Why *Not* to Use Trademarks in Fiction*

Today’s post takes a look at the use of trademarks and “brand names” in fiction.*

For the most part, I advise clients not to use trademarks in fiction if an alternative will do. If use of a trademark or brand is unavoidable, the author needs to be certain the trademark is used in a legally-permitted way. Otherwise, the author risks a trademark infringement–or “trademark disparagement” lawsuit, both of which carry substantial legal penalties.

The benefits of “fictitious branding” and generics usually outweigh any benefit the author could obtain from use of a real trademark.

Authors have two relatively simple alternatives to use of trademarks and brand names in fiction: creating a fictitious brand and using a generic word in place of the trademark.

Generic words like “cola” and “coffee shop” have no limitations on their use, meaning that an author can use them without worrying about trademark lawsuits and other consequences.

Authors who prefer more distinctiveness than generic options offer can also create a fictitious brand for use in their novels or other works. Good examples are “Duff Beer” (used in The Simpsons TV show) and J.K. Rowling’s famous Bertie Botts’ Every Flavor Beans. Fictitious brands allow the author to “create” not only the trademark but also the popularity and reputation of the item (and the fictitious company that produces it). This has enormous advantages, because the author isn’t constrained to positive comments (see below) or the product’s “real” history.

In addition, use of a fictitious brand gives the author copyright protection in his or her “brand” and creation.

Use of real trademarks and brands creates potential legal liability for the author, but it can be done if the use complies with law.

There are situations where it’s legal for authors to use genuine trademarks and brand names. However, authors need to be careful, because many large companies (including Apple and Microsoft) protect and guard their trademarks with great vigilance. Lawsuits are expensive, even if you ultimately win – so it’s wise to research whether or not a company you’re using tries to restrict the use of its brands in fiction.

When using trademarks and brand names in fiction, beware of “product disparagement” – anything that casts the product or brand in a negative light. Disparagement is often legally actionable – so please don’t poison a victim with an Oreo or a Starbucks latte. If you’re going to use brand names at all, make sure you’re using them in a positive light (something the company would approve of). Even positive use of a brand or trademark doesn’t guarantee the owner’s approval, however, which is one strong argument for fictitious brands. And while the trademark owner’s approval isn’t always required for legal uses, litigation is expensive for the winner, too.

If you have any question about whether use of a trademark or brand name is legally acceptable, consult a publishing lawyer before you use it in your fiction. Ignorance of the law is NOT a defense to copyright or trademark infringement.

Keep in mind that use of a brand or trademark in your fiction can “date” your work, and make it seem less relevant in future years. This is particularly true for technology-related brands, which change at an increasing pace. Before using a real brand in your fiction, consider whether it might make future audiences think your work is “stale.”

Also, ask yourself what real benefit you receive from using a genuine brand in your work. Does anyone truly care whether your character drinks a specific brand of root beer? Trademarks are consumer shorthand – a shortcut to brand recognition. Do you, as an author, need shortcuts to make a point?

Sometimes, a brand does add to a story. However, unless the brand is making a necessary (and legal) point – the disadvantages of trademark use will often outweigh the benefits.

*Since I’m in Japan on a research trip, this is a re-post of a topic we looked at many months ago. If you haven’t seen it, it’s new to you! And if you did see it…it’s always a good idea to refresh these topics now and again.

Tune into my Twitter stream (@SusanSpann) or check out the #PubLaw Twitter hashtag for continuing new, live content while I’m in Japan, and brand-new publishing legal posts will resume on June 24!

Have questions about this or other publishing legal and business topics? Feel free to ask in the comments or email me.