Forum: Author Hangout

The general rule of thumb is, use companies and place names all you want, unless you're specifically attacking the organization (or suggesting they'd act less than honorable). In that case, switch to either fictional locations or fictitious companies (i.e. write the same story, but call it something else so everyone knows who you're talking about).

Pretty much this. Major government agencies aren't likely to sue you, although they may find other ways to make you hate life. Non-Governmental entities are very much in the tread carefully category, even public personalities to a large degree.

If you do decide to use a company name, or a celebrities name/persona in a work of fiction you better do your homework and make sure the way you use them won't be considered objectionable by them and likely to incur a lawsuit.

For some companies and persons, that means not linking certain things together, even if you believe or know them to be true, or don't think it actually matters.

The Transformers Movies encountered this with some of the characters "human disguise" where they had to change the make/model of a few characters car forms due to both licensing issues, and assertions from the relevant automaker that IIRC they didn't want their brand associated with acts of destruction/warfare or something to that effect going forward. (Basically, "even if it was in our power to give you permission to do so, we would still say no")

Of course, where your writing ends up also plays a role in what you can get away with. Someone writing for mass market publication is going to have a different bar to clear due to the larger exposure their work gets when compared to say, posting on SOL. The mass market publication gets wider exposure, and also being a commercial work, opens it to attentions that freely available stories online don't generally get.

The Transformers Movies encountered this with some of the characters "human disguise" where they had to change the make/model of a few characters car forms due to both licensing issues, and assertions from the relevant automaker that IIRC they didn't want their brand associated with acts of destruction/warfare or something to that effect going forward. (Basically, "even if it was in our power to give you permission to do so, we would still say no")

Technically, under US trade mark law no permission is actually necessary for that sort of use of a trade mark. You can mention / show a trade mark to your heart's content without violating the trade mark.

The purpose of trade marks is to avoid confusion in the market place. You are on solid ground as long as you aren't claiming to be the owner of the mark or representing some other product as being the product of the owner of the mark.

The one exception is disparagement of a trade mark. However, that is very similar to libel/slander law in that truth is an absolute defense.

In the transformers case, an automaker might try to make a case for disparagement, but it would be a very weak case and it would be very unlikely that they would prevail (at least under US law).

On the other hand, the Transformers movies had world-wide distribution, and other countries trade mark law may be more restrictive than US law.

I've been adding © to the actual names mentioned in my stories.

Wrong symbol. That is for copyright. You want the trade mark symbol which is different and in any case:

1. as a matter of black letter law it is not necessary unless you are claiming the trade mark.

2. Won't matter with those companies that are likely to threaten/file frivolous suits over mention of a trade marked name.

3. Many of those names, particularly government agency names aren't trade marked anyway.

It's all to do with the way the US laws on protecting trademarks, trade names, and some other intellectual property are written. In essence, if they do not protect against all unapproved outside or external usage they dilute the protection and it can be legally misused.

This is technically not correct. They only need to fight true violations and cases where the trade mark is used as a generic term for a whole class of things within the field the trade mark applies to. They do not need to sue to protect against use as a generic term. Public education campaigns to push people away from the generic use can be enough.

Due to legal limitations on government agencies holding IP, public university trade marks are generally limited to apparel and other merchandising.

And in the specific case you mention, they might well have been talking to their legal people, who likely were telling them they didn't have a case. To appease their client they would probably send a nasty gram (cease and desist) but it would be unlikely to go further.

Monsanto has sued for using legally purchased grain Monsato has registered a patent over the genetic deisgn of.

The Monsanto issue is patents, not trade marks, that's an entirely different set of rules.

Tell that to the many people Disney have sued for using material Disney has trademarked.

A lot of those are copyright cases not trademark cases. Things get trickier when you start talking about cartoon characters, because the art work can be covered by both trade marks and copyrights.

http://dailycaller.com/2015/10/23/univ-of-kentucky-sues-tiny-distillery-because-it-has-decided-it-owns-the-word-kentucky/

https://www.insidehighered.com/quicktakes/2015/10/22/u-kentucky-asserts-trademark-right-kentucky

Actually no, those support my case, not yours. The cases you are referring to occurred because Kentucky Mist (the distillery) tried to file for a trade mark in the area of apparel (merchandising) for which the University of Kentucky already had a trademark. That case was all about apparel

Also, UK sent Kentucky Mist a nasty gram, but never filed suit. The actual court case was a lawsuit by Kentucky Mist against UK over the nasty gram.

http://www.kentucky.com/news/local/education/article50944775.html

If there's any intelligent justice in the US courts (a miracle would be needed for it, but not totally impossible) it should be ruled they can only control apparel that has either the name Kentucky University or any special way they write Kentucky that wasn't used by anyone else. They own Kentucky university not Kentucky, but that doesn't stop them trying to claim more. Which is the point I was making about their rabid behaviours.

