Monthly Archives: January 2010

Asked & Answered: Can a Public Domain Book be a Trademark?

Q:  I have a letter from the Copyright office that a book, written in 1880, was in public domain.  I wrote an adaptation of that book into a screenplay.  I then found that someone had taken the authors works (28 books) and trademarked them on the Internet.  I talked to an attorney who said that I would probably win in court, but if they fought it, I would have to defend it.

What is your take?  Can I move forward, stating that it is “based on” or just write a new  original script, using the same concept?

A:  This is one of those questions that really requires a lawyer to have all of the specifics, and to conduct a bit of research before giving a definitive answer.

Generally, if the book is indeed in the public domain, you're free to proceed with your adaptation.  But, the fact that the title of that book has been registered as a trademark MIGHT interfere with your use of that title as the title for the film, but since trademark protection extends only to the specific category(ies) of the goods or services for which they're registered, it's possible that the registration doesn't even extend to a film project by the title in question.

I'd advise consulting a lawyer who can run a quick search of trademark office records to clarify what's protected.


This is intended as general information only and does not establish an attorney-client relationship. It is not a substitute for a private, independent consultation with an attorney selected to advise you after a full investigation of the facts and law relevant to your matter. We will not be responsible for readers’ detrimental reliance upon the information appearing in this feature.

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Entertainment Law Update Podcast – Episode 8 is now available.

[audio:] Download Episode (right click) Approximate Running Time: 01:06 Episode #8 of my Entertainment Law Update Podcast is now available. For more information, see the show notes at Topics: Nexus 1 mobile phone raises ire from author’s estate Naked High School Musical Stars Ringback music tones Fox’s unlicensed use of Jackson footage Marvel v.… Continue Reading

Asked & Answered: protection of work against foreign infringement

Q:  As most writer’s work is filed with either the WGA or copyrighted through the USPTO, how does one protect their work from an overseas company asking to see your screenplay? As the United States’ market seems to be tightening, it seems like producers and prodcos from other countries are much more receptive and open… Continue Reading

Speaking at Institute for International Film Financing (link updated)

CORRECTION:  the link to the event has been revised. Thursday, January 14, 2010, from 7- 10pm, I’ll be speaking at the Institute for International Film Financing.  I’ll be giving an abbreviated version of my presentation entitled “6 Ways to Finance A Feature Film”, and joining a panel of other film financing experts to take questions… Continue Reading

I’ve been elected President of the Academy of New Musical Theatre

I’m proud to announce that I’ve been elected to a two-year term as President of the Los Angeles based Academy of New Musical Theatre. This is a non-profit organization with which I’ve been involved for a number of years.

ANMT is dedicated to fostering the creation, development, and production of new musicals for the stage. The organization provides services for writers, producers, actors and others.
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Asked & Answered: Copyright duration and the public domain.

Q: If 1977 is the dividing line for copyright laws, is it possible to, say, erase all challenging doubts by merging two pre-1977 stories and create an entirely new work? Such as, say, LITTLE WOMEN (1800s) meets the rogue PAL JOEY (1940). Or must one check to see if Louisa Mae Olcott’s estate still has… Continue Reading

4 ways do-it-yourself-ers mess up trademark applications

I’m frequently asked by clients to help them “fix” defective applications for trademark registration, after the U.S. Patent and Trademark Office’s examiners have rejected them. As often as not, the rejections are the result of simple mistakes, but once they’re made, the damage can be difficult (and costly) to repair.

Anthony Verna is an Intellectual Property lawyer in New Jersey, and he’s written a blog post outlining four of the most common mistakes made in trademark registrations. Here’s the link to his article.

I’ll bottom line it for you with this list of caveats:

* Be sure what you’re registering is actually your trademark. A trademark is a symbol, word or phrase that is affixed to goods or services to identify their source or origin. A business name is not (necessarily) a trademark.
* Be sure the applicant for the registration is actually the owner of the trademark. Is the company the owner of the mark, or is the individual person the owner?
* Be sure the date(s) of first use are accurate. Do the specimens you’re filing support the date you’re claiming? If not, your application may be rejected. Also, be sure the specimens are appropriate for the goods/services covered by the registration.
* Be sure the description of the goods/services is accurate and complete, covering all of the goods/services sold under the mark, but not overbroad. Recent rulings by the Trademark Trial and Appeals Board have made it clear that an overbroad or inaccurate description may be considered fraudulent, and can result in cancellation of the registration.

Registering a trademark is an important part of protecting your business’ intellectual property assets. Doing it wrong can be costly, and may result in loss of the asset altogether. The help of an experienced attorney can streamline the process and greatly increases the chances of success.
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