The Tolkien estate over-reaches

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The latest trademark atrocity is due to the Tolkien estate, whose lawyers have written to Zazzle demanding that it cease to advertise and sell buttons reading "While you were reading Tolkien, I was watching Evangelion", which, they claim, infringes on the trademark owned by the estate. They are almost certainly wrong. The rights granted trademark holders are very limited and have to do with identification of products and services. The Tolkien trademark means that you and I cannot market Tolkien branded items – it most emphatically does not mean that we cannot use the word "Tolkien" in other contexts, such as discussing J. R. Tolkien himself, his work, or Tolkien-branded items. Trademark is not intended to, and does not, give the holder a general power to control the use of words.

Due to the "use it or lose it" nature of trademark law, trademark holders do have to be a bit aggressive in defense of their marks, but that only means that they have to question borderline uses. Cases like this lie far outside the realm of legitimate trademark enforcement. What I wonder is, are the lawyers who write such letters actually ignorant of trademark law, which is to say incompetent, or do they know full well that there is no legal basis for their claims, in which case their behavior is unethical?



49 Comments

  1. The Ridger said,

    February 27, 2011 @ 8:09 pm

    So, essentially they're forbidding anybody to talk about Tolkien? That's … shortsighted of them.

  2. Bill Poser said,

    February 27, 2011 @ 8:20 pm

    Well, their legal position amounts to claiming the power to forbid anyone to talk about Tolkien. Presumably they will only exercise that power when they don't like what is said or consider it potential competition.

    If trademark law actually were correctly interpreted as giving holders a general power of control over the use of their marks, the law would certainly be unconstitutional since it would violate the First Amendment's guarantee of freedom of speech. Trademarks and copyrights interfere with freedom of speech and so can only be tolerated if carefully limited.

  3. Mr Fnortner said,

    February 27, 2011 @ 8:24 pm

    In the era of RIAA takedown notices and DHS website seizures, such an action by Tolkien attorneys is unexceptional. By attacking the far edge of the envelope they are better able to defend the middle.

  4. Bill Poser said,

    February 27, 2011 @ 8:24 pm

    Even legitimate trademark enforcement can be short-sighted. The owner of a mark needs to consider whether an infringing use helps a competitor more than the owner. An unlicensed Tolkien T-shirt may reduce the profits of the estate from T-shirt sales, but it also provides free advertising. The estate may well be better off unilaterally licensing such a product at no cost than stomping on it.

  5. bfwebster said,

    February 27, 2011 @ 8:26 pm

    Zazzle has, of course, responded in the best possible way. Heh.

  6. Thomas Westgard said,

    February 27, 2011 @ 8:26 pm

    There's an inconsistency here that bothers me. When you publish points about linguistics, you're careful to reference relevant authorities that support your contentions. When it comes to trademark law, you make very broad assertions about what's permissible, but you don't cite any authorities to that effect. I realize you're not lawyers, but it's strange to see you lose track of the value of academic rigor when you leave your own field of expertise. Wouldn't it make a lot more sense to ask a trademark lawyer? This smells like anti-lawyer troll bait to me.

  7. Bill Poser said,

    February 27, 2011 @ 8:34 pm

    Thomas@Well, we don't generally find it necessary to reference general linguistic principles. It's usually just factual results. The point here is so plain and general that the suitable reference would be any exposition of trademark law. It isn't a point of detail that depends on a particular judicial opinion or a fine point of interpretation that needs a reference to a specialized treatise. I also happen to know that there are lawyers who regularly read Language Log and will comment if they see something out of sorts.

    There's nothing generally anti-lawyer here or in my general views. Several of my good friends are lawyers, not to mention my brother. My sister-in-law is even an IP lawyer. I am not one who sees lawyers as, generally, a blight on society. They're quite useful. I do think, however, that there is widespread abuse of claims of trademark infringement, and it is of a sort that is relevant to linguistics (unlike, e.g., abusive interpretation of laws on intelligence gathering or torture), because what the abusers are claiming is rather broad control over the use of language.

