Superpowered Merchandising, Part Two

In the first part of this series we discussed how superheroes (and supervillains) can use copyright to help control the use of their image and generate revenue through merchandising.  Now we’re going to talk about how trademarks can be used for the same purposes.

I. How Trademarks Work

Unlike copyright, which is exclusively federal, there are both federal and state trademark laws in the US.  However, as commerce has become less and less localized, the importance of state trademarks has diminished somewhat, so we will focus on the federal scheme.

Federal trademark law is primarily governed by the Lanham Act.  Individuals and corporations seeking federal trademark protection must register their marks with the United States Patent and Trademark Office.  Unlike applying for a patent, applying for a trademark is usually fairly straightforward, though there are some potential pitfalls (more on those in a moment).

All kinds of things may be trademarked: words, graphic designs, shapes (e.g. a Coca-Cola bottle), sounds (e.g. the NBC chimes), and even colors (e.g. green and gold dry cleaning pads).  See Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995).   Of these, words and graphic design marks are the most common, and they’re likely the most applicable for superheroes and supervillains.  There are some exceptions to what may be trademarked, and these are given in 15 USC § 1052.

Section 1052(e)(5) prohibits trademarking anything that “comprises any matter that, as a whole, is functional.” Functional things are pretty much the exclusive province of patent protection. You can’t copyright them, nor can you trademark them. So, for example, trademarking a Batarang is going to be kind of a tough call, as the actual shape of the device is arguably functional. It’s certainly pointy, which is kind of, well, the point, isn’t it? Another example would be the arc reactor in the Iron Man suits. Images of that have been used as logos for the films in the real world, but in the Marvel Universe, trying to use an image of the arc reactor as a logo is going to be subject to challenge on § 1052(e)(5) grounds unless the image is sufficiently stylized. The same probably goes for Thor’s hammer: it’s an obviously functional thing, so using it as a logo is going to be a tough sell unless you stylize it pretty heavily.

But what about, say, Captain America’s shield? That’s functional, right? So would it be protected by trademark? Yes, because the image on his shield isn’t actually functional at all. It could be anything, really, but appears to basically be paint. Tough paint, to be sure, but ultimately just that: not essential to the functioning of the shield. So the logo on Captain America’s shield is probably trademarkable, but the shield itself is probably not. Captain America could go after anyone for using his logo on anything, Hilariously though, as a representation of a fictional character, Marvel swapped the original triangular shield for the round one allegedly due to the complaint of a rival publisher that it looked too much like their own character, an example of real world law affecting comic book stories on the meta-level.

And actually, while we’re on the subject of Captain America, what about § 1052(b)? That prohibits trademarking anything that “Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.” Captain America is probably okay, because his logo is arguably far enough removed from any official government insignia to be okay while remaining decidedly patriotic. But Superman in the Red Son continuity would be in trouble. Well, okay, he’d probably be in trouble because it’s totally unclear whether Soviet Russia would recognize trademark at all, but he wouldn’t be able to trademark his logo in the US either.

II. Some (Minor) Pitfalls

Other than those exceptions, there are three pitfalls to watch out for here.  First, trademarks cannot be generic terms for the marked good or service (e.g. you can’t trademark “Soft Drink brand carbonated beverages”).  Second, if the mark is merely descriptive of the good or service, then you can’t trademark it unless you can show that the mark has acquired “secondary meaning,” that is, consumers now associate the mark with a particular source of goods or services rather than considering it a mere description.  Third, the mark must be used in commerce or the applicant must have a good faith intention to use it in commerce (and they have to carry through with that intention at some point).  That means a superhero or villain can’t just register the mark defensively as a way to prevent others from using it; some kind of merchandising has to be going on and “Superman brand superhero services” may not be enough.

In most cases, though, these aren’t going to be significant issues for superheroes and supervillains.  Their names and logos tend to be arbitrary or fanciful rather than generic or merely descriptive (this shouldn’t be surprising, since most of them are also trademarks in the real world).  And they’re probably all happy to slap their name and logo on merchandise, even if they’d prefer the proceeds go to charity.

