So, first, to get it over with: I wrote a book. It’s called My Mother Had Me Tested! and it’s a collection of funny mad science/geek-related short stories.
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ISSUE THREE: REFERENCE TO TRADEMARKED GOODS
In one scene, there is a reference to “The Clapper,” which is a gizmo that allows you to switch electrical devices on and off by clapping your hands. “Clapper” is a registered trademark (USPTO Reg. No 1428261) used to identify acoustically operated switches. Just to make things fun, it’s not a particularly flattering reference (a character refers to it in his head as “infomercial junk.”)
The first point of analysis here is that the book is not an acoustically operated switch, nor is it an advertisement for acoustically operated switches. There is zero likelihood of confusion here. The reference is properly structured (it’s capitalized, and does not genericize the mark. I didn’t include the ® symbol, but in my opinion, it was not necessary, because I am not trying to put people on notice that the mark is registered and protectable since my use of it is not related to the actual goods nor a commercial usage.) So far as straight trademark infringement, I’m good.
Similarly, there is no question of association or endorsement – in other words, I’m not saying or implying that this is an approved usage, or that the people who make the Clapper endorse my book. There’s just nothing there that would make a reasonable person think either of those things were true. This will usually be true of such usages, but when in doubt, talk to an intellectual property attorney.
There is, however, the issue of “tarnishing.” Tarnishing is a legal concept where the holder of a mark claims that a usage, even if not directly infringing, diminishes the value of the mark or otherwise unfairly benefits the unauthorized user to the detriment of the holder of the mark. To be entitled to “tarnishing” protection, a mark must usually be a “famous” mark – I’m assuming arguendo that “Clapper” is a famous mark. If you want to use a trademark because of its cultural associations, that’s actually a resonable indication that the mark may be famous, because otherwise the reference wouldn’t work. So beware!
In any event, in this case, the Clapper is already the subject of innumerable cultural references very similar to the one I made. Calling it “infomercial junk” might be pushing it a little, but not only is it in my opinion in line with the general cultural perception of the device, it’s protected opinion. And since there is no likelihood of confusion, nor is it unclear to a reasonable person that this is an opinion, the First Amendment would be, in my opinion, a complete defense to any accusation that the usage was tarnishing.
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ISSUE FIVE: REFERENCE TO ACTUAL PERSON “FRED ROGERS”
Without getting into the actual circumstances (Buy the book and fi… no, I promised I wouldn’t do that again.) one of the characters in one of the stories appears to be Mr. (Fred) Rogers, the beloved children’s television personality. Uh-oh. Now I’ve done it. Or have I?
Not so much, it turns out. The very first thing that the character does is say that he’s not Mr. Rogers (and then explain why he looks like Mr. Rogers.) Which is good, because he’s going to do something very un-Mr.-Rogers-like. But still. What are the potential issues here? (Note: It is entirely possible for a person to trademark their name and/or likeness. I’m not going to do another review of potential trademark issues but it is a factor which must also be considered when doing this kind of analysis.)
First, there’s the basic issue of using Mr. Rogers’ name, which is part of his “likeness.” Using someone else’s likeness may be a violation of their Right of Publicity, which in the US is a state-level right. My own state, Illinois, has one of the strictest ROP statutes in the country (765 ILCS 1075, and yes I do have that memorized.) However, courts have ruled that state ROP statutes are subordinate to the First Amendment of the US Constitution, subject to the usual limitations on defamation and commercial speech. Since this is clearly an artistic usage, it’s very unlikely a court would find it subject to the Right of Publicity.
But wait. This Mr. Rogers is going to do something bad. Is this defamatory? Have I libelslandered Mr. Rogers? No, because the character clearly identifies himself as not Mr. Rogers. No reasonable person would believe that the work is stating or implying that the actual Mr. Rogers would do this and/or agree with its being done. And, reading the work as a whole, contextually, it’s clear that this isn’t merely “plausibly deniable,” it’s abundantly clear to any reasonable person that the character has nothing to do with Mr. Rogers other than his outward appearance. Basically, he’s wearing a really, really good Mr. Rogers mask. Arguing that this is somehow defamatory to or associated with the real Mr. Rogers is like saying somebody wearing a Bill Clinton mask while he robs a bank is defaming or attempting to frame Bill Clinton for the robbery.
Behind all of this, of course, is the fact that the actual Mr. Rogers passed away in 2003. In general, it’s not possible to defame a dead person. So even if the use were defamatory (which it isn’t) I’d have that defense as well. However, in many states, the Right of Publicity does survive and is an asset of the person’s estate for quite some time after their deaths. So just because a person is dead, don’t think for a minute that you can automatically use their likeness in whatever way you wish.