  8. Dan K said,

    February 27, 2011 @ 8:56 pm

    I don't know that this is such a clearcut case. Reading some of the summaries I've seen of this story, you would think the Tolkien estate had gone after someone who was just discussing Tolkien. That's not exactly the case here. They went after a company that was selling buttons with a little blurb about Tolkien. While I guess you could make the argument that the button is just the publication medium for the commentary encapsulated in that single sentence, you could also make the argument that this is no less a Tolkien-branded product than a button with the phrase "Tolkien Lives" or something like that (which I think would be quite clearly Tolkien branded by any standard). In the unlikely event this button got to be hugely popular, perhaps morphed into a line of wildly popular t-shirts, hats, etc., you can imagine a reasonable argument that it would erode the trademark in a way that genuine commentary would not.

    Don't get me wrong, I think the actions of Tolkien's estate (via lawyers) in this instance are stupid and pointless, and I'd love to see this action backfire in a big way (which it won't). I'm not a huge fan of the idea that a dead person's name can be a trademark (don't even get me started on Walt Disney). But I don't think it helps the argument to pretend that this button is so obviously just an instance of discussion or commentary, with no potential for weakening a legal (unfortunately) trademark.

  9. Jonathan D said,

    February 27, 2011 @ 9:25 pm

    Sure, this example reaches beyond the basic original understanding of trademarks, and maybe it even goes beyond the current law, but there is a very long way between objecting to the use of a name in a slogan on a piece of merchandise, and claiming to be able to stop you speaking about him.

  10. Bill Poser said,

    February 27, 2011 @ 9:40 pm

    Fnortner@The abuses you mention are not really relevant to the issue of aggressive trademark enforcement. In the case of RIAA takedowns, the arguably abusive aspects have to do with the nature of evidence and due process and with the magnitude of compensation. In these cases, the owners of copyrights in music are suing people claimed to have downloaded and/or uploaded for distribution digital copies of songs. This is a matter of copyright, not trademark. Furthermore, there is no question in most cases that the plaintiffs own the relevant copyrights and are entitled to enforce them, nor that, if the defendants did indeed download or upload them, that they infringed the copyright. The major problem with these lawsuits is that very weak evidence on which they are based, which typically takes the form of network monitoring showing that a file that may have contained a copyrighted song was transferred to or from a certain IP address. Whether the file actually did contain the song is often unknown, and who was actually using that IP address at that time is often unknown. The other problem with these cases is the amount of damages. In most suits for damages, the plaintiff can only be awarded actual damages, plus, in certain circumstances, punitive damages. In these cases, however, the law provides for statutory damages that are arguably far greater than the actual damages. While I agree with much of the criticism of the RIAA lawsuits, I don't think that their abusive aspects have much to do with overbroad trademark enforcement.

    The DHS takedowns are problematic for three reasons. First, they are ex parte. The government goes to a court, presents an affidavit, and gets an order. There is no opportunity to present a defence. Second, in at least some cases the sites taken down are, under the law as it has been definitively interpreted by the courts, not engaged in copyright infringement. These sites merely link to other sites from which infringing downloads are available. The government's presentation to the courts in these cases appears to have been improper. Third, many people question whether the federal government ought to be in the business of using its criminal powers to enforce copyright rather than leaving it civil action by the copyright holders. These are different issues from those that arise in the trademark cases, and again, they involve copyright not trademark.

  11. Dan K said,

    February 27, 2011 @ 9:45 pm

    Bill, I don't understand how you can support this statement: "Well, their legal position amounts to claiming the power to forbid anyone to talk about Tolkien."

    That seems like a fairly bizarre spin. Ignoring the word "legal" for a moment, I doubt everyone would agree that producing these buttons for sale is exactly the same thing as merely talking about Tolkien. So far as I know, they haven't gone after people talking about Tolkien on blogs, in news articles or reviews, in academic literature or course syllabi, in telephone conversations, on the street, etc. Do you honestly believe that they're equally likely to go after bloggers who write "I've never liked Tolkien" with no hint of sloganeering?

  12. Bill Poser said,

    February 27, 2011 @ 9:58 pm

    I'll quote from the first book on IP law I pulled off my shelf, Stephen M. McJohn's Intellectual Property (2003). At p. 197 he begins the chapter on "Subject Matter of Trademark Law" with the statement that: "A trademark is a symbol used by a person in commerce to indicate the source of the goods and to distinguish them from the goods sold or made by others." which he refers to 15 U.S.C. 1127. He goes on to explain that the federal trademark law, the Lanham Act, provides several related causes of action. The main one, trademark infringement, he explains as follows: "Someone who uses a registered mark in a way that is likely to cause confusion about the source of goods or services may be liable to the mark's owner for infringement." I won't quote the others as I don't think they change anything relevant.

