This Article Is Brought To You By The Letter Blank

© John J. Tormey III, Esq. All Rights Reserved.

This article is not intended to, and does not constitute, legal advice with respect to your particular situation and fact pattern. Do secure counsel promptly, if you see any legal issue looming on the horizon which may affect your career or your rights. What applies in one context, may not apply to the next one. Make sure that you seek individualized legal advice as to any important matter pertaining to your career or your rights generally.

Most of the American public heard about Oprah Winfrey's last well-publicized litigation. My understanding was that she was sued in Texas by a commercial cattle-oriented conglomerate. The plaintiffs claimed she had inaccurately and unfairly maligned the culinary safety of cow meat, during one of her television programs. The Texas case seemed vaguely surreal and comic - sort of like an overly-imaginative law school exam question.

But now we must go from the sublime to the ridiculous. Talk about the eradication of your sacred cows. The local press in New York reports that a German "fetish magazine" named "O", has sued one of Oprah's companies and her publisher, over the sale of Oprah's magazine bearing the equally-expansive title of "O". Perhaps even more befuddling, the German magazine somehow derives its own title from the erotic novel "Story of O" - serving as even more of a reminder that there is truly nothing new under the sun. And if this were not bizarre enough, the local press reports that Oprah's company and publisher are now prepared to change the name of her magazine to "O, The Oprah Magazine", in an apparent attempt to assuage the seething plaintiff and make the distinction between the 2 magazines more apparent.

Coincidentally, this lawsuit is receiving even more attention than usual, since Lions Gate is about to release a film called "O" which I understand is somehow loosely based upon Shakespeare's "Othello". The Bard himself referred to the Globe Theatre as "this wooden 'O'". Maybe if we find Shakespeare's heirs - perhaps arguably incarnate in the Bacon Brothers - we can thereby locate the real plaintiff who has something to complain about?

But come on. All kidding aside, could this lawsuit really be happening? Yes. Yes it could. But maybe it shouldn't be allowed to happen.

Let's back up a step. Generally speaking, one acquires trademark (or servicemark) rights under U.S. law, by consistently using a mark in connection with goods or services, and/or by registering the mark with one or more appropriate governmental authorities.

Most people and businesses pick lousy names, from a trademark perspective. The majority of marks go unregistered, and the majority of marks are never properly searched and cleared before use. Again, there is very little new under the sun, and most word-paths have been tread upon by someone else previously. Then again, searching and registering a mark is not without cost. So, many cost-constrained start-up businesses elect to just "wing it", and dispense with the search until they can afford to "get around to it". And surprisingly, sometimes even major-league companies who can otherwise afford to so it, dispense with the trademark search and just go ahead and use the proposed name. This type of decision keeps trademark litigators in business.

Trademark attorneys may sometimes advise their clients to select multiple-word names rather than one-word names - as rock-band-name trademarks, for example - since the statistical chances of infringing some other band's name are likely thereby somewhat reduced. Most artists, on the other hand, are solely concerned about the aesthetics of the band name, and if a 1-word band name sounds right to them, they will use it and damn the torpedoes. This type of decision can also keep trademark litigators in business.

I have admittedly not yet trademark-searched any of the following band names. But a proposed one-word band name like "Blur", at first blush, would trouble me a bit more than the two-word "Def Leppard", from a trademark perspective; since, without knowing anything else about the underlying facts, I would assume that the statistical chances were somewhat higher that another band might be named (or might have been recently named) "Blur".

Trademark attorneys may also sometimes advise their clients to try to use more incongruous word combinations as band name trademarks, rather than predictable word combinations. By this rationale, "Squirrel Nut Zippers" or "Stone Temple Pilots" start to look pretty good as trademark prospects, to say nothing I suppose about "Orchestral Manoeuvres In The Dark". After all, what are the odds that the "Orchestral Manoeuvres In The Dark" name was used by any other pop or rock band prior to or contemporaneously with 1986's "If You Leave"? Then again, the band and its handlers may have had trouble fitting the full name onto a record jacket sleeve, and may also have had trouble convincing label executives that the choice of name should be supported.

One must understand, therefore, that the prospect of trying to protect, let alone enforce and prevent others from using - a one-letter trademark, is the trademark lawyer's equivalent to fingernails scraping on a chalkboard. If a client walks into a lawyer's office and says "Hi. I'd like to protect, for my own exclusive use, the letter 'W'" - well, then absent some extreme fact pattern, that lawyer can expect at least a long and tough road ahead, and perhaps a few broadsides of ridicule from the bench and bar as well.

Most Americans conceive of "monopolies" as something anti-competitive, unfair to the consumer, and ultimately evil - especially given publicity in recent years accorded to the Microsoft case. But what is interesting about copyrights and trademarks, is that they are in fact legal monopolies protected by federal statute. A property right is, essentially, the right to exclude others from using that same property. That is conceptually quite similar to a monopoly. If I own my house, I can keep you off my land with a fence, and the law will back me up on that. If a company owns a registered trademark in "Chock Full o' Nuts", for example; then that company owns the right to exclude others from using the same name in connection with the sale of coffee, and perhaps related goods and services as well.

Haven't we as a society gone too far, when we even entertain the prospect of a company, or a celebrity, laying claim to a LETTER of the ALPHABET? Indeed, should any prior claimant be able to legally monopolize the use of a letter of the alphabet, in connection with ANY kind of goods or services, magazine or otherwise? Should they even be allowed into court with that kind of argument?

