After spending decades hiding from the limelight, Harper Lee, revered by lawyers across the country for giving us our greatest fictional champion, has had a rough, litigious, and very public year. In May, she sued her former agent Samuel Pinkus (Complaint here), alleging that he had taken advantage of her failing health, tricking her into assigning away the copyright for To Kill A Mockingbird, failed to account for and thus to properly pay royalties, and failing to “work the copyright,” apparently giving us an explanation as to why To Kill A Mockingbird has never been available as an e-book. Vanity Fair did a long story on the controversy in July, and then in September the whole case was settled. Given the speed of the settlement, I can only presume it settled for roughly whatever Lee’s lawyers were requesting.
All’s well that ends well? Not quite. To Kill A Mockingbird is not just a classic book, it’s a major business. As Vanity Fair reported, “In one typical six-month period alone, ending December 2009, Lee earned $1,688,064.68 in royalties, according to court papers.” While the Pinkus saga was ongoing, Lee’s lawyers had already filed, in September 2012, an application for a trademark for “To Kill A Mockingbird” as used on “clothing for men, women and children, namely T-shirts, hats, jackets.”
There’s nothing wrong with an author trying to license and merchandize rights that arise from their creation. (Bill Watterson, creator of Calvin and Hobbes and another famous recluse, hated mechandizing with a passion.) But this seems like a sad story that’s just getting sadder.
“Maycomb,” Alabama was always just a thinly-veiled version of Monroeville, where Lee grew up, watching her father try cases in the Monroe County Courthouse. (The movie used a soundstage meticulously built to look just like that courthouse, because the courthouse was still being used.) These days, the Courthouse is now part of the Monroe County Heritage Museum, which has permanent exhibits on Truman Capote and Harper Lee. Apparently, since at least 1995, the Museum has sold “To Kill A Mockingbird” t-shirts, and since 1998 they have owned and operated “www.tokillamockingbird.com.”
Once Lee filed that trademark, the Museum stepped in to oppose it, arguing that it was entitled to keep selling the t-shirts. Last month A.M.B. over at Misfortune of Knowing posted a thorough analysis on why Lee’s trademark claims (which remain pending) might face an uphill climb given Lee’s years of apparent acquiescence to the Museum using the phrase “To Kill A Mockingbird” on souvenirs sold in the gift shop. Last week, Lee upped the ante, and sued the museum for a variety of trademark and unfair competition claims (Complaint here).
I don’t have much to add to A.M.B.’s remarks on the strength of Lee’s trademark claims. In short, “A trademark owner’s failure to exercise appropriate control and supervision over its licensees may result in an abandonment of trademark protection for the licensed mark.” Exxon Corp. v. Oxxford Clothes, Inc., 109 F.3d 1070, 1075 (5th Cir.). There’s some scattered dicta arguing that “the failure to institute legal action against an infringer is insufficient [by itself] to establish abandonment of a trademark,” Babbit Electronics, Inc. v. Dynascan Corp., 38 F.3d 1161, 1180 (11th Cir.1994), but, well, garment trademarks aren’t typically granted to someone who (a) in half a century, has apparently never sold a single garment with the mark and (b) for more than a decade, has tolerated someone else using the mark literally down the road from them. Trademarks aren’t like copyrights; they exist only insofar as they are used, and Lee never showed any interest in selling t-shirts before, nor in precluding her hometown non-profit museum from funding its operations with souvenirs that reflect the local history.
I read both Lee’s complaint and her response to the museum’s trademark opposition and I am unimpressed. Both Lee’s complaint and her trademark reply devote considerable space to bickering about a quote the Museum’s lawyer gave to Reuters about the Museum’s willingness to discuss the issue with Lee, which Lee’s lawyers claim — unconvincingly, in my opinion — is at odds with an email that same lawyer sent them.
I’m sure that last sentence bored you. Here is a basic rule of legal advocacy: no judge or jury anywhere cares about lawyers arguing over what each other said. If that’s your argument, your argument is a loser.
But more than that, the trademark filing and the complaint are just plain inexplicable. As A.M.B. notes, “I think it’s rather odd that Lee would so abruptly change her position on the usage of the title of her book on clothing.” As the Museum’s lawyer told CNN:
“Every single statement in the lawsuit is either false, meritless, or both,” said Matthew Goforth, a Birmingham-based attorney hired for the museum. “It is sad that Harper Lee’s greedy handlers have seen fit to attack the non-profit museum in her hometown that has been honoring her legacy and the town’s rich history associated with that legacy for over 20 years. Unfortunately for Harper Lee, those handlers are doing nothing but squandering her money with this lawsuit. The museum is squarely within its rights to carry out its mission as it always has.”
Lee quite plainly loved and still loves Monroeville, her home for her entire life. It is odd, if not outright suspicious, that, in her late 80s — after suffering a variety of health problems that multiple sources have said affects her judgment and memory — she suddenly thought it was time for her local county museum to start paying into the Mockingbird juggernaut.
The complaint obliquely tries to deal with this issue, but in the end the complaint tells us more through what was not said:
Over the years, the Defendant’s infringing actions have grown more brazen. In the past, when Ms. Lee’s health was better, the Defendant responded grudgingly but compliantly with demands to cease and desist from infringing activity. For example, the Defendant once published a “Calpurnia’s Cook Book” that traded upon a fictional character created by Ms. Lee. The Defendant withdrew the publication after a cease-and-desist demand. In other instances, the Defendant created other To Kill A Mockingbird-themed trinkets, and relented when Ms. Lee objected. In short, the Defendant’s usual practice has been to ask forgiveness, rather than ask permission.
“Over the years” and “in the past” and “once” tell us nothing about when any of these events occurred. The t-shirts have apparently been sold since 1995; we have no indication as to when these “trinket” objections occurred. If the best Lee’s lawyers can come up with is some cease and desist they served in the past few years, after Lee’s stroke, they’re never going to overcome the impression that this fight is driven more by the professionals around Lee than it is by her.