    This means that I can't sell my own brand of soda and call it "Coca-Cola" because that would clearly create a danger of confusion between my soda and that sold by the Coca-Cola company. It does not mean that I cannot use the word "Coca-Cola" in other contexts in which I am not using it to identify something else. I am free to refer to Coca-Cola in discussing what beverages I like or means of removing rust, and I am free to identify the beverage consumed by a character in a novel that I write as Coca-Cola since none of these uses are likely to cause confusion about the source of goods. If Coca-Cola has not registered the trademark outside of the beverage field, and if it is not a "famous mark", I can even market a line of socket wrenches branded "Coca-Cola" since there is no likelihood of confusion between soda and socket wrenches.

    There's absolutely nothing in the Lanham Act or in the interpretations of it in books such as the one cited to suggest that trademark holders have any sort of general control over the use of their marks. The ONLY thing that the law grants them is the right to the exclusive use of the mark to identify products and services.

    From this perspective, I can't agree that there is anything less than clearcut about this case. What possibility of confusion does a button with the slogan "While you were reading Tolkien, I was watching Evangelion" create? Far from potentially referring to something else, "Tolkien" here refers to the very work on which the brand is based. It's a reference to the brand and as such is 100% fair game for everyone.

  13. Bill Poser said,

    February 27, 2011 @ 10:05 pm

    Dan K@Well, sure, there is a distinction between commercial use and non-commercial use, but I find it hard to classify this case as commercial use. It's "commercial" in that the buttons are sold rather than distributed free, but they're not deriving any commercial advantage from an association with the work of Tolkien, the way the maker of, say, Hobbit dolls, would. This seems to me to be a case of speech about Tolkien that happens to take place on buttons that are sold, not commercial exploitation of the work of Tolkien. To that extent, yes, it seems that the estate is making a very broad claim to be able to control use of the word.

  14. Bill Poser said,

    February 27, 2011 @ 10:07 pm

    While we're on the subject, let me plug a very interesting book on the relationship between freedom of speech and copyright law, Neil Netanel's Copyright's Paradox, Oxford University Press, 2008.

  15. Bill Poser said,

    February 27, 2011 @ 10:17 pm

    For those who want citations, Margreth Barrett, Professor of Law at the Hasting's College of Law, University of California, in Intellectual Property (Emanuel Publishing, 2000) at p. 122: "Trademark law does not give mark owners absolute control over others' use of the words or symbols constituting their marks. As long as another person's use of a plaintiff's mark causes no likelihood of consumer confusion, that person will not be liable for trademark infringement."

  16. Jason said,

    February 27, 2011 @ 10:19 pm

    Christopher Tolkien is indeed going after anyone who talks about JRR Tolkien without his permission. The other lawsuit the Tolkien estate is pursuing right now is a book that uses Tolkien as a semi-fictional character (it's not even the first time this has been done). He's suing based on right-of-publicity and trademark law again.

    http://www.guardian.co.uk/books/2011/feb/26/mirkwood-jrr-tolkien-legal-battle

  17. Thomas Westgard said,

    February 27, 2011 @ 10:36 pm

    Someone is wrong on the Internet.

  18. Mark Mandel said,

    February 27, 2011 @ 10:59 pm

    In other words, Christopher says you can't say "T_l_ien" without his OK.

  19. Mr Fnortner said,

    February 27, 2011 @ 11:27 pm

    Bill Poser, I'm not sure what you have at stake here, but let me assume that it is simple clarity, thus your extensive postings. Thank you for the elaboration on trademark law as a result of my comments. If you reread what I said, I did not confuse copyright and trademark law. I said, essentially, in this era–of aggressive IP rights actions–the behavior of the attorneys is not exceptional.

  20. Dan K said,

    February 27, 2011 @ 11:28 pm

    @Jason, I don't understand your point at all. To a non-lawyer, it feels like there's an obvious difference between talking about JRR Tolkien and writing him into a novel. It seems like lawyers can tell the difference as well, because so far as I know, they don't seem worried about losing the trademark due to any of the things one would consider more obviously discussion, commentary, review, etc. They only seem worried about things like the button (which I do think should probably be considered non-infringing) and the Mirkwood novel (which seems like pretty blatant infringement to me, even if I don't like thew way trademark law works).

