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Court Won’t Stop Author from Messing with Texas

There has been quite a fight going on in the Lonestar State about an author’s right to use a state’s trademarked slogan as the title of her book.

Most everyone has heard “Don’t Mess with Texas.” It’s catchy. But the Texas Department of Transportation (TxDOT) apparently takes the slogan literally, and filed a trademark infringement suit against author Christie Craig because she used it as the title of her new novel, Don’t Mess with Texas, scheduled to go on sale August 23. TxDOT also sued Craig’s publisher, Hachette Book Group USA, Grand Central Publishing, and Barnes & Noble. Here is TxDOT’s complaint filed on August 19 in the United States District Court for the Western District of Texas at Austin. Texas Department of Transportation v. Craig, 1:11-CV-00726 (W.D. Tex.).

In its complaint, TxDOT asserted that the slogan (known as the Mark):

has been in continuous use for many years in connection with various goods and services, including but not limited to anti-litter campaigns, clothing, beverage containers, magnets, jewelry, printed materials (such as postcards, note pads, posters, folders, decorative pencils, etc.).

TxDOT also asserted that the slogan “has acquired a favorable reputation to consumers as an identifier and symbol of TxDOT and its products, services, and goodwill. Thus, TxDOT would be harmed by the sale of the book, which “contains numerous graphic references to sexual acts, states of sexual arousal, etc.” (emphasis added), which TxDOT excerpted in an exhibit to its complaint.

Based on this favorable reputation, TxDOT alleged that the defendants “intended to cause, have caused, and are likely to continue to cause confusion, mistake, and deception among consumers, the public, and the trade as to whether Defendants’ book originates from, or is affiliated with, sponsored by, or endorsed by TxDOT.” As a result, the defendants would profit from “the enormous amount of goodwill” associated with “Don’t Mess with Texas.”

TxDOT asserted claims for trademark infringement, dilution due to blurring, dilution due to tarnishment, dilution under Texas state law, and unfair competition, and asked for a temporary restraining order against the sale of the book, pending the resolution of its motion for a permanent injunction.

But United States District Judge Sam Sparks didn’t see it that way and denied TxDOT’s motion for a TRO. In his order entered on August 23, he identified two reasons for his ruling, the first of which is sure to please Craig and her publisher, and the second of which is not:

First, the Court is not convinced TxDOT has a substantial likelihood of success on the merits. Apart from Defendants’ “First Amendment right to choose an appropriate title for literary works,” Westchester Media v. PRL USA Holdings, Inc., 214 F.3d 658, 644 (5th Cir. 2000), the Court finds significant counsel’s concession that none of TxDOT’s trademark registrations cover books. In light of these concerns, the Court lacks sufficient evidence to conclude TxDOT has a substantial likelihood of success on the merits.

Second, the Court finds the balance of harms does not favor TxDOT. At the hearing, Defendants’ counsel represented 35,000 copies of the book had been printed and distributed to retailers, and were scheduled to go on sale at the open of business on August 23, 2011. Therefore, enjoining the sale of the books would not only deprive Defendants of significant revenue from the sales, but would also subject them to the potentially sizeable additional costs of guaranteeing compliance with the Court’s order. Moreover, the Court doubts Defendants’ book will fly off the shelves with such speed that sales could not be enjoined in the future, should TxDOT prevail on its claims in this lawsuit. Finally, in light of the questionable popularity of Defendants’ book, any harm TxDOT might suffer is merely speculative; and to the extent TxDOT may suffer concrete financial harm, there is no evidence suggesting Defendants could not compensate TxDOT financially.

(Emphasis added.)

So there you have it. As the Court explains, a party seeking an injunction has to demonstrate that it has a substantial likelihood of prevailing on the merits of its lawsuit. The reasoning goes that if the party cannot show that it will prevail at trial, then it is not entitled to injunctive relief, which is typically requested at the time suit is filed (as was the case here).

As to the second reason, the court is required to balance the harms, i.e., the harm the plaintiff will sustain if the court denies its motion for an injunction versus the harm the defendants will sustain if the court grants the motion. Here, the Court found that the loss of revenue to the defendants, combined with the cost of complying with an injunction, which would likely require the defendants to destroy their inventory and change the title, cover art, and marketing and promotional materials, outweighed the harm TxDOT would sustain without an injunction. Plus, the Court was not convinced that the book would sell so well or so quickly that TxDOT could not renew its request for injunctive relief if it did prevail on its claims.

For some other comments, here’s a post by Barbara Vey at Publishers Weekly’s Beyond Her Book blog, in which she discusses the case and also includes some quotes from the book, which prove beyond the shadow of a doubt that there’s no risk of confusion between this book and anything TxDOT does.

Also, Eric Crusius at InternetBiz Law discussed the case here, although I do disagree with his statement that there were no winners in the case.
Judge Sparks was correct in denying TxDOT’s motion for an injunction because its claims did not have any merit. But even though he questions just how successful Don’t Mess with Texas will be, Craig and her publisher could not afford to pay for the publicity they’ve gained through this lawsuit, which will result into increased sales. People will buy the book just to see why TxDOT was so alarmed.

So maybe those 35,000 copies will fly off the shelves after all.