of Trademark Names in Fiction

By Mark Nichol

A couple of years ago, a site visitor asked about the necessity of obtaining permission to refer to trademarked products by name in fiction. Here?s the specific query:

How is copyright dealt with in fiction writing? For example, if I sell a story where I wrote that a character jogged to Burger King in his new Reeboks, would there be copyright infringement? Do I need to get approval from the holders of the copyright to use their names in my stories? And, how would I go about doing that? How do I find out what is copyright protected and what isn?t?

And here, better late than never, is the response: Fortunately for the multitudes of authors who write fiction (and the innumerable publishing companies that print their books), writers are free, for the most part, to include trademarked names in their stories.

The passage in question is especially innocuous, because the references to Burger King and Reeboks are benign: Nobody in the novel dies from eating a Whopper, and no character is fatally run over in traffic because his running shoes are defective. But even if the author had implicated one of these brands in someone?s death, legal retribution would be unlikely; the sheer volume of media overwhelms any one corporation?s efforts to monitor for and suppress defamatory references to their products.

But risk is relative: If a writer with the stature of, say, J.K. Rowling had resorted to the plot device of a deadly hamburger or a dangerous pair of running shoes, her publisher would likely be sent a cease-and-desist letter. This terse request from the trademark owner would call on the publishing company to refrain from associating the company?s delicious and nutritious WhopperR brand beef-patty sandwiches or light but sturdy and comfortable ReeboksR brand athletic shoes with anyone?s death.

(Side note: The registered trademark symbol is never required; in commercial publications, it is often inserted to imbue one?s products with a protective aura or to refer to those of others, as a courtesy, to encourage reciprocity.)

To avoid such a consequence, an astute editor would likely request that Ms. Rowling excise such libelous references before submitting the final manuscript, thus avoiding the arrival of a letter referring to ?possible recourse to further legal options to protect our valuable intellectual property rights.?

But your editor would likely do the same, perhaps suggesting that instead, you call the fast food franchise Hamburger Prince or the shoes Teezoks. Interestingly, assigning closely similar names, or describing companies or products that resemble real ones but are not named in their honor (or, often, dishonor), is fair play.

Full post as published by Daily Writing Tips on January 18, 2011 (boomark / email).