An ongoing dispute over the trademark rights to "To Kill a Mockingbird" has a new venue and a sympathetic defendant. Harper Lee's attorneys filed a trademark infringement suit earlier this month in Mobile, Alabama's federal district court against the Monroe County Heritage Museum.
According to the complaint, the museum uses tokillamockingbird.com as its web address, touts its building as the model for the novel's courthouse, and uses the novel to sell unlicensed aprons, hand towels and keychains. Despite the museum’s claim that its purpose is historical, Lee's attorneys say “its primary mission is to trade upon the fictional story, settings and characters that Harper Lee created in To Kill a Mockingbird, and Harper Lee’s own renown as one of the nation’s most celebrated authors.”
Lee is asking the court to stop the violations, award her money damages and force the museum to give up the tokillamockingbird.com domain name.
The museum's attorney, Matthew I. Goforth, responded to the suit on Friday, claiming "every single statement in the lawsuit is either false, meritless, or both." He places the blame squarely with Harper Lee's "greedy handlers" in a statement to ABCnews.com:
"It is sad that Harper Lee's greedy handlers have seen fit to attack the non-profit museum in her hometown that has been honoring her legacy and the town's rich history associated with that legacy for over 20 years," Goforth, with Gordon, Dana, Knight & Gilmore, LLC.
Mr. Goforth doesn't mention, as far as we can tell, that he filed an opposition to Harper Lee's federal trademark application on behalf of the museum two months ago. Here's Monroe County Heritage Museum v. Nelle Harper Lee, filed August 19, 2013:
2013 August 19 Monroe Heritage Museum v Harper Lee (Text)
That document admits the key allegations in Harper Lee's new lawsuit. Paragraph 2 of Monroe County's filing, for example, provides images of various "mockingbird design marks" that it claims as its own "Opposer's Marks," and the museum admits in Paragraph 3 to using those mockingbird designs to sell:
clothing for men and women, namely, aprons, t-shirts and outerwear in the nature of fleece vests; clothing for children, namely, onesies for babies and t- shirts for toddlers and children. In addition to clothing items, Opposer has also engaged in the sale of gift shop items in the nature of (by way of non-limiting examples): tote bags, hand towels, flour sack towels, soaps, wine bags, linen napkins, keychains, magnets, memo pads, ornaments, glass ware, plastic/acrylic tumbler glasses, seat cushions, car decals, bumper stickers, coasters, bookmarks, teacher’s instructional guides, fans, postcard and beverage huggers.
In Paragraph 6 of its effort to block Harper Lee from registering a trademark in To Kill a Mockingbird, the museum acknowledges its use of tokillamockingbird.com for commercial purposes:
Opposer has advertised and promoted the clothing and gift shop goods bearing Opposer’s Marks via Opposer’s website, www.tokillamockingbird.com, and receives email and telephone orders for goods sold under the Opposer’s Marks from throughout the United States and from foreign countries.
Robert Clarida, Lee's attorney, declined to discuss Lee's lawsuit against the museum. But in court papers, Lee's attorneys say the 25-year-old museum has a history of infringing on the author's trademarks, and has grown more brazen since she suffered a stroke. In the past, it would respond to cease-and-desist demands, such as when it withdrew its "Calpurnia's Cook Book," named for the housekeeper in Mockingbird.
Now, according to the filing, the museum, "apparently believes she lacks the desire to police her trademarks. The Defendant is mistaken."
We'll be watching this one closely.