Judge Cock(y)blocks Author Faleena Hopkins' Demand Other Authors Stop Using The Word 'Cocky' In Their Titles

from the 40-percent-decrease-in-cocksureness dept

Romance novelist Faleena Hopkins recently turned the rest of the genre against her by deciding -- with the USPTO's blessing -- she was the only person who could use the word "cocky" in a book title. Given the nature of romance novels, the striking of the word "cocky" left precious few terms capable of describing a certain blend of bravado and sexual prowess.

The backlash was not only immediate, but thorough. Authors hit with cease-and-desist notices posted these to social media. One writer filed a petition with the USPTO to have the recently-acquired trademark invalidated. To top everything off, the Authors Guild of America joined forces with two of the authors Hopkins sued. What Hopkins likely felt would be an easy win in a trademark infringement case is turning into another cautionary tale about questionable IP and heavy-handed enforcement.

As The Guardian reports, Hopkins has already been handed a loss in her lawsuit against author Tara Crescent and publicist Jennifer Watson.

In the case, heard in a New York court on Friday, judge Alvin Hellerstein described romance readers as “sophisticated purchasers” unlikely to be confused between different authors’ books, found that cocky was a “weak trademark”, and denied Hopkins’s motion for a preliminary injunction and temporary restraining order to stop the publication of books with the word “cocky” in the title.

The lawsuit isn't dead, but authors are still free to use the word "cocky" in book titles until everything's settled. The oral arguments [PDF] suggest the judge doesn't find Hopkins trademark arguments persuasive. Instead, the judge points out any restraining order would cause damage to the people Hopkins is suing, far outweighing anything Hopkins might suffer if other "cocky" products remain on the market.

[I]t seems to me that defendant, who is on the market with her romance novels, if restrained, would also suffer damage and it would be irreparable. If a book is taken off the market, it can't be sold. Books of this nature have to do with timeliness as well. So I can't say that there is any balance here. If there is, it is likely to tip in defendants' favor because a good portion of injury by the plaintiff would be compensable in damages and captured profits. So that factor is in favor of defendant.

Whether an injunction is in the public interest, given the way these trademarks are used, I don't think there is much of a public interest in them.

Here plaintiff can't demonstrate that its trademark merits protection, nor in my opinion that defendant's use of a similar mark is likely to cause consumer confusion. Those are the eight factors that we just talked about. Accordingly, the motion for a TRO and for a preliminary injunction is denied.

And there's this, which has nothing to say about the merits of the case, but does provide a brief glimpse of the intersection of the court of public opinion and the US federal court system.

THE COURT: You present in your papers about a dozen instances of prior use of "Cocky" in a title: Bite Me Cocky; A Little Bit Cocky; The Cocky Cowboy; Cocky Balls Boa, described as an erotic parody; Cocky Cowboys; Cocky SWATS; Cocky: A Stepbrother Romance; Cocky: A Cowboy Stepbrother Romance; and so on.

MR. REUBER: Your Honor, if I may?

THE COURT: No. You are out of the case.

MR. REUBER: I understand, your Honor. But I penned the brief, and there is an error that my client alerted me to this morning in the brief. Specifically, it is first one you just read, Bite Me Cocky, published in 2012. He has learned that that title may have changed as a result of the Cockygate sort of disputes. It might have been originally published as Bite Me and not Bite Me Cocky. I just wanted to point that out.

THE COURT: Originally Bite Me, then it became Bite Me Cocky?

MR. REUBER: Yes, your Honor. That was our understanding.

THE COURT: What is the explanation for the change?

MR. REUBER: As a protest, effectively. That is our best guess.

THE COURT: In response to the protest, he added the word "Cocky"?

MR. REUBER: In response to Cockygate registrations, yes, we believe the author added the word "Cocky" as a protest. That is pure supposition on our part, your Honor. We have only been doing this for about 48 hours.

The challenge of the trademark continues, as is noted at the USPTO website. If everything continues down this road, Faleena Hopkins won't have any trademarks to bully people with, much less a lawsuit victory to justify her bullying behavior.

Filed Under: cocky, cockygate, faleena hopkins, romance novels, trademark, uspto

Romance Novelist Secures Trademark For Word 'Cocky,' Begins Beating Other Novelists Over The Head With It

from the internet-throws-bone-to-commenters dept

Over the weekend, the unlikeliest of hashtags began to draw attention on Twitter: #cockygate. There are a million places one's mind could go without further information, but most would only be partially correct. It appears a romance novel writer, Faleena Hopkins, decided her recently-registered trademark should be wielded as a weapon against any other author using the word "cocky" in the the title of their books.

Writer Jamila Jasper apparently was apparently one of the first to receive a cease-and-desist from Hopkins. Here's the legal threat in all of its misinformed glory.

My name is Faleena Hopkins, author of the Cocker Brothers, The Cocky® Series.

The Federal Trademark Commission has granted me the official registered trademark of the word/mark "Cocky" in relation to romance books, no matter the font.