    @Bill, You wrote that "they're not deriving any commercial advantage from an association with the work of Tolkien." But the issue isn't his work, right? The trademark in question, I thought, was his name (and likeness and so on).

  21. Jonathan Badger said,

    February 27, 2011 @ 11:35 pm

    As Christopher has made his living taking whatever scraps of his father's writing which remained unpublished and expanding it into publishable volumes, I'm curious if this is going to continue into the next generation. After all, Christopher can't be around for much longer — he fought in the Second World War for crying out loud.

  22. Julian Bradfield said,

    February 28, 2011 @ 5:12 am

    On the whole, I'd suggest not talking about trademark law unless you actually know something about it, which doesn't mean pulling a book of your shelf and quoting a snippet (the old-fashioned equivalent of going to Wikipedia).
    In this case, there appears to be a case for infringement, because the buttons appear to be using one trademark "Tolkien" to promote a competing product "Evangelion". Moreover, the reference to "Tolkien" could be interpreted as disparaging.
    Whether this use comes within infringement (or even dilution) is a matter of interpretation, which is going to be settled by case law and a judge's opinion, not by somebody on Language Log pretending that the Lanham Act is clear and unambiguous – like most natural language, it isn't. All sorts of factors will enter, such as fair use (which is very different between jurisdictions, and like most online cases, this needn't necessarily be a U.S.-only matter), parody, and so on.
    One might certainly hope that judges would come to the "common-sense" conclusion, but the law is not famed for its agreement with common sense.

  23. michael farris said,

    February 28, 2011 @ 5:20 am

    Tolkiien sr died 37 years ago. I can perceive no ethical reason why trademark or copyright should apply to his works.

    I'm all in favor of reasonable copyright and trademark protection but we haven't had that in a long, long, time.

    [(myl) Unlike copyrights, trademarks don't expire, as long as they remain in active use and their registration is appropriately renewed. There are good reasons for this. Bill's point here is not that the trademark is an unreasonable one, but that it's being applied in an unreasonable way.]

  24. Gareth Williams said,

    February 28, 2011 @ 5:50 am

    The text of the Lanham act defines infringement as:

    (a) use in commerce [of] any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive.

    It may be of relevance that what seems to be the trade mark is US 2941708 to TOLKIEN, for use on, among other things, "Printed publications, namely, books, magazines, newspapers and newsletters in the field of literature; photographs, art prints, art illustrations, posters and maps; postcards; cardboard gift boxes; photograph albums, coin albums, stamp albums and scrapbook albums; almanacs; artists' materials, namely canvas for painting, paint brushes, pens, pencils, drawing pads, and painting sets; educational, instructional and teaching materials, namely books and printed instructional materials in the field of literature"

    It seems unlikely that use of the mark on badges / buttons would be considered likely to cause confusion, or to cause mistake, or to deceive. I'd be surprised if buyers of the buttons would be considering TOLKIEN as a mark of origin, rather than simply a reference to the books.

    Disclaimer: I'm not a US trade mark attorney.

  25. nothingmuch said,

    February 28, 2011 @ 6:50 am

    Hanlon's razor comes to mind. I'm still going to guess they're just unethical though.

  26. James said,

    February 28, 2011 @ 7:30 am

    Dan K,

    and the Mirkwood novel (which seems like pretty blatant infringement to me, even if I don't like thew way trademark law works).

    I find this astounding.
    Do you also think it infringes on trademark when a character in a novel drinks Coca-Cola?

    [(myl) In fact, an analogous sort of thing -- visibility of logos, packaging etc. in the background of a scene in a movie, e.g. in a scene shot in a grocery story -- can be a serious issue.]

