Cocky Controversy in the Romance Realm

July 20, 2018

Self-published romance author Faleena Hopkins recently filed a lawsuit (Hop Hop Productions, Inc. et al v. Kneupper et al.) against parties who she claims infringed on her registered trademark (U.S. Trademark No. 54/478,36) of the word “cocky” in her book titles, which include Cocky Roomie and Cocky Heart Surgeon. Obtaining a trademark registration for such a common word has caused controversy throughout online literary communities. Because many self-published authors have limited funds, being required to revise all marketing materials can be devastating, and “cocky” in particular is commonly used in romance novel titles. Consider, for example, The Cocky Cowboy (now changed to The Cockiest Cowboy to Have Ever Cocked) by Jamila Jasper and Her Cocky Doctors by Tara Crescent; the latter is a defendant in the lawsuit. The dispute, however, has given both sides an opportunity to argue whether or not—and how—this trademark can be enforced.

In the lawsuit, Hopkins requested a temporary restraining order against the defendants and filed an injunction that aimed to prevent them from publishing books that used her trademark. The defendants are Tara Crescent, who has published a series with titles that contain the word “cocky”; Kevin Kneupper, a lawyer who filed a challenge against Hopkins’s trademark; and Jennifer Watson, the publicist for a collection of short stories by various authors protesting the trademark.

At the June 1, 2018 hearing, Judge Alvin Hellerstein of the Southern District of New York denied the motion for the injunction and temporary restraining order. He also gave all parties ninety days for discovery and delayed making a summary judgment until that time.

This additional period of time for discovery was necessary because Judge Hellerstein did not have enough information to determine the likelihood of confusion between Hopkins’s trademark and others’ work. Judge Hellerstein aimed to determine likelihood of confusion by looking at the Polaroid factors, which are eight categories that guide courts in distinguishing between trademarks. They are named after the 1961 case of Polaroid Corp v. Polarad Elecs. Corp.

The first of these factors is the strength of the plaintiff’s mark. Judge Hellerstein noted that “cocky” was a weak mark. As described in our previous post about trademark strength, trademarks are categorized by five categories of distinctiveness: generic, descriptive, suggestive, arbitrary, and fanciful. Arguments in Hopkins’s case focused on the trademark’s descriptiveness. The plaintiffs argued that “cocky” was more than a description of characters in Hopkins’s books; that it had taken on secondary meaning due to its association with her series. Meanwhile, the defense argued that it was no more than a description and that the books were more often identified by the characters in them.

The second factor is the similarity between marks. The defendants argued that Crescent’s distinguishing mark was her name, not the word “cocky, so there was low likelihood of confusion. The short story collection, however, was described as a “deliberate parody” as a form of protest against the trademark.

The judge also determined that Hopkins’s and the defendants’ products were proximate and competitive: because the products are closely related, it is more likely that a consumer might purchase one product when intending to purchase the other

The next factor was also in favor of the plaintiff: this factor looks at the likelihood that the plaintiff will bridge the gap to offer the same products or services as the defendant. Because Hopkins and the defendants sell books with similar titles, there is a higher likelihood of confusion.

The fifth factor, actual consumer confusion, is very difficult to prove. Judge Hellerstein called such proof “extraordinary” and did not accept the plaintiff’s examples of actual consumer confusion. The plaintiffs presented three examples of e-mails to Hopkins from customers who were confused by other books with “cocky” in the titles and claimed to have bought the wrong books. They argued that consumers were confused because of similar font, font size, and text placement. Judge Hellerstein decided that these pieces of evidence were unreliable because it is unclear who sent the feedback and their identities are not verifiable.

The defendants’ intent in selecting similar marks can be crucial because defendants who made the mark with intent to confuse are more likely to be successful in confusing consumers. Judge Hellerstein initially stated that he thought the defendants’ use of the word was not in good faith because of similarities between the titles and layouts of the defendants’ and Hopkins’s books. The defendants, however, argued that Crescent used “cocky” in one of her titles long before Hopkins used it under her trademark, and that many other writers have used it similarly before Hopkins used it for the first time. The plaintiffs then argued that Crescent was aware of Hopkins’s use of “cocky” before using it herself. Because there was not enough clear evidence on either side, the judge said the question of good faith could not be resolved at this time.

Judge Hellerstein also postponed resolving arguments about the seventh factor, quality of the defendant’s product. The plaintiffs used sale numbers as evidence that Hopkins’s work was higher quality, which the judge did not find to be adequate proof. In general, if a defendant’s product is of lower quality than the plaintiff’s, the damage to the plaintiff is greater.

The last factor is the sophistication of buyers: how much care do consumers take when buying these products? When the products or services in question are unusual or expensive, consumers typically exercise greater care. Judge Hellerstein determined that consumers of these romance novels are likely to be sophisticated buyers; this decreases the likelihood that they will be confused by similar marks.

Although barring authors from using “cocky” in romance novel titles may seem trivial, this decision could have set a precedent that would either maintain or further restrict authors’ freedom of expression. However, the judge ultimately did not make a summary judgment because, as of June 22, 2018, a settlement was reached and the case was terminated. However, settlement negotiations stalled thereafter and the parties are still in dispute. Whether trademarks like Hopkins’s are valid and enforceable, then, remains to be seen.