In this upcoming series of posts, Animated IP, team members will answer your questions from their panel at the 2019 Rose City Comic Con. This is the first post in the series.
Question 1: I am drawing my uncle’s memoir with the goal of getting it published. He lived a very interesting life which included friendships and interactions with some famous people (mostly athletes) because he played briefly on the Kansas City Chiefs football team. How can I include these names and franchises in the book without fear of litigation in the future?
We can never be 100% safe from litigation. To put yourself in the safest position, it’s usually best to get permission to use the trademarks and imagery you want to put into your work. However, permission is not legally required in order to use the names of actual persons or sports teams in an original work. As long as you are creating an original work of authorship, whether fiction or nonfiction, the First Amendment allows you to make references to actual people, living or dead, without obtaining permission. There are a few things to look out for, however.
First, it’s OK to fictionalize, but don’t depict any real living people falsely in a way that would harm their reputation. So make sure your depiction is truthful; or if fictionalized, not likely to be harmful. This will minimize the possibility of any action against you for defamation or false light privacy violation.
Second, it’s OK to make creative uses of actual people, but you can’t use their names or images commercially. Now the fact that you might sell the book or artwork you’ve created doesn’t make that work commercial. Generally, you want to avoid using people’s names in a promotional way. So don’t use or allow anyone else to use any of the images you’ve created in an advertisement—including advertisements for your book itself. This will minimize the possibility of an action against you for false endorsement or violation of the person’s right of publicity. In promoting your book, you can make truthful statements about the content of the book, but avoid using real people’s names or images in any way that might suggest they sponsored or endorsed your work, and don’t exploit those names and images solely to call attention to and promote sales of your work.
Third, if any of the images you’ve created are photographs or are based on photographs, make sure you have permission from the owners of the copyright in the photographs, or use multiple photographs and make your own images as original as possible.
Fourth, you’ll probably want to depict Kansas City Chiefs logos and uniforms in your work, but make sure these are presented only in the context of the story you are telling, and are naturally related to it. Don’t use team logos and other identifying characteristics in any way that might cause readers to believe that the team or its owners sponsored or endorsed your work or paid money to appear in it. This will minimize the risk of a demand or action against you for trademark infringement.
Follow these few guidelines, and you should be OK in creating a faithful and entertaining work about your uncle’s life.
Question 2: Once you have approved Federally Registered Trademark, but you let it go dormant (“Trademark Abandonment”) is it hard to regain it? How?
First, you need to distinguish between ownership of a trademark and trademark registration. Ownership of, and rights in, a trademark are based on your use of that mark in connection with specific goods or services. Trademark Abandonment is the loss of rights in a trademark because you have stopped using the mark for three years or more with an intent not to resume use of the mark. If you stop use for some legitimate reason and later decide to resume use, you can simply do so. However, if you have allowed other parties to use the mark freely without controlling how they use it or what kind or quality of goods or services they use it with (“naked licensing”), you may lose your rights in the trademark altogether, and it may be difficult if not impossible to recover them. This occurs if there is a lawsuit or Trademark Office proceeding in which you are formally held to have abandoned rights in your mark.
Abandonment is not the same thing as losing a Trademark Registration for failure to file a timely renewal. If you overlooked your renewal deadline and are still using your mark, check with a trademark attorney; you may be able to reinstate the registration. And if not, you can simply apply for a new registration (as long as no one has obtained registration for the same or a closely similar mark for the same goods or services between the time your registration was canceled and the time you file your new application). Note that you must be using the mark in connection with goods shipped or services actually provided in commerce between two or more states in order to be eligible for federal registration. But with or without registration, you are the owner of your trademark for as long as you continue using the mark.