A Rose By Any Other Name: When Someone Else Has Already Used Your Book Title
[Originally published in Romance Writers Report, October 2017]
Approximately 305,000 books were published in the United States last year. Amazon offers at least 1.8 million different books in its online store. The Library of Congress has more than 16 million books in its collection.
With that many books in existence, titles are bound to be repeated. So as an author, what are your obligations when you’re selecting a title? You have three primary areas of concern: Copyright, trademark, and marketability.
Last year, I prepared to self-publish a traditional fantasy novel for adults that had previously been published as a middle grade novel by a traditional publisher. Following my business plan for the new edition, I decided to update the title. After much contemplation, I selected a new title that perfectly reflected the mood, tone, characters, and plot of my book: Rebel Rising.
Immediately upon selecting my new title, I checked to see if it was already in use. I searched Goodreads, Amazon, and the Library of Congress, but no one else was using my exact title. (I did find a non-fiction book, Rebels Rising(note the plural), about America’s cities during the Revolutionary War.)
Based on the lack of any exact match (and only one similar title in a very different genre), I commissioned a book cover with my title. I also began a marketing campaign, including newsletter teasers, blog posts, and social media posts. I purchased release-week ads at several newsletter services.
Two weeks before my February 9, 2017 launch date, I uploaded my book for sale at various vendors. I encountered no problems at CreateSpace, Draft2Digital, Google Play, Kindle, Kobo, Nook Press, or Smashwords. However, when I loaded the book at iBooks – the last of my vendors – I discovered another book with the identical title, due to be published by Disney Lucasfilm Press. The Disney book was a prequel to the smash hit movie Rogue One. It was scheduled to be published on May 2, 2017.
Immediately, I needed to evaluate my legal and business positions, to determine whether I could and should proceed with publishing my book under the same name as the Disney book.
Under the laws of the United States, titles cannot be copyrighted. Section 102 of the Copyright Act provides copyright protection for “original works of authorship.” That originality requirement mandates that works contain a certain minimum amount of authorship. Titles (along with product names, pseudonyms, catchphrases, mottoes, and slogans) are too short to be covered by copyright protection.
The United States Copyright Office sets forth its position in Circular 34 (one of a series of written documents that explain copyright law in straightforward non-legalese.) Circular 34 is only two pages long; it does not provide any elaborate legal arguments. The matter is cut and dried. See, https://www.copyright.gov/circs/circ34.pdf(Incidentally, in the United Kingdom, case law reaches the same decision. Dick v. Yateswas decided in 1881, concluding that a title is not long enough to constitute a literary work.)
Copyright law, therefore, gave me perfect protection. No copyright law could prohibit my publishing my book under the title Rebel Rising.
Copyright law, however, is not the only intellectual property law that relates to titles. Some titles are protected under trademark law.
While copyright law exists to protect authors, trademark law is designed to protect consumers. A trademark indicates that a product comes from a specific source. Consumers who purchase XYZ brand of product from are guaranteed that the product was in fact created by the XYZ company. (Trademarks are used on physical goods; service marks are used on services. Both can be referred to as “marks.”) In the United States, there are three different “regimes” of trademark law: Federal, State, and common law.
Federal trademarks are registered with the United States Patent and Trademark Office (“PTO.”) Trademark owners file an application, declaring their exclusive right to use a trademark on carefully described products and services. Government attorneys review that application, often posing detailed questions to determine the extent of that right. Ultimately, if a federal registration is granted, the trademark owner has the exclusive right to use the trademark throughout the United States (even if the owner has not yet actually sold goods throughout the country.) The owner may use the ® symbol next to the trademark when it is displayed on goods.
State trademarks follow a similar legal framework (often working through the State Secretary of State office). Successful state trademark owners, though, only have the exclusive right to use the trademark in that state. (Another person could use the identical trademark in the next state over.) In practice, few people obtain state trademark registrations in the current marketplace.
Some trademark owners don’t go through any process to register their trademarks. Instead, they rely on common law protection, exercising the exclusive right to use the trademark in those geographic areas where they have actually sold goods. Common law trademark owners have no rights beyond the boundaries of actual sales. They may use the ™ symbol on their goods.
Focus on Federal Trademarks
As a practical matter, federal trademarks are most frequently the subject of rights disputes; attentive authors consider them most closely when evaluating possible book titles. Authors may obtain federal trademark registrations for book titles, series names or author names used on products – print books, ebooks, and swag, for example. They also may obtain registrations for services – teaching classes, for example. The PTO does not issue many registrations for single titles; it’s difficult for one stand-alone book title to indicate a specific source of goods. Rather, the PTO is more inclined to issue registrations for a series name or an author name.
