Harper Lee, the author of “To Kill a Mockingbird” has sued her hometown’s museum for the unauthorised commercial “use of the protected names and trademarks of ‘Harper Lee’ and ‘To Kill a Mockingbird’”. The museum claims to be exercising freedom of expression, and celebrating Harper Lee and her novel, which was set in a fictional town based on the town where the museum is now located. A number of factors make the dispute noteworthy, beyond the headline-grabbing appeal of the Pulitzer Prize-winning author’s name – not least the way that concerns over public perception can influence litigation tactics.
The museum fully acknowledges its most famous resident. Its website, owned since 1998, is www.tokillamockingbird.com; the town logo features an image of a mockingbird and the cupola of the Old County Courthouse; they have a replica of the courtroom from the book; and their gift shop sells memorabilia including T-shirts and cookware.
The current dispute seems predicated by the museum’s opposition to Lee’s attempt to register the mark TO KILL A MOCKINGBIRD for clothing. In its opposition the museum states: “At least one or more of opposer’s marks have been used continuously and actively in commerce in connection with selling items of clothing and various gift shop items since at least as early as 1995.”
The lawsuit counters that Lee “owns the marks and names TO KILL A MOCKINGBIRD and HARPER LEE… [and] first began to use TO KILL A MOCKINGBIRD and HARPER LEE in connection with the business of selling books in July 1960.The TO KILL A MOCKINGBIRD mark is registered in the State of Alabama for ‘books’…The plaintiff has extensively used, advertised and promoted the TO KILL A MOCKINGBIRD and HARPER LEE marks and names… As a result of its advertisement and promotion, the HARPER LEE mark and name has become highly distinctive and has become well and favourably known throughout the nation as identifying the plaintiff and her business.”
Considering the dispute, Robert C Cumbow of Graham & Dunn observes: “If the museum adopted and used the phrase ‘to kill a mockingbird’ for clothing before Lee did, it has the prior trademark right -unless Lee can show that use of that phrase violates her own right of publicity or confuses consumers as to her sponsorship or endorsement of the museum and its activities… If she can show that consumers are likely to be confused as to her affiliation with the museum, she could succeed in an action for trademark infringement regarding her own personal name, as well as an action for false endorsement and false association under the federal unfair competition law embodied in Section 43(a) of the Lanham Trademark Act.”
Turning to dilution, Lee could argue that the mark is uniquely associated with her, and that the defendant’s use of the mark diminishes the mark’s selling power by ‘blurring’ its unique association with its owner. Cumbow adds: “I know of no case, however, in which an individual’s name or the title of a work that individual created have been found to be diluted by third-party references. Indeed, the doctrine of nominative fair use allows the use of the trademarks of others as long as those trademarks are necessary to identify the person or entity being referred to, the user uses no more of the mark than necessary to make the reference, and there is no suggestion of sponsorship or endorsement. Nominative fair use, however, is not recognised in all circuits of the United States, so the applicability of this doctrine could be a point of argument.”
With a claim for violation of right of publicity, Lee could argue that her likeness, her name, and the title of her book are all attributes of her personality, uniquely calling her to mind; and that the museum has used them without her permission and for commercial gain. “The last point is likely to be the parties’ bone of contention, and the case is likely to turn on whether the museum has properly characterised its activities as non-commercial or it has in fact gained an undeserved benefit from its merchandising uses of Lee’s personal attributes.”
Ultimately, the case will be settled on the facts and, in this way, is a trademark case like many others, despite the celebrity angle. One curious aspect, however, is the PR aspect of the dispute. For the museum, there is a clear need to focus attention away from a schism between it and the very author it celebrates. Perhaps with this in mind, Matthew Goforth, representing the museum, issued a carefully worded statement criticising those pulling the strings behind the 87-year-old author: “It is sad that Harper Lee’s greedy handlers have seen fit to attack the non-profit museum in her hometown that has been honouring her legacy and the town’s rich history associated with that legacy for over 20 years. Unfortunately for Harper Lee, those handlers are doing nothing but squandering her money with this lawsuit.”
The statement may have resonance because Lee has previously been involved a claim against a literary agent for allegedly diverting her rights and royalties. Reflecting on the statement, Cumbow suggests it could be an effort to “avoid being perceived as picking on a beloved elder statesman of the American arts, and to exploit the fact that Lee previously sued a literary agent who had allegedly diverted her rights and royalties to himself. The museum seems to think it’s safer to suggest that Lee’s lawyers are now exploiting her in the same way.”
However, he warns that there could be PR implications for Lee too, concluding: “Any way you look at it, this litigation is likely to be damaging to both parties. The museum purports to admire and celebrate Lee and her work, and yet they are publicly fighting her and making accusations about her and her lawyers’ motives. At the same time, Lee risks transforming her image from that of a beloved author of a widely admired novel to that of a bully seeking to over-reach in the protection of what she perceives as her protectable rights and what much of the public may prefer to regard as public property.”
Whether the case reaches the courtroom and provides the same level of drama as Atticus Finch experienced in Lee’s novel remains to be seen. However, for now it provides an interesting case study of the way concerns over public perception can influence the approach taken in a dispute.
This blog was first published in World Trademark Review on 29 October 2013