Tolkien’s Name: Nominative Use or IP Infringement?

by Aaron Thalwitzer

What constitutes trademark infringement? A few weeks ago, I wrote about Sarah Palin trademarking her name. Along similar lines, another beloved, and not-quite-fictional character’s name is the subject of some IP action: J.R.R. Tolkien.

The story can be summarized as follows: a guy had a nerdy twitter conversation with another nerd, one of them said, “While you were reading Tolkien, I was watching Evangelion.” He thought that clever, put it on some pins, and sold them on Zazzle.com.  Zazzle then pulled the pins for potential IP right infringement. I’m not buying it.

Predictably, a new store has appeared offering a range of censored Tolkien items, and the ‘offending’ product has had vastly increased exposure as a direct result of the removal.”

I don’t think this was violative. In fact, it was straightforward, bare-bones nominative use, which requires:

1. The product or service cannot be readily identified without using the trademark (e.g. trademark is descriptive of a person, place, or product attribute.
2. The user only uses so much of the mark as is necessary for the identification (e.g. the words but not the font or symbol.
3. The user does nothing to suggest sponsorship or endorsement by the trademark holder. This applies even if the nominative use is commercial, and the same test applies for metatags.

Check, check, and check.

They didn’t use the Tolkien font or logo, the word “Tolkien” describes the author as well as the brand. The use was a single word. Tough to get smaller than that. The use is, if anything, gentle satire, and with the Estate’s history of touchiness with regard to their brand, suggests that the Estate in not involved with the use. “While you were reading Tolkien, I was watching Evangelion” simply does not suggest endorsement by the Tolkien Estate. Check.

Furthermore, if a use is found to be nominative, then by the definition of non-trademark uses, it cannot dilute the trademark.

This may be a leap, but with the Tolkien Estate’s well-known love for litigation, I’d wager that Zazzle just turned tail and ran. They should remember that fear leads to anger. Anger leads to hate. Hate leads to . . . whoops, wrong nerd meme.

To be clear, I’m not suggesting the the Tolkien Estate directly asked for the item to be removed. I do think their litigious reputation did just what it is supposed to do: removed an offensive (though, in this case, anyway, probably not violative) item without their having to lift a C & D letter.