Hi, and welcome back to Legal Geek. This week, we cover a story brought to our attention a few weeks ago by author and friend of the network J.F. Dubeau, a controversy now known in publishing circles and the romance novel world as Cocky-gate.
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Faleena Hopkins is a self-published online romance novel author who writes stories about the fictional Cocker brothers. All her books are entitled Cocky something, such as cocky marine and cocky senator, for example. So Hopkins sought a trademark registration for covering the word Cocky in the field of a series of downloadable e-books or regular books in the field of romance. That trademark was registered by the U.S. Trademark Office earlier this year.
Hopkins then began sending a bunch of cease and desist letters to other romance novel authors who happened to use Cocky in their book titles. She also had Amazon take a bunch of titles off the Kindle store based on her trademark. This led to a firestorm within the romance novel and broader publishing community, as enforcement of such a trademark effectively takes one of the most popular words in romance novels off the table as an option for an author.
Our friend JF asked a few weeks ago whether this trademark was legal and what the likely outcome would be. Well, with a couple more weeks of progress behind us, the answer appears to be developing.
First, a retired lawyer decided to file a petition to cancel the trademark at the Trademark Office, which is a procedure by which third parties can challenge the validity of registered trademarks. An IP law firm out of New York and a trade association called the Romance Writers of America have taken over this petition to try and remove this trademark from the register.
Turning to the merits of this cancellation petition, there does appear to be earlier use by other authors, and the opponents argue that the term is generic or descriptive in this field. In other words, Hopkins was not the first to commercialize the term, nor should she be able to lock up a term that other novelists in the field often need to describe the plots of their books and the characters within. While the original Examining Attorney for the trademark came to an opposite conclusion, it seems that this cancellation petition has a good chance of success.
Earlier this week, another development occurred against Ms. Hopkins' position. She had been sued by the aforementioned Romance Writers of America and The Authors Guild in federal court in New York to stop her from enforcing the trademark. The district court judge ruled this week that summary judgment should be granted to The Authors Guild because Hopkins was not likely to succeed on the merits of her claims. The Guild argued that "cockiness" is prevalent in romance novels and thus consumers in the field do not rely on such terms to distinguish the source or author of the book, but instead, the author's name instead. The court appears to have agreed that a term like "cocky" cannot function as the signifier of a single author or source in this genre.
As silly as this case is, the broader implications were what troubled the publishing field. Another author was already trying to trademark "forever," and you can imagine how awkward it would be if other generic-type terms like "space" for sci fi novels was locked up by a single party. Thus, Cocky-gate appears to have led to an affirmance that common words in a field cannot be trademarked at all unless they develop a strong association in the minds of the public with a particular author or source. That's not the case for Hopkins in the crowded romance novel field, so her claim appears destined to fail.
The Bottom Line is, sometimes the cutting edge of legal fields comes from those you least expect it from. While Hopkins was within her rights to pursue and then enforce her trademark, it seems to better follow our rules and norms if that type of registration is cancelled or not allowed to register in the first place. The Trademark Office is not perfect, and that's why we have cancellation proceedings and the courts to rely on, as in this case.
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