Authors' brands: a case of doublethink?

JK Rowling is. John le Carré isn’t. Albert Camus and F. Scott Fitzgerald are. George Orwell might or might not be. 

I’m talking about registered trade marks.

Authors make copyright works, and their agents’ job is to maximise revenues from those intangibles. End of story, right? Kind of. A lucky few authors are also brands - their characters and titles, too. And once registered as trade marks, the rights last forever, unlike copyright. 

GRUFFALO, you won’t be surprised to hear, is registered as a trade mark not only for books, but also items as diverse as deodorants, key fobs, umbrellas, toilet trainer seats, cheese, and many others. JK ROWLING, and her signature, have been registered marks since 1999. But the EU Intellectual Property Office has blocked registration of GEORGE ORWELL, 1984 and ANIMAL FARM, pending a decision of its Grand Board. The Grand Board steps in where past decisions are inconsistent and trade mark law has become a mess. It seems the EUIPO can’t make up its mind whether authors, and their characters and titles, should be registrable trade marks or not. 

So what’s the problem?

Sonia Orwell’s estate, already the owner of the registered mark BIG BROTHER IS WATCHING YOU, applied in 2018 to register the above three marks for goods such as DVDs, films, audio recordings and books, and a wide range of services including education and entertainment. The EUIPO examiner took the view that, since Orwell is recognised as one of the key literary figures of the early twentieth century, his name is not a distinctive indicator of the origin of goods and services but a descriptive indication of subject-matter (namely, being by or about Orwell). Similarly, titles such as ANIMAL FARM are arguably mere topic-indicators. JUNGLE BOOK fell foul of the same reasoning in a 2015 EUIPO decision. This was said to be in contrast to Le Journal D’Anne Frank, which was accepted for registration by the EUIPO, also in 2015, on appeal from an initial rejection (it was refused by the UK registry, although ANNE FRANK per se was not).

Whilst brands such as GAME OF THRONES and DISCWORLD are owned by corporate entities, some literary marks are held by authors or their estates directly. Julia Donaldson, for example, owns her brands personally, as does JK Rowling. What counts in each case is that they use and enforce the marks, or risk losing them. Now these kinds of brands face an existential threat. In the Orwell case, the applicant has filed evidence of commercial activities under the brands, the activities of the Orwell Foundation and the Orwell Prizes, and examples of licensed use of the marks.

This matters to the business of rockstar authors and legendary estates, and hence to the business of books. Sometimes it matters to global entertainment groups that have invested in titles. For example, CHARLIE AND THE CHOCOLATE FACTORY has been registered as a trade mark since 2003 in the name of Warner Bros. Entertainment, for items such as books, films, t-shirts, badges, toys, drinks and even ‘bleaching preparations’. But Soremartec, the R&D division of confectionery giant Ferrero, has recently applied to register it in dozens of countries around the world, in respect of pastries and confectionery, chocolate, ice creams and chewing gum. This has been opposed by Warner Bros. on the grounds that, such is the reputation of their trade mark, the public would be confused between the two, and that the application takes unfair advantage of the earlier mark. Confusingly, Soremartec has owned the registered marks WONKA and WILLY WONKA for the same goods since buying them from Nestlé in 2018. This is big business scrapping for big money. Roald Dahl, famously obsessed with chocolate, would probably find plenty of misanthropic enjoyment in it. 

But there’s another aspect that merits discussion, namely quality control. This could mean the ability to prevent a sub-standard, derivative commercial work from seeing the light of day. Or it could mean Welsh Trading Standards officers prosecuting the Sweet66 candy store in 2013 for selling ‘Mr Wonka Bars’ for £3 that were actually repackaged ASDA chocolate bought for 30p. Less clear-cut, some may argue, is the control of fan merchandise. A search on etsy.com for ‘HIS DARK MATERIALS’ produces over 300 results, such as an ‘Alethiometer inspired fan Enamel Necklace’ offered by a Nottingham-based illustrator. Philip Pullman’s title does not appear to be registered as a trade mark, however. Many authors do not object to small-scale, unlicensed merchandise. Some view it as ‘free marketing’, or don’t want to upset fans by asking them to desist. But what if the quality is poor, the design is offensive, or there is doubt that it really is produced by a fan as opposed to a factory in China?

Interested groups representing publishers, consumers or other bodies may submit observations to the EUIPO by 4 March.

Jeremy Morton is a partner with Temple Bright LLP solicitors, specialising in intellectual property.