Thus, for example, author Lynn Raye Harris has obtained a registration for the trademark LYNN RAYE HARRIS, used on “books in the field of romance and adventure” and “clothing, namely shirts, sweatshirts, hats, and jackets.” Author Jillian Dodd has registered the trademark JILLIAN DODD for use on a “series of fiction books.” A corporation controlled by author Kathleen Brooks has registered the trademark FOREVER BLUEGRASS and BLUEGRASS BROTHERS for a “series of fiction books.”
Federal trademark registration records are available online and can be searched at http:// http://tmsearch.uspto.gov(Alas, the search interface is somewhat archaic, but the results are still quite useful.)
Because relatively few titles and series names are protected by federal law, I did not do a trademark search at the time that I selected my intended title, Rebel Rising.When I became aware of the Disney title, though, I checked PTO records. There, I learned that Disney didprotect some individual titles in the Star Wars series, e.g., Star Wars Rogue One, acquiring registrations for goods as varied as books, applesauce, and pajamas. Disney did not, however, have a federal trademark registration for Rebel Rising.
The lack of a federal trademark registration was not a complete insulation against Disney suing me for trademark infringement. Disney is notoriously litigious with its intellectual property, building and policing its media empire. If Disney were to stake a trademark claim in its Rebel Risingbook, litigation could become drawn out and costly, as we each attempted to prove the geographic extent of our use of the mark on books by specific dates.
Moreover, Disney mightdecide to register its trademark at some point in the future. Then, I would be restricted to selling my books in the specific geographic regions and in the specific formats that I had used prior to Disney’s federal registration.
Strictly speaking, though, if I wanted to gamble on possible litigation against the Disney empire, I could go forward with my business plans. There was no copyright or trademark registration that mandated I set aside my title. However, legal considerations never stand alone. I needed to consider marketing matters as well.
I discovered the Disney Rebel Risingtitle approximately two days after it was announced to the public. At that time, when I ran a Google search for the title, I found more than 100 web pages that discussed the Disney book. (My search was done more than three months before the book was actually available.)
Presumably, after my book was released, some Google searches would refer to it. I would mention the book on my own website and through my own social media, and some of those references might be echoed by other authors, editors, and people interested in my genre.
Nevertheless, the Disney empire has a far broader reach than I—an individual, self-published author—could ever hope to achieve. I could rationally anticipate that Disney’s title would continue to reach far more readers far faster than I could reach them. That reach would correspond to increased presence in search engines, further burying my book and throttling my discoverability, even though Disney’s book had not yet actually launched.
Ultimately, I concluded that keeping the Rebel Risingtitle gave Disney too much power – actual and potential – over my marketing plans. The majority of users searching for my book would have to wade through dozens (possibly hundreds) of references to Disney’s book, before they found mine. I changed the title of my book to Rebel Flight, paying to change my book cover, and forfeiting advertising dollars where advertisers would not let me change the title.
(My decision might have been different if the other Rebel Rising book had been published by a smaller publisher, or if it were in a completely different genre, or if it were scheduled for publication a year or more after my release. In fact, another author published a steampunk fantasy titled Rebels Rising(note the plural) on April 3, 2017, approximately two months after my book and one month before Disney’s.)
There is no perfect system for choosing a title. There are, however, best practices you can apply:
- Develop a list of one or more preferred titles.
- Check each title against databases of existing titles, keeping in mind similarities and differences in genre and audience. Those databases include:
- Goodreads – http://www.goodreads.com
- Amazon – http://www.amazon.com
- Library of Congress – http://cocatalog.loc.gov
- Check each title against federally registered trademarks – http://tmsearch.uspto.gov
- If your preferred title has no identical match and no closely similar match, go forward (but repeat your search immediately before book launch.)
- If your preferred title has an identical or closely similar match:
- If the title has been registered as a federal trademark, discard the title.
- If the title is not federally registered, weigh the marketing considerations of going forward, including your ability to reach your readers, to purchase your advertising, and to otherwise market your book while avoiding confusion with the pre-existing title.
Most authors find choosing a title to be a substantial challenge. Authors are disappointed when they discover that one or more books already has an identical or similar title to an author’s first choice. If it becomes necessary to change a title, the author is likely to bear substantial cost in cover design and loss of advertising, not to mention loss of momentum in building a successful launch. Early and frequent evaluation of possible titles is vital to preserve an author’s financial and marketing interests.