Trademark Law for … Dunderheads
Xerox, Kleenex, Rolodex ... We use these brand names all the time as shorthand for generic terms like "photocopy," "facial tissue," and "business card file." But journalists can get in trouble for doing it.
Chances are, when a critic tells readers to "Keep the Kleenex handy" for a television show, he doesn't mean viewers will be inconsolable without the unique comforts of a Kleenex-brand facial tissue product. The name "Kleenex" is "a registered trademark of the Kimberly-Clark corporation." And I'm guessing Messrs. Kimberly and Clark do not like their name being taken in vain.
But it's not just brands that reporters and copy editors have to watch out for. You might remember when Fox News tried to stop Al Franken's use of the phrase "fair and balanced." Donald Trump's trying to trademark "You're fired!" Even a term as seemingly innocent as "social worker" might bring a warning letter from someone.
As people claim more and more everyday expressions as their own, can we write anything without being shouted at by a lawyer?
"Not really" would be my best answer. But the threat of litigation can't always stop us from using familiar terms; we just have to consider how and when to use them.
On April 8, a South African newspaper, the Mail and Guardian, published a column on its website with the headline "Cricket for Dummies." The folks at Wiley Publishers, Inc., makers of the "For Dummies" series of books, weren't happy. Kimberly Skeel is the company's brand review and trademarks manager. She sent the newspaper a letter asking for the paper to remove all references to "For Dummies" on the website, and never to use the phrase again.
The offending column decried a new form of cricket that the author felt was dumbing down the sport, hence the title. The column wasn't instructional, and besides the headline, it made no reference to Wiley's book series.
The M&G shot back at Wiley with an editorial headlined "Voertsêk for Dummies." ("Voertsêk," said Matthew Buckland, editor of the M&G's website, is a derogatory Afrikaans word meaning "beat it" or "bugger off.") "Let this serve as our intention to defend," the article said. The website's story about the incident was entitled "Trademarks for Dummies."
"We are not publishing a book in competition with the 'For Dummies' series," said Buckland, "but are publishing a single article -- using a relatively common phrase from the English language. Can companies really trademark words of the English language in such a way that we cannot use them -- even for editorial purposes?"
Whenever words are placed in front of the phrase "for dummies," even in editorial copy, readers might confuse it with the book series, Skeel argued in a Mail and Guardian story about the episode. (I could not reach Skeel for comment for this article.) "Any words placed in front of 'for dummies' are not permitted by third parties," she said.
As people claim more and more everyday expressions as their own, can we write anything without being shouted at by a lawyer? If the publisher's lawyers were lax about others' unauthorized uses of "for dummies," the phrase might become generic, and lose its strong associations with the brand, argued commenters on a Slashdot thread from 2000. Then, if some other book publisher got the idea to release a "for dummies" book of its own, Wiley's lawyers might not have a leg to stand on.
John McIntyre, president of the American Copy Editors Society and assistant managing editor for the copy desk at The Baltimore Sun, told me in a phone interview that the Sun encourages reporters to be careful about their use of trademarked terms:
For example ... Rolodex. I believe we once said to people, "Don't use 'Rolodex' as a metaphoric term. That is, if a consultant leaves one candidate to go to another, don't write that he's taking his Rolodex with him. You're using a proprietary term in a metaphoric sense. And if you talk about somebody's Rolodex, you had better be sure that it was an actual object and one made by Rolodex before you use it in print." So we prefer generic terms most of the time.
But McIntyre said the newspaper is willing to push back sometimes against organizations too eager to seize control of some pretty generic terms:
We described somebody in a news story as a "social worker." And I got a very strong letter from someone representing the Maryland state association of licensed social workers explaining that we were not to use this term unless we were referring to a licensed social worker because their organization is chartered by the state. Well, I pointed out to her that the term "social worker" is in the dictionary, it is a generic term, it antedates the formation of their organization. Now, "Realtors" got that term licensed to them, but it was an invented one at the time. ... I told this woman from the social organization that you can't retroactively take a generic term and appropriate it to yourself.
(By the way, just recently, the U.S. Trademark Trial and Appeal Board ruled that the term "Realtor" referred exclusively to members of the National Association of Realtors. Not everyone who's a real estate agent is a "Realtor.")
McIntyre stressed that he isn't a lawyer, and doesn't encourage any news organizations to flout any laws. But sometimes, he said, it might be fair game to make references to words or phrases from our cultural lexicon. "We use allusions to popular songs in headlines and in copy and we tend not to get accused of violating copyright," he said. "If we quote things without permission, that's one thing. But a mere allusion to something seems to me to be in a different category."
Even if you're on solid legal ground using an allusion, you might be treading into the boundaries of cliché, or drawing on a reference that some members of your audience might not get, McIntyre said. It's a tricky balance; a tough question that reporters and copy editors should work through together.
Definitely not a question for dummies dunderheads.