  27. Ran Ari-Gur said,

    February 28, 2011 @ 8:01 am

    @Julian Bradfield: "A judge's opinion" may well decide the case in a legal sense, but that's not really relevant. Dr. Poser isn't saying "The Tolkien estate won't manage to stop this button"; he's saying (and I quote), "They are almost certainly wrong" when they claim that the button "infringes on the trademark owned by the estate." In an ideal world, of course, the latter claim would imply the former, but we don't live in an ideal world. Judges err sometimes. And trademark cases often get dealt with out of court, meaning that the judge's opinion never comes to bear, because the trademark owner can often make it too expensive for the putative infringer to try to defend itself in court (no matter how solid the latter's case might be).

  28. threeoutside said,

    February 28, 2011 @ 9:27 am

    I beg pardon for inserting a completely ignorant question here, but does it matter which country's trademark laws the matter falls under? Which is my question: is this British law or USA law, and does it make a difference? No one has said which country in this entire conversation.

  29. A Reader said,

    February 28, 2011 @ 9:30 am

    Is there any credible source yet linking this to the Tolkien Estate? I've just seen an angry second hand opinion from a blog, and there's quite good reason to be wary of this sort of badmouthing of the Estate. The entirely distinct Tolkien Enterprises has repeatedly engaged in a number of frivolous lawsuits, and is quite uptight about anyone using words like 'orc' without their getting some money from it.

    The Estate, on the other hand, generally acts very responsibly (though I won't say they've never made a mistake). They like JRR's personal life to be respected (hence issues over letters and suchlike; I assume the novel was a similar issue in their eyes), but I think their reputation for frivolity isn't as deserved as people on the internet like to say (it's sadly too easy to insult people like Christopher Tolkien from behind a computer screen).

    @Jonathan Badger, saying "Christopher has made his living taking whatever scraps of his father's writing which remained unpublished and expanding it into publishable volumes" isn't really fair. Not scraps, but the vast, vast majority of what Tolkien ever wrote was unpublished in his lifetime. In the posthumous publications, there has been little in the way of 'expansion', and after the Silmarillion the only actual additions are commentaries, not narrative. And even now, with many thick volumes published, we have at best a representative sample of Tolkien's more major writings. Anyway, I certainly hope this doesn't stop with Christopher–fortunately there are enough other scholars who have worked on editing Tolkien's works that I think it will be able to go on.

    @Bill Poser, as far as I know, the Tolkien Estate doesn't sell t-shirts. Or buttons. Or anything at all, for that matter. If this is the action of the Estate, then it's not about monetary competition.

  30. Dan K said,

    February 28, 2011 @ 9:49 am

    James posed this question: "Do you also think it infringes on trademark when a character in a novel drinks Coca-Cola?"

    No. Mentioning a trademark in a book seems like a very different action than writing an entire book the basis for which is a trademark registered to someone else. If I may express equal astonishment, I find it hard to believe that you wouldn't see the difference between a character in a novel drinking Coke and a novel called "The Coca-Cola Adventures," the entire premise of which is built around its association with Coca-Cola. Which of these situations is more similar to the case for the Mirkwood book?

    Maybe "blatant" was going overboard, but if you're going to give out trademarks like this, I guess this is the kind of product you're committed to taking off the shelves — books that sort of look like they might have some Tolkien affiliation but actually don't.

  31. language hat said,

    February 28, 2011 @ 10:18 am

    On the whole, I'd suggest not talking about trademark law unless you actually know something about it, which doesn't mean pulling a book of your shelf and quoting a snippet (the old-fashioned equivalent of going to Wikipedia).

    This is the kind of thing that makes people dislike lawyers. (Well, that and suing everyone in sight.) Right, we should all just shut up and let the professionals run the world as they like, and be grateful for our gruel. I, for one, have every intention of talking about trademark law or anything else that comes into my head; if what I say is wrong, someone can correct me. (Or, if they're a lawyer, sue me.)

  32. Jimbino said,

    February 28, 2011 @ 11:23 am

    Correct, but what's supremely objectionable is your misuse of "due to" in":

    Due to the "use it or lose it" nature of trademark law, trademark holders do have to be a bit aggressive in defense of their marks….

  33. KevinM said,

    February 28, 2011 @ 11:28 am

    Unfortunately, trademark law encourages, even requires, some pretty petty behavior. Your trademark becomes vulnerable if you can't demonstrate that you've been vigilant and diligent in protecting it. As a result, suits like this are filed all the time out of prudence, when the trademark holder wouldn't otherwise give a darn. The action is filed so the trademark holder can say it filed an action every time it detected a potential infringement – not because it hopes for damages or even an advantageous injunction. Put another way, some Mom & Pop operation that marketed a soda, substituting even one letter in the "Coca-Cola" name, would never be mistaken for Coca-Cola, and is not realistically going to harm sales of Coke. But Coke would have little choice but to sue them, for fear of eroding a trademark that is worth billions.

