Jazan Wild's attorney clarifies C&D demands, explains lawsuit

Robot 6 reported Tuesday that comics creator Jazan Wild had sent cease-and-desist demands to book reviewers who posted excerpts of Carnival of Souls, a fantasy novel whose title is the basis of his recent trademark-infringement lawsuit against publisher HarperCollins. A spirited discussion followed in the comments, drawing in Wild (aka Jason Barnes) and his wife Susan Barnes.

Now Wild's attorney Ted Shiells of Shiells Law Firm in Dallas has contacted Robot 6 with a statement to clarify Wild's emails to reviewers -- "Mr. Wild was not threatening to sue any of these persons. He only intended to make them aware of his trademark rights in CARNIVAL OF SOULS, to minimize the confusion he has already suffered," Shiells said -- and to address some of the questions and criticisms raised in the comments thread.

Wild, who gained attention in 2010 when he sued NBC and the producers of Heroes claiming they'd ripped off his idea for a “carnival of lost souls and outcasts," accuses HarperCollins of intentionally using Carnival of Souls as the title of Melissa Marr's new young-adult novel in an effort to create confusion between that book and his own 2005-2006 comic series and related works.

Shiells' statement, which can be read below, explains the differences between trademark classifications, and underscores that while the title of a single book cannot be trademarked, the title of a series can be. However, there still appears to be some question whether HarperCollins ever planned Carnival of Souls to be the name of Marr's forthcoming series. (Also in question: If Wild wasn't threatening to sue bloggers, what exactly was the purpose of the cease-and-desist notices, which by their very nature are a threat of legal action; and what standing does he have to demand that websites remove excerpts of a book for which he holds no copyright. To Sheills' credit, he apologized for any misunderstanding, but the whole situation is perplexing.)

HarperCollins dismisses Wild's claims as "completely without merit," writing, "The lawsuit filed by Jazan Wild against HarperCollins Publishers over the use of the title Carnival of Souls, is completely without merit. Carnival of Souls has been used as the title of numerous books, films, songs, records and comic books since at least 1962, and Mr. Wild has no exclusive right to its use as the title of a creative work. HarperCollins will defend the suit fully. Furthermore, any claim that the use of a book title, in a review of that same work, infringes on a trademark is nonsensical.”

Here's Sheills' full statement:

I am the attorney representing Mr. Wild in the trademark infringement lawsuit that is the subject of many postings on this blog. Many of the questions raised by some of the postings will be addressed by the Court in that lawsuit in due course. I would, however, like to clear up possible misconceptions.

First of all, to clarify Mr. Wild’s recent emails to Pam of Bookalicous.com and a few other reviewers, Mr. Wild was not threatening to sue any of these persons. He only intended to make them aware of his trademark rights in CARNIVAL OF SOULS, to minimize the confusion he has already suffered with respect to HarperCollins conscious choice to use his registered trademark for its new book (soon to be a series of books) by Melissa Marr. Mr. Wild has no intention of suing bloggers and reviewers and we apologize for any misunderstanding in that regard. (We especially thank Pam for her 9/11/12 comment on Bookalicious.com that Mr. Wild has been “very forthcoming and nice.” That is, of course, the tone Mr. Wild wishes to strike.)

Mr. Wild did not want to sue HarperCollins and he did everything possible to avoid it. Mr. Wild made HarperCollins aware of his United States Trademark Registration No. 3,921,658 for CARNIVAL OF SOULS in June of this year, well before HarperCollins was set to publish the book, and politely asked HarperCollins to simply change the name. He sent many follow up emails to HarperCollins and/or its attorneys trying, in good faith, to resolve this matter with HarperCollins without the need for litigation, at a time when it would have been relatively easy for HarperCollins to change the name to another perfectly good title. Unfortunately, Mr. Wild’s suggestions fell on deaf ears. This left Mr. Wild the choice to either protect his legal rights or just give up. After spending over eight years building a business using Mr. Wild’s CARNiVAL OF SOULs registered trademark, Mr. Wild chose to protect his legal rights.

