They always say “Don’t judge a book by its cover,” but in the real world covers—and titles—can be of vital importance in selling books. And when something has value, you want to protect it, but you need to take care in how you go about it.
The law is clear that you cannot trademark individual book titles, but a title for a series of books can be trademarked since it serves the role of a brand. Recently, a romance writer managed to obtain a trademark registration for the word “cocky” in connection with a series of romance books, effectively giving herself a monopoly over a term that is common in the genre. In addition to threatening other romance authors with potential trademark infringement lawsuits, she requested Amazon to take down pages for other authors’ books because they used “cocky” in their titles, and Amazon initially complied because of the trademark registration. The #Cockygate dispute even made it into the media.
Before the the story broke, the Romance Writers of America brought the matter to our attention, and we reached out to Amazon on behalf of members. We advised Amazon about potential legal problems with the validity of the trademark, such as the fact that the term was already in wide use in the marketplace before the trademark application. In addition, we informed them that courts have held that using a trademark in the title of an expressive (essentially an artistic) work often does not rise to the level of infringement. Courts will first look to whether the title has artistic relevance to the work—and then, if it does, whether the title expressly misleads someone about the source or content of the work. We asked Amazon to restore the books to their site—as did the RWA—and they complied within hours of our request. We are continuing to work with the RWA to address this trademark issue, including bringing a trademark cancellation action if necessary.
As a side note, we are also currently working with the RWA and Amazon on issues relating to Amazon’s misclassification of some romance novels, and in particular their policies for categorizing books as erotica. These issues should be resolvable, since authors and Amazon share the goal of allowing readers to better access their desired type of reading material. As Amazon has agreed, we all want to sell more books. If you have concerns about how your book has been classified by Amazon’s system (for example, if it’s being placed in an inappropriate genre), you can report this to your publisher or to firstname.lastname@example.org—and if that proves ineffective, let us know and we will pursue the matter on your behalf.