  34. Chris Travers said,

    February 28, 2011 @ 12:07 pm

    I once got a C&D letter alleging trademark infringement from a software company for some whitepapers I wrote which competed with some of their paid documentation. I sent them back a nice letter to the effect of "Thank you for your concern. Just to be on the safe side, I've added extra disclaimers specifying that you own that trademark and that I am referring to your product. I hope this resolves the matter to your satisfaction."

    I have frequently been amazed at how much some people will try to abuse trademark law to go after people they don't like.

  35. Robert Coren said,

    February 28, 2011 @ 12:08 pm

    It seems odd to me that one could trademark a surname. Suppose my name, entirely coincidentally, were Tolkien; could the estate, or Tolkien Enterprises, prevent me from making any use I chose of this name (other than falsely claiming to be, or be related to, the famous author)?

    @Jonathan Badger: While I don't doubt that Christopher Tolkien has realized some financial gains from the sale of the History of Middle-Earth books, I doubt very much that he has "made his living" from them over the past 30-odd years. And, for the record, I believe he is 84.

  36. jhn said,

    February 28, 2011 @ 12:32 pm

    @Julian Bradfield

    The same advice could be applied to your comment. As you're no doubt aware, it's not an infringement of trademark to "use" a competitor's mark in the course of advertisement. Coca-Cola, for instance, is allowed to say things like "Our product is better than Pepsi." They're only not allowed to label their product *as* Pepsi (or to use the mark in a confusing way)–to designate the source or origin.

    The Lanham Act is not a model of clarity, and decisions have gone in crazy directions, but almost all courts recognize nominative fair uses (or hold that these "fair uses" are simply not relevant events from a trademark perspective to begin with).

  37. Jean-Sébastien Girard said,

    February 28, 2011 @ 1:55 pm

    They are basically taking a leaf out of the Scientology book.

  38. Chris Travers said,

    February 28, 2011 @ 2:13 pm

    Kevin M: Reminds me of Microsoft v. Lindows….

    This carries some risk though. In that case, the settlement involved the plaintiff paying the defendant around $20 million dollars to purchase the trademark.

  39. Adam Rakunas said,

    February 28, 2011 @ 2:30 pm

    Hi! I'm Adam Rakunas, aka the Guy Who Made These Buttons. I wanted to pop in here with a few clarifications.

    First, I made these buttons because I wanted to have a batch done in time to hand out at the World Fantasy Convention in 2009. I used Zazzle because it was the first site that popped up when I searched for a way to make the buttons and have them hanging around if anyone wanted one for themselves. It's been a while, but I seem to remember Zazzle requiring me to give the buttons some kind of mark-up. I think I chose the lowest one possible, which is why I have made a total of $0.63 with these buttons, most of which was my own money when I bought that dozen or so buttons for WFC.

    Second, Zazzle contacted me to say that the Tolkien Estate had contacted Zazzle asking to remove the buttons for IP rights infringement. The Estate has not contacted me directly, and I have asked Zazzle to send me a copy of the Estate's takedown notice. I have contacted the EFF, and, should I get the takedown, I will forward it on to them.

    Third, I still think Madeline's comment that is on the button is a valid and important piece of cultural criticism, and that the Tolkien Estate has indeed overreached. We'll see how the rest of this plays out. Thank you.

  40. DJS said,

    February 28, 2011 @ 5:35 pm

    All–as someone who loves this blog and is also, alas, an IP professor I read this post and was a little concerned about the opinions of what constitutes trademark infringement. As a quick point, any use of someone's mark that may confuse consumers as to the source of the good or service in question, or may look like an endorsement or sponsorship, is a potential infringement. So, if the use of Tolkien's name on these buttons might lead some to think the Tolkien estate endorses the product, or is even the source, then there is a problem (I admit that mocking someone else's mark generally prevents consumers from thinking they endorse the use!). In addition, in much of the world, we now have a theory of dilution where ANY use of a famous mark (i.e., "Tolkien") is actionable on the theory, in part, that if we let one guy do it they all will and then consumers will never know which goods come from the estate and which ones do not.