The commenters who pointed out that one cannot trademark the title of a book are correct. However, the United States Patent and Trademark Office makes a distinction between the title of a single work (which may not be trademarked) and the name of a series of works (which can be trademarked). Mr. Wild’s CARNIVAL OF SOULS trademark is for a series of comic books, graphic novels and novels, not the title of a single book. There is simply no legal question that trademarks may properly be granted for series of books. There are currently over 6000 registered trademarks for series of books or novels. HarperCollins itself has 100 or such trademark registrations for “series” of books or novels.

HarperCollins’ bluster that Mr. Wild’s suit is “completely without merit” etc. needs no response, since the appropriate forum for such arguments is the Court. I do note, however, that HarperCollins’ contention that Mr. Wild has “no exclusive right to [use of CARNIVAL OF SOULS] as the title of a creative work” is a misstatement. As discussed above, Mr. Wild’s registered trademark covers a series of comic books, graphic novels and novels. It is not just the “title of a creative work.”

Some postings expressed the opinion that Mr. Wild should not be entitled to his CARNIVAL OF SOULS trademark because the phrase “carnival of souls” existed prior to Mr. Wild’s adoption of it as a trademark for his series of novels and graphic novels. Under trademark law, however, it is not necessary for a trademark to be a uniquely coined term, like KODAK. To the contrary, many well-known trademarks are for otherwise common words or phrases used in connection with various goods. For example, APPLE is the name of a fruit but is also a well-known registered trademark covering computers. Wendy’s International, Inc. has a trademark registration for “WHERE’S THE BEEF?” Reg. No. 1,410,896, for “restaurant and carry out restaurant services,” even though this is a common phrase, not invented by Wendy’s. One of HarperCollins’ own trademark registrations for a series of books is “I CAN READ!” (Reg. No 4,163,123), which I believe most people will agree is a common phrase.

Some postings expressed the opinion that Mr. Wild should not be entitled to his CARNIVAL OF SOULS trademark because there was a 1962 movie by the same name, a remake of that movie and/or a KISS album by that name. That is also not how trademark law works.

Trademark registrations are classified into 42 different “International Classes,” each covering different types of goods or services. It is very common and perfectly acceptable for the same word or phrase to simultaneously exist as a trademark in more than one International Class, for different goods or services. For example, the word LIFECYCLE (itself a common word) is a registered trademark in International Class 21 for bottles (Reg. No. 3, 981,589); in International Class 19 for plastic and wood composite building materials (Reg. No. 3,120,123); in International Class 9 for computer software (Reg. No. 2,954,623) and in many other classes, for different goods and services, all owned by different companies.

Mr. Wild’s trademark registration for CARNIVAL OF SOULS is in International Class 16 (comic books, graphic novels and novels) and in International Class 41 (for multi-media). By contrast, movies (such as the 1962 movie) and recorded music (such as the KISS album) are generally classified in International Class 9. In the lawsuit, Mr. Wild is only seeking to enforce his trademark against HarperCollins’ infringing use in connection with its novel (which is to become a series of novels), the same goods covered by Mr. Wild’s CARNIVAL OF SOULS trademark registration in International Class 16. This is an appropriate exercise of Mr. Wild’s legal rights, notwithstanding prior uses of CARNIVAL OF SOULS for the titles of movies or record albums, which are for different goods in different classes.

As to the “Buffy the Vampire Slayer” use of “Carnival of Souls” in the title of one book in the “Buffy the Vampire Slayer” series, though that use does not predate Mr. Wild’s use, it did not present the threat that HarperCollins’ massive promotion of its CARNIVAL OF SOULS novels (soon to be a series) has. (Incidentally, the name BUFFY THE VAMPIRE SLAYER is itself the subject of many trademark registrations owned by Twentieth Century Fox, including Reg. No. 2,480,081, for a dramatic television series.)

For those who are interested in getting the facts, the legal papers in this case are available on pacer.gov. (You need to set up an account, though the fees are usually only a few dollars). Click “Find a Case” and “search the pacer case locator.” Once you log in, click “civil” and then enter “8:12-cv-01191” as the “case number.” (The case name is “Jazan Wild v. HarperCollins Publishers LLC.”) The facts might even change the opinion of some of the posters. Of course, ultimately, the facts are what matter in Court.