Tuesday, August 23, 2011
Don't Mess With Texas Trademarks
Christie Craig has a book out called Don't Mess With Texas. Texas's Department of Transportation believes she is, in fact, messing with them. They've filed suit on the grounds that as they've trademarked that motto to protect their right to be the exclusive purveyor of "Don't Mess With Texas" souvenir items, Craig's book violates that trademark.
I've got Henry, my intellectual property attorney (and first husband) here, so I've put it to him: Should TxDOT prevail? His answer: No. Okay, but why?
Henry: The phrase "Don't Mess With Texas" is so widely used, the trademark should be invalidated.
Me: But according to the spokeswoman for TxDOT, they've already won a lawsuit in which they asserted their exclusive right to the "Don't Mess With Texas" motto. Here's an article about the origins of the motto as an "anti-litter" campaign dating back to the 1980s.
Henry: Nobody in her right mind would conclude that a steamy romance novel with that title was supplied by the TxDOT, so there's little chance the state can prevail on the confusion argument, which leaves dilution.
Me: How does the dilution argument work in this case?
Henry: Basically what TxDOT has to argue is that this used to be a good anti-litter motto but it's losing that thrust, so to speak, so the state is trying to get people to stop misusing it.
Me: How does having a romance novel called Don't Mess With Texas dilute the anti-littering campaign, or is TxDOT really concerned about the tchotchkes it sells in stores like Barnes & Noble, where Craig's novel is also for sale?
Henry: Well, the trademark only applies to items for sale, not the anti-littering signs by the roadside.
Me: Ah, okay. So you be the judge: Can a steamy romance novel do sufficient damage to the mark for TxDOT to prevail?
Henry: One argument would be that the genie's already out of the bottle -- there's no reputation left to dilute.
Me: But I thought Texas wanted to limit the items that can bear the motto, such as T-shirts and key-chains, so that having an unauthorized book with that title on sale violates the mark?
Henry: Which leads me to think that the mark is invalid -- as there can be no confusion about TxDOT writing romance novels, and too many people use the phrase "Don't Mess With Texas" without meaning anything to do with littering, there are no legal grounds left.
Me: See, I can understand TxDOT's efforts to make sure only their T-shirts and key-chains say "Don't Mess With Texas," so I'd be inclined to rule in their favor in cases where they are trying to block the sale of unauthorized "Don't Mess With Texas" souvenirs. A book, I figure, is different.
Henry: TxDOT's trademark registrations seems to cover a lot of printed paper materials, including pamphlets but not novels. You could argue that books and pamphlets are too similar for comfort, or you could argue that associating the slogan with steamy sex in any concept tarnishes and dilutes it.
Me: Can the court hold that the "Don't Mess With Texas" trademark be invalidated solely as to fiction?
Me: Of course.
Henry: That's a trademark covering all books -- except for books about penguins.
Me: But it's unlikely that an American court would do that in this case. If TxDOT prevailed in the case of Christie Craig's book, I assume Hachette would have to republish the book with a new title -- but only those copies to be sold in Texas, right?
Henry: As it's a federal registration, the prohibition would cover all book published in the U.S.
Me: Wow. Okay, and if Hachette and Craig prevail, what's the likely ruling then?
Henry: The court would likely hold that the nature of the goods is different enough that there's no confusion or dilution.
Me: Which certainly seems the least disruptive ruling. One last question: How was Craig to know that this was a trademarked phrase?
Henry: She could have checked the federal trademark database -- if the question had ever occurred to her.
Me: But as so many of us know "Don't Mess With Texas" as generic braggadocio, why would it have occurred to her even to look?
Henry: Clearly it didn't.
This is a work of fiction and any resemblance between the characters and persons living or dead is purely coincidental" disclaimer protected her. (And it might have; the case obviously never got to the merits so we're unlikely to know.) I realize you can't prevent all lawsuits -- and maybe Christie Craig is happy with the amount of publicity she's getting for her book -- but can you give writers any advice in these situations?
Henry: With respect to titles, writers can search to make sure the title they want isn't trademarked. Go to the index page for trademarks and start a search. Of course, there are also state trademark registrations, but doing all 50 searches is a much more complicated process.
Me: (groan) No, that's okay, Henry. I think we've give people enough to think about already.
Edited to add: The judge denied TxDOT's request for an injunctive relief in the form of an order that Hachette recall, destroy and retitle Craig's book. The court held that TxDOT's trademark registration didn't extend to books -- just like Henry said. (That's why he's my intellectual property attorney -- and why I won't allow him to retire.)