Actually, it is extremely likely that the US courts would have ruled exactly that. (Their trademark is for "University of Kentucky" not just "Kentucky".

This is why rather than actually defending their nasty gram in court, they moved to dismiss the case on the basis that because they are a public university they are a government entity and therefore have sovereign immunity.

sending the nasty gram to start with is an act of excessive protection they shouldn't have been doing in the first place

The nasty gram costs them nothing and is easy to ignore when you know it is meritless.

And it's often a toss up which side the US courts will come down on with these cases.

If the university thought that that it had any chance of winning on the merits, they would not have plead sovereign immunity.

http://www.wdrb.com/story/30328448/uofl-student-sues-katina-powell-claims-she-damaged-future-degree-from-the-university

Again, this does not support your case. The article you linked to has a link to the actual complaint. That law suit has nothing at all to do with trade marks.

In fact it's in the state courts under state law tort actions. If it were a trade mark case it would be in federal court.

The case supports my point about the university being rabid about protecting their name -

Actually the Illinois case is not about protecting their name. They are not claiming that the author shouldn't have used their name without permission.

That case is about protecting their reputation, it's a defamation case with a few extra claims for interference with contracts (driving other students away).

It's not about the use of the university's name, but about the fact that the author said bad things about them.

http://www.nashvillepost.com/home/article/20448469/western-kentucky-sues-mascot-big-reds-italian-lookalike

From the article you linked to:

A preliminary hearing is set for Wednesday near the northern Italian city of Ravenna.

The case is in Italian courts under Italian law, so not relevant to US law.

So, it still shows how stupidly rabid the university is about protecting what it perceives as its own. It matters not if they have a valid case or not, it's the trouble they'll cause, trouble an author can very easily avoid.

If they have a valid case under Italian law then it doesn't show them being "stupidly rabid" about anything.

Because, of course, if anyone has an interest in protecting the name "Kentucky", it's the Italians!

The Italian case has nothing to do with the Name Kentucky That case is Western Kentucky University, a separate entity from the University of Kentucky, suing an Italian TV company for ripping off their mascot. An American state university suing an Italian company in Italian courts. I wonder if the Kentucky tax payers have any idea how much they are spending on the lawsuit?

It's the University of Kentucky that got in the legal fight with Kentucky Mist over the use of "Kentucky" on t-shirts.

a person buy lunch at Denny's or McDonalds, or a car from Chrysler. Refer to them in their normal retail type operation and refrain from making rude comments and you can be fairly sure they won't do anything. You can often get away with a casual mention of a private association as well.

I suspect that you should be ultra careful if you have a character who (in the story) is employed and does something which the named company would disapprove of its real employees doing (such as suing the company for something or being a streetwalker).

Ayep, but it's always better for you and your bank balance to avoid the situation in the first place, if you can. And in this situation with writing it's damned easy to avoid right up front.

Yeah a few minutes doing a find and replace across a digital manuscript is a lot cheaper than hundreds of dollars in court fees and legal representation costs that can go well beyond that.

I'm currently writing a story about baseball. Back on January 25th I wrote to a AAA club for permission to use the club name in the story. I got an automated reply stating they received the message, but nothing since.

They are probably still trying to figure out why you think you need permission.

The one I didn't like was their owner wanted input and some control if I used the club name in the story. I declined their offer.

Of course they wanted that. That doesn't mean that they are legally entitled to it.

Because I want to name them and their organisation in the story.

There is absolutely nothing in US law that requires that you have their permission for that.

There's very little to do with "winning" or "losing" in these cases. In the US, the average citizen lacks to means to appear in court. It's simply too costly. Thus the very threat of a suit, or the actual filing of a suit, places a person of normal means in financial jeopardy. Corporations exercise this "club" routinely. So do wealthy "bullies" who can use the US court system as a bludgeon against victims of lesser means.

When Bernie Sanders declares the US justice system "dysfunctional," he is speaking of it at all levels, both criminal and civil.

Slander is incredibly hard to prove, especially if the statement is 1) true or 2) personal opinion.

True, but:

1. In print it would be libel, not slander. That confusion is why many courts have taken to simply lumping both under defamation.

2. Litigious Asshats can still make life difficult, even if they don't have a legal leg to stand on.