To Kill a Trademark Suit - Fordham Intellectual Property, Media & Entertainment Law Journal
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To Kill a Trademark Suit

To Kill a Trademark Suit

On Wednesday, the operators of a museum honoring To Kill a Mockingbird asked a judge from the District Court for the Southern District of Alabama to dismiss a trademark infringement claim filed by author Harper Lee. In addition to having To Kill a Mockingbird attractions, the Monroe County Heritage Museum has a gift shop that sells related souvenirs, clothing, and even cookware about the novel. The museum stages a To Kill a Mockingbird play each spring and its website is www.tokillamockingbird.com.

Harper Lee still lives in Monroe County, which served as the inspiration for the fictional Maycomb County—the setting in To Kill a Mockingbird. Lee won a Pulitzer Prize for the novel. It is the only novel she ever published.

Although Harper Lee has not published a novel in over half a century, she sued the museum from her hometown of Monroe County, Alabama because she believes the Heritage Museum is unjustly profiting from her fame. Although the museum began operating in 1992, Lee did not file a claim until October of this year. Because Lee “slept” on her rights for eighteen years, the operators of the museum are arguing that her claim is barred by the doctrine of laches.

In addition to the laches argument, Monroe County Heritage Museum is using a fair-use defense. The museum emphasizes that although Lee registered the mark for “books” in the State of Alabama, she has no federal trademark registration for the name. The museum also argues that Lee was well aware of the operation; she visited the site on several occasions and had twice contacted the museum, objecting to certain products.

Two months prior to the suit, the Monroe County Heritage Museum lodged an opposition proceeding at the U.S. Patent and Trademark Office. The museum sought to block Lee’s application for a federal trademark protecting the novel’s title. Lee acknowledges the lack of federal registration in her complaint, but argues that the museum cannot use the book title or her name without her permission because they have built up enough common law protection.

The complaint states that about one million copies of To Kill a Mockingbird are still sold annually and that the novel has been translated into over twenty-five languages. The complaint also states that the novel is required reading in over three quarters of the high schools in the United States. Pursuant to a license granted by Harper Lee, the novel was adapted into a film that won three Oscars, including best actor. In his Oscar winning role, Gregory Peck starred as Atticus Finch and according to the complaint, the American Film Institute called Finch the greatest movie hero of the twentieth century.

The complaint alleges that the “primary mission [of the museum] is to trade upon the fictional story, settings and characters that Harper Lee created in To Kill a Mockingbird.” However, the complaint also acknowledges that “[t]he museum claims . . . that its mission is ‘historical.’” This adds an interesting wrinkle to the case because historical facts are typically fair game, but fiction and trademarks have protections under law.

The case is Lee v. Monroe County Heritage Museum, Inc., No. 1:13-cv-490 (S.D. Ala. filed Oct. 10, 2013).

Eric Engelman

Eric Engelman is a second year Fordham law student and a staff member of the Intellectual Property, Media and Entertainment Law Journal. A graduate of Binghamton University, his IP interest stems from his musical background and experience in the clothing industry. An avid distance runner, in his spare time he can be found running from the law. Like Oscar Wilde, he thinks the only things you can never be are overdressed or overeducated.