Last month I wrote about passing off, which is the most common type of trademark infringement. As a reminder, this occurs when a counterfeiter makes a similar product and tries to “pass it off” as the original. But what if it happens the other way around? Reverse passing off occurs when someone takes another person’s product and markets it under a different brand name. Imagine pouring Coke into bottles labeled N-E-W Cola to make people buy what they think is a competitive product. That’s reverse passing off which, in general, is a mirror image of passing off.
Now think about how this works for writers. If someone takes your story and puts his or her own name on it, that’s plagiarism, which is unethical but not illegal. But is that action also reverse passing off? If it is, you don’t have to worry about those parts of the copyright laws that require proof the person actually took your work. Unlike copyrights, independent creation isn’t a defense to a trademark claim. Also, trademarks that are in continuous use don’t expire the way copyrights do, so your heirs could claim trademark infringement even after the work has passed into the public domain. Trademark law could be a great tool for authors who can’t make a copyright claim.
At least, that’s how it would work if reverse passing off applied to creative works. But here’s the problem. If copyright law says that something is in the public domain or that you have to prove certain elements to prohibit someone from using the work, should an author be able to frustrate those rules by using a different legal theory?
The U.S. Supreme Court has answered that question with a resounding “NO.”* If the work is the type covered by the copyright laws, then those laws trump any others. If the provisions are inconsistent, the courts will follow the copyright laws. This is true even if the work is in the public domain. When creative works are involved, passing off and reverse passing off are not mirror images.
So if you think someone has stolen your work and the copyright laws don’t give you a claim, don’t bother to argue reverse passing off.
It never works.
* Dastar Corp. v. 20th Century Fox Film Corp., 530 U.S. 23 (2003).
Kathryn Page Camp is a licensed attorney and full-time writer. Her most recent book, Writers in Wonderland: Keeping Your Words Legal (KP/PK Publishing 2013), is a Kirkus’ Indie Books of the Month Selection. Kathryn is also the author of In God We Trust: How the Supreme Court’s First Amendment Decisions Affect Organized Religion (FaithWalk Publishing 2006) and numerous articles. You can learn more about Kathryn at www.kathrynpagecamp.com.