Earlier this month I participated with other writers in a public reading. During the Q&A (set up as a panel), one of the audience members asked a question that went something like this: “If I use the brand name for a car in my story, do I need the company’s permission?” He got the shortest answer given during the panel. I simply said, “No.”
The protection against trademark infringement is very narrow: it does not apply unless there is a likelihood of consumer confusion. In other words, trademark infringement occurs only when consumers are likely to think that the trademark owner originated, sponsored, or approved the allegedly infringing product—e.g., your book.
The most direct type of infringement is passing off. This is when a counterfeiter makes a similar product and tries to “pass it off” as the original. Mentioning a product by name in your manuscript is not passing off. The references will not confuse consumers about the origin of the product, and readers do not assume that the trademark owner has sponsored the book or endorsed the use of its trademark simply because the manuscript includes it.
You can’t, however, imply a connection that doesn’t exist. If you say “Starbucks sponsored my book” intending that people believe the statement, it had better be true. That doesn’t, of course, prohibit rhetorical uses, such as the irony in the title to this post. But if people are likely to believe it, you had better include a disclaimer. So here is mine: Starbucks did not produce, sponsor, or endorse this post or any book, article, story, or poem I have ever written.
In 99.9% of manuscript references, however, the use of a trademark merely identifies the product and does not suggest sponsorship or endorsement. No reasonable consumer would be confused.
I could have ended this blog post after the first paragraph, but then it would have been too short. So I spent four paragraphs explaining an answer that requires a simple “no.”
Actually, nothing is ever quite that simple. Fan fiction is a gray area because it uses trademarked names and places in the same way that the owner of those trademarks does. So if you write fan fiction, make it clear that you have no connection to or endorsement from the trademark owner.*
And I’ll use a few more paragraphs next month when I explain why the same “no” answer applies to reverse passing off.
* Fan fiction also raises copyright issues, however, and they can’t be resolved with a disclaimer.
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.