Thursday, July 9, 2009

Trademark in Book Title: Irreparable Harm?

Dear Rich: I have to file a pro se case against an author using my mark in the title of her new book (yet to be published, but much publicized). Can I file for injunctive relief against her publisher, agent, publicist and her all at the same time or would I just file against the publisher? The short answer is that you should only seek an injunction against somebody who is about to cause you immediate harm that cannot be repaired and for which money won't compensate you. So, you'll have to figure out who, amongst your candidates, fits that bill. (We assume you're referring to a preliminary injunction -- an order granted before the trial occurs.) Even if you can prove under trademark law that the use of the mark in the book title is likely to confuse consumers -- and that could be a tough claim to prove -- it doesn't mean that anyone caused you harm that is "irreparable." You're going to have to show up in court and make a strong showing that you're likely to prevail at trial and that if the book is published you're going to really take a serious financial hit. That's a tough argument to win if you haven't made much money with the mark in the past, for example. Since you're already headed uphill as a pro se litigant, the Dear Rich Staff thinks you might want to simplify your litigation by striking the request for a preliminary injunction. Keep in mind that if you lose the battle over the injunction, you're in a very poor strategic place heading for trial. And if you win the battle, the court may require you to post a bond to compensate the publisher for any harm caused by the injunction (in the event that you later lose the case). Ouch!