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Lawsuitsby Heidi Who is Nancy Stouffer, and what is her issue with JK Rowling?According to her agent, Nancy Stouffer first contacted Scholastic in August about her concerns that elements in the Potter books, particularly the use of the Muggles characters, violated Stouffer's trademarks. Stouffer's Muggle characters first appeared in her 1984 book, Rah and the Muggles and were trademarked in 1986. No trademark applications were filed for the marks she is claiming to own until February, 2000. Ms Stouffer claims that the following similarities between the HP books and her book mean that JKR is infringing on her trademarks:
When did this lawsuit happen?In the Fall of 1999, Nancy Stouffer sent a cease & desist letter to either Scholastic or Bloomsbury or JKR. Scholastic/JKR/Agents/Levine Press filed a suit in NY asking for a judge to make a Declaratory Judgement that they were not infringing on the alleged trademarks of Nancy Stouffer, and demanding that she cease making false statements about the HP books and her ownership rights in the term MUGGLES, and various other terms. In March, 2000, Nancy Stouffer filed a suit for trademark infringement in Pennsylvania, where she lives. In this suit, she claimed that JKR was infringing on various of her trademarks, including a trademark for the term MUGGLES, which, in mid-1980's book entitled "The Legend of Rah and the Muggles", were tiny and hairless creatures who live on the continent of Aura in a post-nuclear holocaust world set hundreds of years in the future. After the Pennsylvania lawsuit was filed, Nancy Stouffer filed a Motion To Dismiss the NY suit, claiming that she had insufficient contacts with New York, and they couldn't haul her into such a remote courtroom. In August, 2000, Judge Schwartz in the New York court rejected the Motion to Dismiss, which means that the case will be decided in NY, which, speaking as a trademark attorney who *has* litigated in New York in the past, is very good for JKR, etc., because of some interesting cases which will make it very hard for Ms Stouffer to show that she has a trademark in the term MUGGLES or the characters of LILY POTTER and LARRY POTTER, etc., and that there's likelihood of confusion between her marks and the JKR marks. Where can I find pleadings from the litigation?You have to go to Ms Stouffer's site, at http://www.realmuggles.com, which means she gets to claim she has site visitors. We are trying to obtain copies from Scholastic themselves. What does trademark law have to do with this? Isn't it a copyright suit?A trademark is a distinctive work, phrase, symbol, or design used to identify and distinguish a party's goods or services from those of others. It is used to indicate the source of a good or service. Trademarks are defined as any "word, name, symbol, or device, or any combination thereof, adopted and used by a manufacturer or a merchant to identify his goods and distinguish them from others manufactured or sold by others." The primary function of a trademark is to indicate the source of origin of goods or services. Merely using the same words in a mark as someone else has used in a mark isn't necessarily enough to meet the standard for trademark infringement. You must also show that the words you use function as a trademark, meaning that they identify the source of certain goods; also, it must be likely that members of the purchasing public will be confused as to the origin, sponsorship or approval of the goods. In this matter, Nancy Stouffer is claiming that the terms MUGGLE and MUGGLES identify her goods, and that JKR, Scholastic and Warner Brothers' use of the term "MUGGLES" in the books and the ancillary products infringes on her use of the terms. She has to show that she used the terms MUGGLE and MUGGLES to identify the source of certain goods. This will be difficult, according to various interviews with Ms Stouffer, because other than the books, no goods bearing the MUGGLE or MUGGLES mark were sold or distributed to the public. Even if goods bearing those marks were sold or distributed, she would only have accrued common law trademark rights in the geographic areas where she sold the goods. Nancy Stouffer also seems to be claiming that the overall design and appearance of her purported goods (the books) is being infringed by the Harry Potter books; this type of infringement is called trade dress infringement. Under New York law, the trade dress of a product includes the design and appearance of a product, and all elements making up the total visual image by which the product is presented to customers. Trade dress law does not protect "an idea, a concept or a generalized type of appearance" because trade dress law is intended to protect "an owner of a dress in informing the public of the source of its products, without permitting the owner to exclude competition from functionally similar products." To prevail in New York in a trade dress infringement, the plaintiff must prove that it has a protectible trade dress by showing that the trade dress is inherently distinctive, or that it has become distinctive because of years of substantially exclusive use. The writer of this FAQ litigated a trade dress infringement suit in New York in 1997 and 1998, where the plaintiff was claiming that she had exclusive trade dress rights to a magazine which contained a specific word mark, a certain word placed across the top of the masthead, contrasting