PEN NAMES

IVAN HOFFMAN, B.A., J.D.


        Writers, actors, recording artists and artists, among other persons, often do their creating using fictitious names, pseudonyms.  In the literary world these are called “pen”  names.  In the world of acting, stage names.  There are a number of legal issues presented by pseudonyms and below is a discussion of some, but certainly not all, of those issues.

        For the sake of simplicity, I will assume that the situation is one of a writer writing for a publisher and as a result, I will use only the term “pen names” in this article.  The issues are much the same for all forms of these fictitious names and similar situations.  Overall, pen names cannot be used for any unlawful purposes, either under the civil or criminal laws.

Copyright Issues

        A work can be copyrighted in the pen name of the author.  There is no copyright protection for names, although, as discussed below, there may be other forms of intellectual property and other protection available.

        When filling out the application form for the registration of the copyright (Read “Do I Need to Register My Copyrights?”), the appropriate indications must be made to reflect the situation in this regard.  The application can list either just the pen name or the real and pen names in the appropriate spaces.

        Under the provisions of the United States copyright law, for works created after January 1, 1978, if the author is identified in the records of the copyright office, the term of protection for the work is the life of the author plus 70 years.  If the author is not identified in the records of the copyright office, the term of protection is 95 years from the publication of the work or 120 years from the creation of the work, whichever period expires first.  If, after filing the original application without identifying the author, the author’s identify is then later revealed in the said records, the term reverts to the life of the author plus 70 years.  Other terms may apply to joint author works and works made for hire etc.  (Read “When Do Copyrights Expire?”)

Trademark Issues

        A pen name can become identified with the person using the name and as such, may qualify for trademark protection.  This protection can be in under the federal trademark laws or the laws of a particular state governing unfair competition, secondary meaning and the like.

        One potential cause of action available to the writer using a pen name comes under the Federal Lanham Act, for example, provides in part:

Sec. 1125. - False designations of origin, false descriptions, and dilution forbidden

(a) Civil action

(1) Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which -

(A) is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or [statute continues]

        The above provisions mean that the writer might be able to prevent the use of his or her pen name if it is being used by another in a manner that makes it appear that the second writer’s writing was coming from the first writer.  There may be similar provisions under particular state laws such as unfair competition and other laws.

        Furthermore, if any party seeks to register a pen name as a trademark which pen name is the name of a particular living individual, then either the consent of that individual must be obtained and filed or a disclaimer filed stating that the name is not the name of a particular living individual.  Pen names also cannot be registered if they are the name of a deceased President of the United States during the life of the President’s widow except with the consent of the President’s widow. [15 U.S.C. section 1052 (c)].

        The issues become much more complex when trademark issues are mixed in with issues related to domain names.  For some of the background and related issues in this regard, read the articles on my site dealing with these issues called “Julia, Jimi and Cybersquatting” and “Bruce and Julia: A Domain Name Case Study.”

        The above cases arose under the Uniform Domain Name Dispute Resolution Policy (UDRP).  There are a significant number of other cases dealing with personal names that have come down under the UDRP but it would unduly complicate this article to delve into them.  However, let me at least say that one of the “defenses” available to a domain name registrant to defeat the claims made by the owner of the claimed rights in the name is for that registrant to show that:

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights;
        Suffice it to say that if a personal name and a pen name overlap, there may be significant legal issues to resolve.

        Under the Anticybersquatting Consumer Protection Act (ACPA), the conflict is presented in this manner.  The ACPA provides, in part:

SEC. 3002. CYBERPIRACY PREVENTION.

(a) IN GENERAL- Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125) is amended by inserting at the end the following:

(d)(1)

(A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—

`(i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section; and
`(ii) registers, traffics in, or uses a domain name that—

`(I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; [statute continues]

        The ACPA further provides:
(b) CYBERPIRACY PROTECTIONS FOR INDIVIDUALS-

(1) IN GENERAL-

(A) CIVIL LIABILITY- Any person who registers a domain name that consists of the name of another living person, or a name substantially and confusingly similar thereto, without that person's consent, with the specific intent to profit from such name by selling the domain name for financial gain to that person or any third party, shall be liable in a civil action by such person.

(B) EXCEPTION- A person who in good faith registers a domain name consisting of the name of another living person, or a name substantially and confusingly similar thereto, shall not be liable under this paragraph if such name is used in, affiliated with, or related to a work of authorship protected under title 17, United States Code, including a work made for hire as defined in section 101 of title 17, United States Code, and if the person registering the domain name is the copyright owner or licensee of the work, the person intends to sell the domain name in conjunction with the lawful exploitation of the work, and such registration is not prohibited by a contract between the registrant and the named person. The exception under this subparagraph shall apply only to a civil action brought under paragraph (1) and shall in no manner limit the protections afforded under the Trademark Act of 1946 (15 U.S.C. 1051 et seq.) or other provision of Federal or State law.

        Indeed, the ACPA actually ordered a study dealing with abusive personal name registrations.

        Again, there may be laws in your state that apply as well as or instead of the ACPA.

Contract Issues

        The agreement between the author using a pen name and the publisher should include appropriate provisions granting the publisher the right to use that pen name in connection with the work being published and in other ways as well.  The author may wish to restrict these grants in some respect.

        There also may be circumstances where the publisher has created the pen name and now wishes to have the author write a work (book or otherwise) using that pen name.  In such instances, the publishing agreement has to be express and clear about the respective rights of the publisher and obligations and restrictions on the author regarding that pen name.

Conclusion

        These are just some of the issues presented by pen names.  This article is not intended to be exhaustive of all of the issues or the many nuances presented by the issues discussed.

        Since the questions are complex and the potential rewards significant, publishers and authors alike should seek legal advice from an attorney experienced in these matters.
 

© 2002 Ivan Hoffman.  All Rights Reserved.

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This article is not intended as legal advice.  The specific facts that apply to your matter may make the outcome different than would be anticipated by you.  This article is based on United States law.  You should consult with an attorney familiar with the issues and the laws of your country.  This article does not create any attorney client relationship.

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No portion of this article may be copied, retransmitted, reposted, duplicated or otherwise used without the express written approval of the author.

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