Real courage is when you know you’re licked before you begin, but you begin anyway and see it through no matter what.
—Harper Lee, To Kill a Mockingbird
Time will tell if this quote applies to author Nelle Harper Lee’s (“Ms. Lee’s”) battles with her hometown museum—the Monroe County Heritage Museum (the “Museum”) over use of “TO KILL A MOCKINGBIRD” and “HARPER LEE” in connection with clothing and gift items.
I enjoyed reading To Kill a Mockingbird as a teenager. Then, I had the pleasure of watching Gregory Peck’s performance as the lead character Atticus Finch in the movie adaptation. Atticus Finch was voted the greatest screen hero of all time by the American Film Institute two weeks before Mr. Peck’s death in 2003.
There has been a lot of legal activity in connection with Ms. Lee, her book title and trademark applications filed for “TO KILL A MOCKINGBIRD.” For instance, Ms. Lee filed a trademark application for use of “TO KILL A MOCKINGBIRD” in connection with “printed matter, namely books” on September 12, 2012. An Office Action refused to register the applied-for mark because it was “used only as the title of a single creative work, namely, the title of a specific book; it does not function as a trademark to identify and distinguish applicant’s goods from those of others and to indicate the source of applicant’s goods.” Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127 (citations omitted). On July 5, 2013, Ms. Lee expressly abandoned this application.
In February 2013, Ms. Lee filed an application to use the mark for “Clothing for men, women and children, namely T-shirts, hats, jackets.” The Museum filed a Notice of Opposition against this application in August alleging, among other things, that it had been using the mark continuously in connection with clothing and gift shop items under the mark TO KILL A MOCKINGBIRD for years (examples below):
The Museum states that it “maintains and operates six historic sites in Monroe County, Alabama, in an effort to preserve the area’s rich history, including the area’s connection to the literacy legacy of both Truman Capote and … Harper Lee.” Ms. Lee resides not far from the Museum and its gift shop. The Museum alleged that Ms. Harper committed fraud on the United States Patent and Trademark Office by submitting a declaration that stated that she was not aware of anyone else having the right to use the mark in commerce (this would include selling clothing and gifts in a museum gift shop) that would be likely to cause confusion. In support of its allegation, the Museum included the fact that Ms. Lee had met with Oscar-winning actress Patricia Neal when she performed Truman Capote’s “A Christmas Memory” at the Museum in November 2008. At that time, Ms. Lee toured the exhibit about herself. The gift shop is prominently located near the main entrance to the Museum.
Last week, Ms. Lee sued the Museum in Federal Court, arguing that the book title is registered with the State of Alabama and that she has common law trademark protection in both her name “Harper Lee” and “To Kill a Mockingbird.” She brought various claims in the lawsuit relating to trademark infringement, false origin, likelihood of confusion, trademark dilution, right of publicity and unfair competition. The next move in the lawsuit belongs to the Museum.
Ms. Lee is no stranger to the courts. She recently settled her dispute against her former literary agent and other defendants over her alleged deprivation of royalties from her book.