colors in the logo and a model depicted in an active setting. Such a trade dress cannot serve as a source identifier, and thus there is nothing inherently distinctive about the trade dress. Similarly, where the elements of a work include boats near a lake, a friar, a great hall and the term "MUGGLES", which has been used in works of literature dating well over a hundred years, there can be no inherent distinctiveness in such a trade dress, which incorporates elements used in many other works of literature over the centuries. In other cases, plaintiffs have claimed that the elements of their trade dress which might be considered generic are in fact unique because of their association with the particular good at issue in the case. However, this argument fails as a matter of trademark, trade dress and copyright law, because it relies on the uniqueness of an idea, which is wholly unprotectable, and completely ignores the specific embodiment of that idea. Uniqueness of an idea is not a proper basis upon which a court can base a finding that a trade dress is capable of serving as a source identifier. The connection must be between either the mark and the product or the trade dress and the product, not the idea and the product. It seems that Ms Stouffer is claiming that the title of her book, The Legend of Rah and the Muggles, is protectible as a trademark. As a matter of law, The Patent and Trademark office considers the title of a single work to be generic, and not protectible or registerable as a trademark. The Patent and Trademark Office refuses to register the titles of single books or single movies, such as Waterworld, Heaven's Gate or When Harry Met Sally, but will register title words used in a series of books or movies, such as Eloise, Babar, Harry Potter, The Matrix or Star Wars. However, case law from federal litigation has allowed the titles of single literary works like the movie Young Guns or The Green Kingdom book to be deemed descriptive of the contents, and protectible upon a showing of secondary meaning. Secondary meaning means that members of the public, upon seeing the mark, automatically think of a certain good or service. Examples of descriptive terms and phrases which could not establish secondary meaning include the television series I Spy, Alaska magazine and the children's book series How and Why. The length and continuity of use, the extent of advertising and promotion (including the amount of money spent thereon), and the sales figures, including the number of people who bought, and who viewed, the work, all help establish secondary meaning. Rights in a trademark are acquired only by use, so if someone uses a mark to identify the source of certain goods, even if they don't file an application to register the mark, the owner can obtain rights to that trademark for the specific goods and services in the geographic area where the mark is actually being used. If someone uses a mark, but stops using that mark for at least three years, that mark is deemed abandoned, and they lose all the rights they have accrued in and to the mark. Then, it can be adopted by anyone else, and used to identify their goods or services. Here, there has been some indication that Nancy Stouffer did not sell any goods bearing the MUGGLE or MUGGLES mark for a period of at least three years between 1987, when she claims to have commenced use, and 1999, when she began her dispute with JKR and Scholastic. If she did have such a gap in her use of the marks, then all rights she accrued between 1987 and the date on which she last used the mark disappeared into the ether upon her abandonment of the mark. However, if she commenced use of the marks again before the publication of Harry Potter and the Sorcerer's Stone, then she will be able to still claim a date of first use which predates Scholastic and Warner Bros.' Date of first use. This is relevant because the date of first use is the determining factor in choosing who the senior user of a mark is. If she ceased use of the MUGGLES mark in 1993 but started again in, say, August, 1998, she would have used the MUGGLES mark in the US before Scholastic and Warner Bros. There has been a lot of discussion on the list about whether Ms Stouffer can hold a trademark in the term MUGGLE, since it is a dictionary word, and since it has been used in many literary works. As a matter of law, she can. One can hold a trademark (i.e. exclusive rights to use a certain word for certain goods or services) even if it's a dictionary word - look at APPLE or WINDOWS for computers. Of course, this doesn't prevent apple pie makers from using the word apple, or prevent window installers from using the word window. If someone wanted to use the term "MUGGLE" to identify a line of bald, baby-like dolls who live on a post-apocalyptic continent and care for orphans, and Ms Stouffer was able to show that she had a valid mark in the term MUGGLE, she would have a good case for trademark infringement. However, that doesn't mean that she has a good case against every single use of the term MUGGLE for any goods or services. Stouffer has recently filed two trademark applications. She hopes to register MUGGLE for decorative magnets, ornamental novelty buttons and playthings, namely dolls; novelty toys, namely "worry stones", and hopes to register MUGGLE for pre-recorded audio-cassette and a series of children's fiction books, storybooks, coloring books, activity books, and sticker books. For