    In any event–an interesting question and one, like all things in law, is actually rather complicated.

    Good luck to Mr. Rakunas–I thought the button funny (there is an artistic fair use defense as well that may apply).

  41. Barbara Phillips Long said,

    March 1, 2011 @ 3:28 pm

    @Robert Coren There's a famous dispute over trademarks and family names in the wine industry:

    Trademark infringement claims are not entirely new to the wine industry. In 1978, the Second Circuit resolved a trademark infringement claim brought by an established vintner against a newcomer who sought to use a similar mark on its label.10 The newcomer winery was owned by Walter S. Taylor, who was a former employee of the plaintiff winery and who sought to use the word “Taylor” (his surname) on his wine’s packaging.11 While the court recognized the need for an injunction protecting against confusion of the defendant’s wine with the plaintiff’s products, the court found that the district court’s injunction prohibiting the defendant from using the word “Taylor” on the label was too broad.12 The court stated that, to prohibit an individual from using his or her true family name is akin to taking away the person’s identity.13 Thus, the court concluded that neither the plaintiff nor the defendant could use the name “Taylor” as a trademark, but held that the defendant could use his signature on the Bully Hill label or advertising to show his association with the winery. However, the defendant was required to include a disclaimer that he was not connected to the Taylor Wine Company.

    — From:
    http://www.stoel.com/webfiles/OregonWine/litigation.pdf

  42. Russell Borogove said,

    March 1, 2011 @ 5:59 pm

    This calls for a letter to Tolkien's law firm saying "I thought you should know some asshole is writing bullshit C&Ds on your letterhead."

    [(myl) For those few who may have missed the meme, see here.]

  43. Adam Rakunas said,

    March 1, 2011 @ 6:45 pm

    Update RE: The Button With The Name That Shall Not Be Named: Zazzle.com wrote me to say, "Whoops, our bad! Your button's back up." I have since deleted the button, as I won't do business with a company that's treated me so shabbily (except, of course, for Fry's). Here, for your dining and dancing pleasure, are all the emails between me and Zazzle.

    http://www.giro.org/2011/03/01/the-zazzle-emails/

  44. Jeff Percival said,

    March 2, 2011 @ 12:19 am

    @Robert Coren: I've often wondered about that, about using your own, born-to birthname any way you want. But I wouldn't want to be "Joe McDonald" and try to open a hamburger joint…

    [(myl) Check out the history of Walter Taylor and the name "Taylor" associated with wine, after Coca Cola bought the Taylor vinyards....]

  45. maidhc said,

    March 2, 2011 @ 4:59 am

    According to this article
    http://www.boingboing.net/2011/03/01/update-tolkien-estat.html
    the story is completely false.

  46. bemused felix said,

    March 2, 2011 @ 6:50 pm

    Looks tortured but still remarkably foolish: the email chain Adam's linked to above shows Zazzle claimed that the Estate contacted them, which was the reason for removing the button > publicity happens > Tolkien Estate says it's not us. Obviously someone's telling porkies, but "completely false"? That boingboing post doesn't mean what you think it means.

  47. A Reader said,

    March 3, 2011 @ 4:55 am

    Perhaps this will serve as a lesson against the entire internet jumping to conclusions before the facts are known. I doubt it, but one can always hope.

  48. A Reader said,

    March 3, 2011 @ 5:01 am

    Perhaps this will serve as a lesson against the entire internet jumping to conclusions before the facts are known. I doubt it, but one can always hope.

    @bemused felix, is there any reason, when both Zazzle and the Tolkien Estate say it wasn't the Tolkien Estate, to continue to insinuate that it was? It seems probable that the Estate had been in contact with Zazzle over general issues of trademark, and it was just some Zazzle overeager Zazzle intern or something who decided that anything saying Tolkien = trademark infringement.

  49. Ellen K. said,

    March 4, 2011 @ 2:44 pm

    @A Reader. I agree with Bemused Felix. I don't think Bemused Felix is insinuating that the Tolkien Estate had anything to do with it. Still, it's overstating it to say the initial article was "completely false". Wrong, yes. Completely false, no.

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