Tuesday, August 23, 2011

Don't Mess With Texas Trademarks


Christie Craig has a book out called Don't Mess With TexasTexas'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?

Henry:  Because you're arguing about similar but not identical goods, they wouldn't be that specific, they'd just say that the goods are not similar enough for TxDOT's argument to work.  Even if TxDOT's trademark registrations for printed matter were broad enough to include novels, I've never seen that sort of carve-out in this country, but back in England the registrar was willing to carve out exceptions.  You've heard of Penguin paperbacks?

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.

Me:  So is there anything writers can do to protect themselves prophylactically?  I'm thinking also of the lawsuit Kathryn Stockett had to face when her brother's black maid, Ablene Cooper, sued on the grounds that Stockett's character, Aibileen, in The Help was based on her.  Stockett gave Cooper a copy of the book in 2009 but Cooper didn't read it until after the one-year statute of limitations had run, so her lawsuit has been dismissed.  Maybe Stockett thought the standard "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 addThe 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.)

6 comments:

  1. Magdalen--
    I almost cross-ref-ed this post over at Dear Author, as today's mid-day post is about lawsuits. But I didn't-I figured that was your perk.
    Your post is spot on. I am quite aware, being a Texan one generation removed, that the slogan started as an anti-litter campaign. But Lordy! the number of Country songs that use the phrase (and not in a 'let's clean up the highways' sort of way)! I would have though that TxDOT would have thrown in the towel by now.
    Thanks to Betty Henry for the info--great post!
    Will I read the book? Probably not. But that is neither here nor there.

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  3. Uh, all Texans know it is an anti-littering campaign (the funniest early ad being one featuring Bum Phillips of the Houston Oilers) so my sympathy is with the DOT because the author did really steal their idea. Of course, on the legality of it, I bow at the feet of Betty Henry's greatness.

    I have no plan to read this; I mostly hate romances set in Texas. They seem to be written either by snot-noses in Austin (who have zero connection to elsewhere in the state) or folks who have never set foot in the state at all, which leads to hilarious--if annoying--blunders. I once read a Harlequin in which the heroine had to do her shopping for a dress for that evening in either El Paso or San Antonio! (Good luck making the dance with either choice--they are a looooong way apart.)

    (Can you believe I poked my head in over here? Hi, Betty Barbara!)

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  4. Hey, my brother lives in Austin.

    Oh, wait, my brother lives in Austin. Rather proves your point. Never mind.

    There are two problems with defending the trademark "Don't Mess With Texas" that, say, John Deere's "Nothing Runs Like a Deere" doesn't have. First, not messing with Texas is a MUCH larger concept than just anti-littering. It's not surprising that an anti-littering concept slipped the lasso, landed in country songs and thus to the cultural gestalt of Texas as bigger and bolder than the rest of the U.S.

    Second, you can't prohibit speech, which is why they can't enjoin the country songs. That's how the expression slips the lasso. So, you take the ever-expanding sense for the expression "Don't Mess With Texas," the fact that the trademark doesn't extend to fiction, and the really weak argument that a sexy novel is going to dilute an already diluted mark.

    I too have no plans to read Craig's book, but I'll bet there's no mention of litter anywhere in there. Not that intent matters in trademark cases, but I doubt Christie Craig would ever have used the title if the expression hadn't slipped its lasso and entered the vernacular.

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  5. Perhaps her next book will be Texas, It's a Whole Other Country, courtesy of the Texas Board of Tourism.

    (When British Airways first started non-stop service into Texas its billboard slogan was: "We Fly to Texas and 115 Other Countries"--it was a big hit (still makes me laugh).

    Hope Betty Henry has battened down the hatches with Irene approaching....

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  6. Hey! Wait just a minute!! My sister lives in Austin (BTW, she and I get along great) and she's no 'snot-nose'. Take that back, Betty JoDee!
    She is what so many Austin-ites are: She graduated from UT in 1972 and never left. She currently works for the state--never has written a romance (set in Texas or otherwise).
    (I apologize to Magdalen for bringing over the pillow fight atmosphere from TUJD.)

    Barbara

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