Are Arabic numerals also now in play? We might as well allow some corporate behemoth to pull the character of Santa Claus out of the public domain, into the realm of copyright-protection, and charge a royalty whenever the fat man's name or image is evoked. And what about prior sources? Do the publishers of the first edition of Webster's dictionary, or their successors, now have a valid trademark claim against Oprah and the German magazine, for the use of "their" letter?

Some cows are sacred. Some things should simply stay in the public domain. Section 105 of the U.S. Copyright Act, for example, excludes works "of the United States Government" from copyright protection. Shouldn't letters of the alphabet be treated the same way, as a public commodity exempt from any monopolistic endeavors? There may well already be case law holding unitary alphabet letters to be disqualified from trademark protection under certain circumstances. The U.S. Patent and Trademark Office likely has trademark application and registration procedures, reading to similar effect. If so, why not simply codify that common-sense principle in all applicable trademark and other statutes? Among other things, it could eliminate, or at least mandate a shorter life-span for, court-clogging lawsuits like this one.

And what's next? Will the adjudicated winner of the O litigation also be awarded a legally-sanctioned monopoly over the corresponding three dashes in "- - -"; that is, the International Morse Code symbol for the letter "O"? Or should that control instead now be awarded to the heirs of Morse, wherever they may be? And what about our National Anthem? Am I at risk of being enjoined from singing "O(h) say can you see..." at the start of baseball games at Shea Stadium? And what about Tic-Tac-Toe? Must there now be a Congressional mandate that "X" must always win, and must always occupy all 9 cells on the grid, so as not to "infringe"? And if so, what about the fate of Whoopi Goldberg and Hollywood Squares?

A number of entertainers use single-word names, and we as a society tolerate that. We tolerate it moreso if the entertainer has the talent to back it up: "Elvis". "Sting". Now, "Prince" is, of course, a variation on the theme, an entertainer who at one point dispensed with his chosen one-word name in favor of an arcane symbol not found in the American alphabet. The general point here is, Prince aside, that an entertainer may be able to build up some trademark protection in his or her continuous and uninterrupted use of his or her one-word name, particularly if that entertainer is extremely well-known.

But some may feel that claiming one of the 26 letters of the alphabet as your own, takes its own special brand of... uh... chutzpah. Basketball's Oscar Robertson was known as "The Big O", probably because fans and the press tagged him with that moniker - and probably not because he adopted it for himself. He may not have been as well-liked a guy, if instead he himself had arrogated "The Big O" nickname for his own use! (And speaking of Oscar, how come he hasn't appeared yet in this lawsuit?)

In similar vein, some may feel that Oprah should have been satisfied to call her magazine "Oprah" rather than, simply, "O". It is unlikely that Oprah's decision as to how to name the magazine was forced upon her by her colleagues. In other words, a different P.R. decision may have had incidental legal benefit, too.

Sure, there is precedent in the entertainment field, for trademark use predicated upon a single letter of the alphabet. The musical group "M" had a number-one hit with "Pop Muzik" in 1979, and that was kind of cute - but the group seemed to disappear from the music scene before anyone even began to consider the trademark implications of their continued use of their band name.

The television company "E!" has apparently been successful in establishing a brand name for itself, accepting the inherent challenge in generating trademark rights in a one-letter name; but their use of the exclamation point (and their occasional use of the linked phrase "entertainment network") properly distinguishes them from the alphabet-usurping pack. The Motion Picture Association of America (MPAA) lays claim to its single-letter-ratings as trademarks in some fashion; that is, currently, "G", and "R". But I suspect that the MPAA would carefully refrain from threatening another company's use of the letter "G" or "R", unless that use was made in the context of ratings or otherwise in connection with film.

The point is, there is something disturbing about this O lawsuit just filed in the district court in Manhattan. What if a schoolteacher reads about this lawsuit, and now tries to lay personal claim to the letter grades "A" through "F" as used on student-graded papers? What if that same teacher starts invoicing all other teachers who grade papers in the U.S., demanding trademark royalty payments? And speaking of damage to the world of education, what will Grover, Elmo, and the gang at Sesame Street do, when they can no longer boast that a particular program is "brought to you by the letter 'D'"? The consternation is enough to press the ghost of O. Henry back into active service - the only question being, if he rejoins the non-ethereal world and joins the lawsuit, will he join as party-plaintiff or party-defendant? And, will his prescient use of the period after his "O" render him impervious to liability?

But seriously folks, in defense of Oprah, it is apparently not her or her entities that initiated the aggressive attempts to exclude others from use of the letter "O". Rather, according to the news reports, it was the German "kinky fashion" magazine promoting leather and garters that decided to attack Oprah's company in the context of the New York court. And in response, Oprah and her affiliates apparently decided to expand her magazine title, to make the bright-line distinction between the 2 magazines more apparent to all, including the consumers. Maybe as a matter of reciprocal international courtesy, and in an effort to keep this dispute from wasting further judicial resources, the leather and garter crew should agree to change their magazine's name from "O" to "Ouch!" (But query if they thereby would risk receiving an adverse claim from the 'E!' network based upon the use of 'E!''s exclamation point?)

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My law practice includes the field of entertainment. If you have questions about legal issues which affect your career, and require representation, please contact me:

John J. Tormey III, PLLC
217 East 86th Street, PMB 221
New York, NY 10028
(212) 410-4142 (phone)
(212) 410-2380 (fax)