Trademark Registration number: 5447836

I am writing to you out of professional respect so that you may rename your book "Cocky Cowboy" which shares the same title as my book, and republish all the versions (ebook, paperback and audible) on Amazon to keep your ratings and money earned.

My attorney at Morris Yorn Entertainment Law has advised me that if I sue you I will win all the monies you have earned on this title, plus lawyer fees will be paid by you as well.

I will do that -- but I'd rather give you the option.

I have had this series established since June 16, 2016 and I take all of the hard work I put into establishing it, very seriously.

Your hard work I also take seriously.

You have the opportunity to adjust, rename, and republish before taking further action. You can do so on Amazon without losing reviews.

So… there's a lot to unpack here, starting with the nonexistent "Federal Trademark Commission." (Grants come from the US Patent & Trademark Office -- a fact you'd think someone with a registered trademark would know.)

Also: making a blanket statement about how total and complete your victory will be in court isn't the sort of statement good lawyers make or encourage their clients to make. It appears Morris Yorn handled the filing of the trademark registrations for Hopkins, but its involvement with this legal threat has yet to be verified. This certainly doesn't sound like the sort of advice entertainment lawyers would give someone who doesn't even appear to know the USPTO's proper name.

While it's true Hopkins does have a registered trademark for the word "cocky," it only covers "series of books in the field of romance." Hopkins cannot sue people for merely using the word "cocky" in a book title. It only restricts others from publishing a "cocky" series of books in one particular genre. For a very nuanced breakdown of how trademark registrations work in cases like these, IP lawyer Marc Whipple's blog post on the subject is well worth reading. But it all boils down to this:

Final issue: The way a producer of goods accrues trademark rights, as I said above (go look, I’ll wait) is to use the mark in commerce in association with the particular goods at issue. You (usually) cannot try to claim something as a trademark when someone else was already using it for similar goods, because assuming an association could be formed between those goods and that mark, it has likely already formed in relation to the goods already on the market. And if it hasn’t formed, that is an indication that is is unlikely to form in the first place. In any event, prior use of a trademark almost always preempts attempts by a later user to claim exclusive rights in a mark.

It took me about seventeen seconds to locate several romance books on Amazon with the word “Cocky” in their titles which were published before the alleged first use in commerce of the mark by HHP. (In fact, I found what is arguably a series of books using the mark to identify a series, which makes the registration itself sort of iffy, but that’s a separate issue.) So for this reason as well, if in fact the publishing company and/or its attorneys are representing that using the word “Cocky” in the title of a book infringes the trademark, they are likely in error. Or, at least, any attempt to enforce the trademark against such goods would likely open the trademark registration up to attack and potential invalidation on the grounds of prior use and/or lack of distinctiveness.

The longer this "gate" has gone on, the more it's produced discoveries and developments that push Faleena Hopkins further and further away from the legal victories she appears to believe are only a legal filing away. The font (produced by Set Sail Studios) used by Hopkins in her registered trademark apparently cannot be used that way. The designer of the font says he's not given anyone permission to trademark a design using the font and no fonts licensed by the company contain these permissions.

Her "cocky" trademarks are now being formally challenged. Another writer, Kevin Kneupper, is petitioning the USPTO to cancel the trademarks it handed to Hopkins. It's a long shot, but his filing [PDF] alleges Hopkins defrauded the USPTO during the application process.

Petitioner seeks to cancel the Registration on the ground that, on information and belief, it was obtained as a result of knowingly false statements about the ownership and use of the Mark, which were made with the intent to deceive the USPTO and constitute fraud on the USPTO.

[...]

[W]ebsites such as Goodreads refer to the book series as being titled “The Cocker Brothers of Atlanta.” The e-book specimens in Registrant’s application use both this title and the title “Cocker Brothers, The Cocky Series.” The print specimens in Registrant’s application, by contrast, use only the title “Cocker Brothers” for the series. Registrant’s application does not explain these discrepancies and various titles or provide dates for when the “Cocky Series” title was first applied to the series.

On information and belief, at some point in time Registrant has changed the title of the series (and appears to have done so multiple times). On information and belief, Registrant intentionally withheld information from the Patent and Trademark Office regarding these changes to the series title with intent to deceive the USPTO.

A change to the series title would be material to the question of whether and how the term “cocky” was used by Registrant in commerce, as well as to the priority date of Registrant’s trademark, which is currently claimed to the date of first publication of the first book.

This is all the result of someone drastically, and perhaps purposely, misunderstanding the protections granted to her by the USPTO. But rather than reconsider her actions, Faleena Hopkins still believes she's in the right. Not only that, she's now the "victim," thanks to backlash she caused by sending out bogus legal threats to writers she hoped knew even less about trademark law than she does. Apparently, a few writers have already complied with her ridiculous (and legally-incorrect) demands.

Jamile Jasper -- the one targeted in the C&D at the beginning of the post -- has also changed her book title as a result of Hopkins' legal threats. But it probably won't make Hopkins feel any better. "Cocky Cowboy" -- the alleged trademark violator -- is now "The Cockiest Cowboy to Have Ever Cocked."

Filed Under: cocky, cockygate, faleena hopkins, jamila jasper, trademark