III. The Big Catch

Unlike rights of privacy and publicity and copyright, trademarks carry with them a unique burden.  A trademark owner must both continually use the mark in commerce and enforce his or her rights to exclusivity (i.e. must ‘police the mark’) or risk losing it.  This is because the real purpose of trademark is to protect the buying public by ensuring that a good or service bearing a mark only comes from the owner of the mark.  If there are multiple, unrelated sources using the mark (or if nobody is using the mark), then there is no public benefit.  Without enforcement, a trademark loses its strength, and it may eventually become a generic term or even be considered abandoned outright.  Speaking in the closely related trade dress context, the Sixth Circuit held:

Although it appears unlikely that failure to prosecute, by itself, can establish that trade dress has been abandoned, it is possible that, in extreme circumstances, failure to prosecute may cause trade dress rights to be extinguished by causing a mark to lose its significance as an indication of source.

Herman Miller Inc. v. Palazzetti Imports and Exports, 270 F.3d 298, 317 (6th.Cir. 2001).  Beyond the general threat of loss of protection, failure to sue individual infringers in a timely fashion can give rise to a defense of laches if the trademark owner does eventually decide to sue.

IV. Conclusion

Trademark provides a valuable complement to the protections of copyright, privacy, and publicity.  It’s so essential that if a character wanted to sell merchandising rights, the company buying the rights would probably insist on trademark registration and a license.  Otherwise it would be much harder to ensure that a competitor couldn’t start producing knock-off merchandise.  Although it’s a bit more of a pain to secure than those other rights, it’s well worth it for any superhero (or supervillain) serious about controlling the use of their image or generating revenue through merchandising.

10 responses to “Superpowered Merchandising, Part Two

  1. In the Lois and Clark TV show a marketing guy persuaded Superman to set up the “Superman Foundation,” a charity which got its income by licensing the use of his image for e.g. dolls and other toys, clothing, etc. and made sure that all authorized toys were safe etc., giving the profits to children’s charities etc. I think that this also existed in some silver age comics continuity.

  2. “First, trademarks cannot be generic terms for the marked good or service (e.g. you can’t trademark “Soft Drink brand carbonated beverages”). Second, if the mark is merely descriptive of the good or service, then you can’t trademark it unless you can show that the mark has acquired “secondary meaning,” that is, consumers now associate the mark with a particular source of goods or services rather than considering it a mere description.”

    Looking at a real world situation connected to comics, how then do DC and Marvel maintain their joint trademark on the words “superhero” and “supervillain”? Aren’t these terms sufficiently generic to be un-trademarkable? At the very least, do they not merely describe the good or service?

    • This is kind of a real world issue, which is something we don’t like to touch on. Suffice to say I think those marks have survived primarily because DC and Marvel haven’t been too aggressive about enforcing them (as far as I can tell it’s only come up a few times). As a result, I don’t think they’ve gotten a lot of resistance to their claims.

  3. A followup on the earlier copyright thread… in Steve Englehart’s classic “The Laughing Fish” (and the animated Batman episode adapted from it), the Joker used his venom to mutate all the fish in Gotham’s vicinity so that they grinned like the Joker, and then he attempted to get them copyrighted so he could get a royalty every time someone ate a fish bearing his likeness. The copyright commissioner, the hapless G. Carl Francis, informed the Joker that “Nobody can copyright fish–or even fish faces! They’re a natural resource!” Because of this refusal to play along, the Joker killed Francis (or attempted to kill him, in the animated episode) with the same toxin.

    Now: Was Franklin correct about the copyright law? Or did he die for nothing?

    • Good question. I remember the animated series episode. I think Francis was correct for several reasons.

      First, there is the question of whether the Joker’s face is makeup or the result of an accidental disfigurement. If it’s makeup, then perhaps it’s a creative work, but if it’s just an accident then there can be no copyright as there was no creative input and copyright requires at least some minimum amount of creative expression. If there’s no copyright in this face then his claim that the fish infringe must fail.

