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I've been trying to find a decent answer to this question for days but no luck so far. I've decided to pose the question to you all, and hopefully some of you will know the answer.

Tarzan is in the public domain as far as I understand (http://pdsh.wikia.com/wiki/Tarzan). However, Tarzan is also trademarked (http://tsdr.uspto.gov/#caseNumber=86196785&caseType=SERIAL_NO&searchType=statusSearch). I want to include him as a supporting character in my story. I don't plan on having his name be in the title, his likeness in the illustrations, or have him ever appear in the marketing, cover flap, merchandise, etc.

So my question is: can I include public domain characters that have been trademarked in my story as long as I keep them inside the pages and away from the title/marketing? Or does the fact that they are trademarked mean they can never be in my story?

I know you are writers and generally not lawyers, so you don't have to say IANAL.

I'm interested from a US perspective.

Thanks for the help!

5

Unless you have immensely deep pockets and don't mind spending huge amounts to defend against a lawsuit, whether it's lawful or not to use a character like that matters little. Even a lawsuit you eventually win will put you into the poorhouse.

Generally speaking, the rule is: "Don't use other people's characters without permission. Ever!" Getting permission from a trademark holder is usually either very expensive (think licensing fees) or impossible, and that's where you have to worry about it. You needn't be concerned with the Burroughs estate -- as you note, all the original Tarzan materials are in public domain. Your concern is trademark from the movies and TV (with a movie having dropped just last year). Bottom line: there is no way the trademark owners will let go of the property, because money.

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From a U.S. Perspective:

Edgar Rice Buroughs Inc, is quite aggressive in their pursuit of trademark violation in protecting Tarzan... that said, it's not a copyright and Tarzan is fair game to use... however that's only in the United States. The King of the Apes is still copyrighted in other countries and if your story hits that market they are within their right to sue.

The Trademark issue is a little weird and it's unsettle in the court of law (the cases have all been settled out of court, which means no judgement, which means the question can I do this hasn't been asked. Once it goes through a full trial, it's a different matter).

All in all, I'd avoid it. Certainly a wild jungle man is not new to ERB, so you could make your own and find some ways to make him different from Tarzan.

Of course, this goes out the door if Tarzan is being used under Fair Use (that is, he's being used in parody or satire) than there is that claim.

Similarly, if he only appears in the story but is never named in the dialog, that could get around it... like I said, there are a billion jungle heroes of similar ilk and you could take inspiration from any one of them. Seeing as how it's a side character, do we need to go into the backstory? If no, that's good. Do we need to know his name? No, good? The less he looks like Tarzan and more like the archtype, the better. For example, Marvel has a number of characters that have powers similar to Superman... that's fine... they aren't claiming to be Superman and they have enough differences. What got Captain Marvel in trouble in DC vs Fawcett was that Captain Marvel had some art that looked like Superman (and more importantly, was out performing Superman in sales). They may have similar powers, but they are definitely not alike at all.

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It is my understanding that under US law, if a trademark is NOT defended, a subsequent case can point out the first non-defence as part of his/her later defence. For instance:

  1. In 2016 Mr Example of Nowheresville makes & sells Tarzan lunchboxes. Big Hollywood Lawyers do not notice, so do not prosecute.
  2. In 2017 Ms Demonstration makes & sells Tarzan t-shirts. Big Hollywood Lawyers do notice, so do prosecute. Ms Demonstration can use "But you didn't prosecute Mr Example" as part of her defence.
  3. The judge can rule the trademark has lapsed, since the Big Hollywood Lawyers didn't prosecute Mr Example. (The judge might not do this, but they can, legally).

This makes trademark holders VERY litigious in the USA with lawyers on the prowl to defend their clients' rights. (UK law is a bit more common sense, and doesn't require every single violation to be hunted down and sued into oblivion for the trademark to stay valid).

In addition, it is probably the name Tarzan, Lord of the Jungle and a specific physical description/costume of the character which is trademarked.

Is 'Lord Greystoke' trademarked?

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I actually had the same question, based on Tarzan, as I am trying to writ e book called Greystoke & Man Cub. Mowgli is in public domain, as is Tarzan. However, Tarzan is trademarked. As far as I know how trademarks go, as long as you are not promoting the trademarked name on the cover or in ads, where people can see it, where the name used is being promoted for commercial purposes, then you are fine. At least, that it what i was told by various people.

In other words, I am also working on a game of public domain characters, but I think one or two in the game are trademarked. As long as they are sealed within the box, without any glimpse that they are in there (encouraging people to buy it), then you are fine. Also, the use of other verbiage should work too, as I plan to use "Lord John Greystoke" and not "Tarzan" or "Lord of the Apes" in my novel (or even "Jane") as all those are trademarked. In fact, I plan to keep his whole jungle experience out of the book, with very few references to his past.

ESB, Inc is pretty intense when it comes to trademarking the brand name of Tarzan. You should go and look at the list they have of items that cannot use the name. I mean, they sued a vacuum cleaner that took the name! Pretty nuts. So, always play it safe and use other terms which would not get you in trouble. Again, I do not want to give false advice, but this has been what's told to me on the matter. They also say to get an attorney to look at what you wrote as well, to see if it is legit. Sadly, that is usually the majority of what people have said, totally avoiding the question I was asking; which started to get annoying, is if they (including even some attorneys) not knowing the answer. Hope that kind of helps...and if anyone else can give better advice on the subject (or correct me), I am eager to know as well.

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I'm not a lawyer...I had to say it lol. My understanding of trademark has to do with confusion in the marketplace. So Tarzan is public domain meaning you can use the uncopyrighted work, but if what makes him Tarzan is trademarked, what good is using him. The work around is Lord Greystoke or some such wording.

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  • Is Curious trying to publish a story for profit or writing a fan fiction story? – dean1957 May 20 at 2:39
  • I'm not sure this adds anything that isn't already covered by the other answers – DM_with_secrets May 20 at 12:06

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