both applications, she claims a date of first use in 1987, which, as a matter of law, is considered to be December 31, 1987. The Patent and Trademark Office has issued an Office Action, which means that she has to respond to some questions from the Office. The author of this FAQ has ordered a copy of the Office Actions, to determine what the PTO's questions are. Does she have any chance of winning?Not in her Pennsylvania case. On August 3, 2000, the Pennsylvania court placed the case she filed in Pennsylvania in civil suspense pending a decision by the NY Court on defendant's motion to dismiss, and since the NY Court didn't dismiss the case which was filed in NY, the likelihood of the Pennsylvania case being revived is close to nil. In New York City, the likelihood of her surviving a motion for summary judgement is slim. If Scholastic, Warner Bros. and JKR file a motion for summary judgement, which means that the case is decided without a trial, on issues of law as applied to the facts both sides learn during discovery, they should win, because the laws of trademark and trade dress infringement tip in their direction. It will be difficult for Ms Stouffer to show that she has a protectible trademark or trade dress, because of the abandonment issues, the question of whether she can show secondary meaning in her title The Legend of Rah and the Muggles, and the question of whether she sold any other goods or services bearing the MUGGLES mark. If she cannot show secondary meaning, or if Scholastic, Warner Bros. and JKR can show she abandoned the mark and ceased selling the book for over three years, she will lose. Some listies believe that Ms. Stouffer has no case unless she can prove that Rowling used her books as the source of Harry Potter. The defense is fairly simple: Rowling has to show plausible sources for the elements. This isn't exactly the case. As discussed above, this is a trademark case, and issues from copyright law, like access to the original work, and copying of portions of the work, are irrelevant. Under copyright law, the expressions of an idea, such as the sentences, paragraphs or drawings, are protected, and the person claiming infringement must show that the alleged infringer had access to the works, and that the works are substantially similar. Here, even if JKR had access to the works, and even if there are similarities between the works, unless Ms Stouffer has a valid and protectible trademark in the words, like MUGGLE, that she is claiming to have a trademark in, there can be no trademark infringement.
Why does she have it in for Jenna, creator of the Unofficial Harry Potter Fan Club Website?In July, 2000, Jenna reported on her website that Ms Stouffer's representatives had gotten in touch with her regarding her use of the term "MUGGLE" on her website. The writer of this FAQ and list administrator for the list have emailed her asking her for more information about what the Stouffer people said, but she has not responded. If you have more information, please let us know.
Where can I read more about the suit?
What about Warner Brothers' letters to various people who own "harry potter" domain names?Warner Brothers, as the owner of the rights to film the first HP books, has licensed various companies to produce Harry Potter merchandise. They have also filed a series of trademark applications to protect marks like HARRY POTTER, HOGWARTS, SLYTHERIN, DIAGON ALLEY, BERTIE BOTTS' EVERY FLAVOR BEANS, QUIDDITCH, DRACO MALFOY, HAGRID, NIMBUS TWO THOUSAND, DUMBLEDORE and LORD VOLDEMORT for various goods and services including movies, cartoons, backpacks, hats, pens, books, computer games, candies and booties. What do you think Draco's reaction to being a brand name for booties would be, or Voldemort's reaction to seeing his name on ice skates? No applications for TOM RIDDLE, SIRIUS BLACK or GILDEROY LOCKHART yet. The writer of this FAQ is disapointed; she was looking forward to that line of hair care products. Since they are working to make their rights to the different names in the Harry Potter books clear, they have to protect those rights, or they will risk losing them. In early 2000, listie Nick Mitchell posted about the cease and desist letter he received from Warner Brothers regarding the domain name www.harrypotterisawizard.co.uk. He has been in long legal discussions with David Engle, Warner's lawyer in England regarding this matter. Nick decided not to persue it through the courts and thus, Warner Bros obtained the domain name harrypotterisawizard.co.uk. Nick told the list that he had discussed this issue in a letter to JKR. He reported that she was concerned, although not very aware of the internet - at least, not when it comes to domain registration! Nick also reports that she said that she would be concerned if legitimate fan sites were closed, though she did stress that she is concerned about people making and selling copy-cat merchandise. If Warner Brothers takes action against people who are selling "fake" HP merchandise like a clock sold via Ebay, or other things which are being marketed as official HParaphenalia, they are within the law. Given the law on trademarks and domain names, if they don't make an effort to obtain any domain names containing the HARRY POTTER mark, or any of the other marks derived from the books, they are putting their trademark rights at risk of losing the rights in and to the marks. |
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