      Second, even if there can be copyright in the Joker’s face, who was the creator? Absent a legally binding assignment (contracts signed at gunpoint won’t do) or a work for hire agreement, copyright remains with the creator. Unless the Joker created his own appearance, he’s not the one who could claim royalties. In fact, if anything he’d be liable for infringement for creating all of those fish!

      Third, it’s highly doubtful whether a living organism can count as a tangible medium of expression. For example: you can’t copyright a new strain of flower. The way to protect such a thing is with what’s called a plant patent. Or alternatively, if you develop a new organism that is functional in some new, useful, and nonobvious way, then it may be eligible for a regular utility patent. This suggests that the proper way to protect living organisms, whether functional or decorative, is by utility patent or plant patent, not by copyright. It’s true that not every kind of organism is eligible for such protection (including purely decorative modifications to animals like fish), but that’s a decision made by Congress in its wisdom.

      Fourth, fish are, as Francis says, natural resources. The fishermen and sellers and consumers of fish products simply used the fish as they found them. Since they have legal title to the individual embodiments of the alleged work (i.e. the particular fish they catch, process, and eat), they have an implied license to use that individual embodiment more or less as they see fit.

      Fifth, the Joker himself created the modified fish. It’s likely that there would be a strong unclean hands defense if he tried to make a copyright claim.

      I could go on, but that should give you the idea.

      • But what about likeness rights? I know a lot of actors and celebrities have control over whether and how their likeness is used for merchandising (which is why many cartoon adaptations of movies redesign the characters). Or is that a contractual thing rather than an automatic right? Maybe this was covered in your earlier posts about publicity and privacy?

      • I did talk about likeness rights (aka the right of publicity) in that series. Certainly the Copyright Office would be the wrong place to go about a right of publicity claim. But I don’t think the claim would work in any case.

        First, I think an essential element of the claim is missing: the intent to obtain commercial advantage. “[T]he commercial advantage element of the right of publicity focuses on the defendant’s intent or purpose to obtain a commercial benefit from use of the plaintiff’s identity.” Doe v. TCI Cablevision, 110 SW 3d 363, 370-71 (Mo. Sup. Ct. 2003). People used the Joker fish out of necessity, not choice. If anything they’d much prefer to use regular fish.

        Second, I think there’s still a good implied license argument to be made. The Joker put the fish out there; he can hardly complain if people make use of them in the usual way.

  4. It also (arguably) acquired the “second meaning.” At the time they registered the mark, what other company would one believe a “super-hero” came from? Holding it, yes, is another matter.

    I’m not up on trademarks and patents at all: In the case of a Batarang (or equivalent), is there someone to whom Batman can plead his case that the pointy bits are primarily an artifact of the bat shape and not intended as a function? Or must one just take his chances with the application and accept the results?

    • If the trademark application were rejected on the grounds that the Batarang shape is functional, then yes, that could be argued. First Batman would reply to the examiner’s rejection (called an office action). If he can’t convince the examiner, then he can appeal to the Trademark Trial and Appeal Board.

      If the TTAB affirms the rejection, then he has a choice between two options. He can either appeal to the Court of Appeals for the Federal Circuit or file a civil suit in federal district court, generally in the District Court for the District of Columbia. If an appeal has been filed, then a civil suit may not be filed. However, if he goes the civil suit route and the district court affirms the rejection, then he may then appeal that result to the Federal Circuit. However he gets there, if the Federal Circuit affirms the rejection, then he can petition the Supreme Court, although it’s unlikely it would take up the case.

      So, yeah, there is a lot of due process there with many opportunities for review.

  5. Readers of this blog might be interested in a recent article I published on how DC and Marvel came to share US trademark rights across a broad range of industries in the word SUPERHERO. See Ross D. Petty, The “Amazing Adventures” of Super Hero®, 100(3) The Trademark Reporter 729-755 (May-June 2010).

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