Tuesday, September 25, 2018

A Trademarks Lesson

After having written in this blog for a decade and working with IP attorneys for over 30 years, how could I have missed the boat so easily? Well, probably because human beings start whatever with an idea, then the action-prone ones among us act on it, and only later we try to shoehorn the whole thing into a well thought out plan.  Some of the initial creativity by then may be quite hard to force back into the box.

Here goes my story:
In a prior post, I told how I checked one off my bucket list by finally, in haste to be sure, self-e-publishing a novel that had taken me over ten years to write. The original title, back in 2006 had been The Yoda Machine. The title and characters names came from the days of Star Wars movies as described in the book. Spoiler alert: my children called me Yoda (old ugly know-it-all) after I called them Jedi on occasion. Neither I or they were trying to profit from the Star-Wars-mania of the time and surely not in 2006 when I started writing and the franchise had gone dormant for years. We just used figures of the popular culture of the time as nicknames.  In 2006 when the novel was started Star Wars was at best a memory for 30-somethings and old folks. Over ten years went by. Eventually, the novel was finished n 2018 and when the time came, it was published with, surprise surprise, the same title.

And here comes the lesson for the entrepreneur:
It turns out that I have a close friend, John, whose IP attorney career comfortably puts him in the Top 10 in IP in the US tech industry, and particularly through the time of Star Wars popularity. He knew the names, the rules, the trademarks and the owners. He warned me that my use of Yoda could be a trademark infringement.  Naturally, changing the names seemed to trash a memory of a real life story, so I kept the title and ignored the warning. 
After one distributor requested proof of right-to-use a registered name, I wrote Lucasfilms to request permission to use the names Yoda and Jedi.  As an enticement, I offered a percentage of the $ 0 in royalties expected from my book to be given away for free.  As John predicted, the reply promptly arrived from some lawyer to explain how the name has great value, was developed at great cost, cannot be used freely, must be protected, blah blah.  The fact that I had no commercial advantage from my use and that popular culture has now incorporated Yoda in breakfast cereals, audio headsets, Pez (RT) dispensers and countless images, none of it was of consequence.
I asked John if I could I argue that, in fact, I was providing free advertising? He advised against it noting that a sailboat should not argue the sail's right of way against an aircraft carrier or oil tanker.

And so it was that "The Yoda Machine" was defunct before its maiden flight (no copies had been downloaded). It was re-released as "The Yogi Machine" with some unnatural twists in the story to rationalize new character names. I hope the romance of the story will still come through. If not it will prove that the attorney was correct and no value existed in my story except that created by his client whose IP I infringed. A question remains though: if downloads of the second title exceed the first, could that, in some other debate, support a claim that there was little value to the former name? These, of course, are debates for IP attorneys so we won't go there now.

The lesson remains: no matter how trivial the use of any word in the language you may be infringing under the Byzantine rules of the USPTO. The oddity of the word or how often it may be used in common discourse is no protection, even if you have no gain, if you face a determined litigator with deep pockets. The only solution is to go along for as long as current USPTO rules apply. Someday, perhaps, as now envisioned in The Yogi Machine, the rules will change and common use of the language will again be free to all.

For now, beware.