Nelle Harper Lee, 87, Pulitzer Prize-winning author of the world-famous novel “To Kill A Mockingbird,” filed a federal lawsuit against the Monroe County Heritage Museum, alleging that the Museum has made willful and unauthorized use of the trademarks and names TO KILL A MOCKINGBIRD and HARPER LEE. See Complaint (Oct. 10, 2013). Lee alleges that the Museum, located in her hometown of Monroeville, Alabama, promotes its business using the name of Lee’s novel TO KILL A MOCKINGBIRD and her professional name, HARPER LEE, and also sells a wide variety of goods and services under the names. The Complaint asserts this conduct constitutes trademark infringement, trademark dilution and unfair competition under federal and state law in addition to violations of her right of publicity. In addition, Lee alleges that the Museum’s registration and use of the internet domain name constitutes cybersquatting.

The Heart of the Conflict – Fact or Fiction

The lawsuit is part of a continuing conflict between Lee and the Museum over use of the marks. While the setting of Maycomb County in Lee’s novel To Kill A Mockingbird was inspired by Lee’s home of Monroe County, Alabama, Lee’s Complaint states that “the setting, plot and characters are products of Lee’s imagination.”

The Complaint alleges that the Museum claims repeatedly in IRS filings that its mission is “historical,” but that “its actual work does not touch upon history. Rather, its primary mission to trade upon the fictional story, settings and characters that Harper Lee created in To Kill A Mockingbird, and Harper Lee’s own renown as one of the nation’s most celebrated authors.” “Historical facts belong to the world,” states the Complaint, “but fiction and trademarks are protected by law.”

In her Complaint, Lee alleged that she first began to use the marks TO KILL A MOCKINGBIRD and HARPER LEE in connection with the business of selling books in July 1960, the year her famous novel was published. Although Lee does not currently own any federally registered trademarks, she does own an Alabama state trademark “books” registration for TO KILL A MOCKINGBIRD,” Alabama Registration No. 113-341 (State Classification # 25).

To Kill a Trademark

Lee applied to register TO KILL A MOCKINGBIRD with the U.S. Patent and Trademark Office (“USPTO”) in September 2012 for books (USPTO Serial # 85726765). At that time, Lee also applied to register the mark for clothing (USPTO Serial # 85726786), based on an intent-to-use the mark in commerce. The application to register TO KILL A MOCKINGBIRD for books was ultimately abandoned after the USPTO preliminarily refused registration because the mark was the title of a single creative work, namely, one book. The Museum filed a Notice of Opposition on Aug. 19, 2013 seeking to prevent Lee’s registration of the mark, claiming that the Museum possesses superior rights to Lee in the mark through its use of TO KILL A MOCKINGBIRD in connection with clothing and various gift shop items since at least as early as 1995. The Museum also claimed that it owns the domain name and that it has operated a website at the domain advertising its museum, gift shop and goods for sale using TO KILL A MOCKINGBIRD since at least as early as 1998. Notably, the Museum claimed that by applying to register TO KILL A MOCKINGBIRD for clothing, Lee made a “knowingly false misrepresentation of fact” that constitutes fraud on the Trademark Office, because Lee signed a declaration stating that she believed no one else had a right to use the mark. The Museum alleged that the declaration – which is standard and required of all trademark applicants – was falsely made because prior to filing her application Lee had knowledge of the Museum’s use of the mark TO KILL A MOCKINGBIRD to sell clothing and gift shop items, and thus of the Museum’s “preexisting rights” to the mark. See Notice of Opposition (Aug. 19, 2013). Lee responded to the Museum’s Notice of Opposition on September 27, 2013, denying that the Museum possesses superior rights in TO KILL A MOCKINGBIRD and asserting that the Museum’s use of the mark to advertise and sell goods infringes and dilutes Lee’s rights. See Answer (Sep. 27, 2013). Further, Lee asserted that on multiple occasions upon learning of the Museum’s unauthorized use of the mark, she “demanded strenuously” that the Museum cease such uses. Further, Lee argued that the Museum’s Opposition should be dismissed on the grounds of fraud and unclean hands, alleging that the Museum has “made material statements to [Lee] and to third parties that are inconsistent with [the Museum’s] claim of senior rights in the mark TO KILL A MOCKINGBIRD.” In October 2013, less than a month after filing her Answer to the Museum’s Opposition to her application to register TO KILL A MOCKINGBIRD, Lee filed the Complaint in the United States District Court for the Southern District of Alabama. In addition to expanding upon the facts alleged in Lee’s Answer to the Museum’s Notice of Opposition, she makes specific allegations concerning the Museum’s bad faith intent. In addition to opposing her registration of TO KILL A MOCKINGBIRD with the USPTO, Lee alleges that the Museum previously engaged in infringing activity requiring Lee to make multiple cease and desist demands, such as publishing a cook book under the name of one of Lee’s fictional characters, and creating unauthorized To Kill A Mockingbird-themed trinkets. In her federal complaint, Lee seeks permanent injunctive relief, treble damages, the Museum’s profits and attorneys’ fees and costs. Lee also seeks an order requiring the Museum to deliver all merchandise, packaging and promotional materials bearing the marks HARPER LEE and TO KILL A MOCKINGBIRD, and all means and materials for making same, for destruction.

This article was prepared by Rita Weeks, Norton Rose Fulbright LLP, New York, NY.Sources: Case No. 1:13-cv-00490-WS-B, Nelle Harper Lee vs. Monroe County Heritage Museum, Inc. (S.D. Ala.); U.S. Patent and Trademark Office, Serial Nos. 85726765 and 85726786.