Mailbag for April 15, 2011

This week’s reader questions are about intellectual property issues, including trademarked superhero slogans and copyright across alternate universes.  As always, if you have questions or post suggestions, please send them to james@lawandthemultiverse.com and ryan@lawandthemultiverse.com or leave them in the comments.

I. Copyright and Alternate Universes

John asks, “In an issue of New Excalibur, Nocturne (Talia Wagner; the daughter of Nightcrawler from an alternate universe), is listening to her iPod.  Dazzler asks what she has on it, and Nocturne tells her it is the Beatles 40th anniversary album.  Apparently in her universe the Beatles never broke up, and John Lennon was never killed.  …

What if somehow either by file sharing or a hacker, the contents of Nocturne’s iPod becomes available to the larger 616 universe.  Who can lay claim to the rights of intellectual property and royalties (if anyone)?  [Assume that the alternate universe copyright holders cannot lay a claim themselves.]”

The answer is a bit complicated. For conciseness and readability we’ll use the phrase “Earth 616 Beatles” to refer to the Beatles and their heirs, successors, and assigns (i.e. whoever it is that owns the relevant intellectual property).

First we must decide if there is an Earth 616 copyright in the recordings at all.  Since the alternate universe United States is not a signatory to the Earth 616 Berne Convention, it’s quite possible that the courts would take the view that there is no copyright in the work at all, or at least not one that the Earth 616 United States recognizes.  NB: Talia can’t claim copyright in the recordings herself because she didn’t create them.  But what if the copyright were recognized?

We still don’t think the Earth 616 Beatles have a copyright claim.  Clearly they didn’t create the tracks outright, and even if the album incorporated music that was substantially similar—or even identical—to Earth 616 Beatles music, the defense of independent creation absolves the alternate universe Beatles (and thus Talia) of any liability for infringement because the alternate universe Beatles created their music without ever knowing about the Earth 616 Beatles.  Indeed, coming up with the same music in an alternate universe is about as independent as independent creation can get.  Notably, independent creation is something the Earth 616 Beatles—George Harrison at least—should be very familiar with.  See ABKCO Music, Inc. v. Harrisongs Music Ltd., 722 F.2d 988 (2d Cir. 1983).

The first complication comes from trademark and the right of publicity.  Theoretically the Earth 616 Beatles could sue to prevent Talia and others from misrepresenting the music as ‘Beatles music.’  They could seek an injunction requiring them to describe it as coming from an alternate universe with no connection to the Earth 616 Beatles.  This would create a contrast to their own “genuine Earth 616 Beatles creations.”

The second complication comes from the possibility of criminal copyright infringement.  While we may assume that Talia properly purchased her copy in the alternate universe, anyone else making copies might run afoul of the criminal copyright infringement statute.  17 USC 506.  If the US government recognized a copyright in the works, it could prosecute distributors of the work even though the copyright holders couldn’t possibly benefit, since they’re in an alternate universe.

Of course, if the Earth 616 US passed an orphan works law, this would be a perfect case for it, since the copyright holders can’t be located.

II. Superhero Slogans and Trademarks

Walter asks, “[Y]ou’ve covered copyrights and trademarks but what about slogans or words of power?  Take, for example, Captain Marvel and the word “shazam.” In the real world, that word is being used by several companies, including a music app recently prominently featured in a television campaign. If the word “shazam” is a legal trademark of the company [it is —James], is Captain Marvel in violation of a law for using it for his transformation? Should he have copyrighted his secret word to protect if from this sort of situation?

The answer to the first question is: probably not.  First, trademark infringement generally requires “the sale, offering for sale, distribution, or advertising of … goods or services” 15 USC 1114(1)(a) & (b).  We suppose Captain Marvel could be accused of advertising his services as a crimefighter, but that’s a slender reed upon which to build a case.

Second, most trademarks only protect particular areas of use (e.g. in this case, “software for music recognition,” among other things).  I think it would be pretty unlikely for a company to register a trademark in the area of “superheroic crimefighting,” which is the essential area of use for Captain Marvel.

Third, trademark infringement depends on a likelihood of mistake, deception, or confusion between the mark and the allegedly infringing use.  Id.  I don’t think it’s very likely that a bystander will hear Captain Marvel transform and think “ah! I’ll bet he could tell me the name of the song I’ve been humming” or “ah! I’ll bet he’s sponsored by the music app people.”

Now, there’s a higher standard for what are called famous marks (e.g. the really ubiquitous names like Kodak and McDonald’s).  Some marks are so famous that they apply to all areas of use.  What’s more, the standard is not likelihood of confusion but rather likelihood of dilution.  15 USC 1125(c).  That is, is it likely that the value of the mark will be diluted by unauthorized use, even if no one would be confused?  However, I don’t think there are any superheroes with a slogan or word of power that happens to be a famous mark, and they could still argue no likelihood of dilution and noncommercial use, especially if they didn’t make a big show out of yelling their words of power or slogans.

Note, though, that using a mark, especially a famous mark, might make it difficult for the superhero to sell merchandise, particularly depending on the nature of the merchandise and the areas the mark is used in.

Now for the second question: “Should he have copyrighted his secret word to protect if from this sort of situation?”  This one is much simpler.  Generally speaking individual words and short slogans can’t be copyrighted.  Captain Marvel could have trademarked it before the other folks did, but he’d need to use it in commerce in order to do so (e.g., sell comics, talking action figures, etc featuring the trademarked word).  And unless his slogan became a famous mark, he’d only be protected in those particular areas of use.  But since he’d probably be safe anyway, such defensive measures probably aren’t necessary in his case.

That’s it for this week.  Keep your questions coming in!

23 Responses to Mailbag for April 15, 2011

  1. Dale Sheldon-Hess

    As I understand it (and correct me if I’m wrong as IANAL), copyright and patents come from the Constitutional power of congress to advance the “progress of science and the useful arts”, while trademarks are a consumer-protection law. If that’s the case, isn’t it rather odd that the later is always mixed in with the other two under the title “intellectual property”? If only because it leads to precisely the kind of confusion that Walter expressed in his question.

    • Trademarks do have a lot of property features. For example, they are a right to exclude others and they can be assigned and licensed. And while consumer protection is a major purpose of trademark law, trademarks also have clear benefits for businesses (or else they wouldn’t bother with them).

      In theory the two purposes could be separated. For example, every company, product, and service could be given a unique ID from the government, to be used in a fixed, regulated way. That would serve the consumer protection purpose while providing very little in the way of branding and marketing opportunities for businesses.

      Famous marks, with their protection against dilution, really strain the consumer protection rationale. Likelihood of dilution can be found even in cases where there is no chance of confusion, mistake, or deception at all. It’s not clear how consumers are being protected in those cases, whereas the famous trademark owner is clearly deriving a commercial benefit from excluding others.

      So it’s kind of a mixed bag. There are clearly IP aspects to trademarks, so that’s one reason they get included. Another reason is that the boundaries of copyright, patent, and trademark law have been staked out relative to one another in many cases.

  2. Would the fact that the word of power is not under the control of the person using it have any bearing on the analysis?

    Billy Batson didn’t choose it to conflict with other trademarks, or even choose it and fail to perform a trademark search. He didn’t choose it at all; it is what it is. I realize that you’ve already given a couple of reasons why trademark law wouldn’t apply, but would a court even have to go that far? It’s not like an injuction from the court forcing a company to change its letterhead. An order that Batson can’t use the word “Shazam” essentially closes off the use of his powers.

    • “Would the fact that the word of power is not under the control of the person using it have any bearing on the analysis?”

      Not as such, no. Intent is not a factor in the typical infringement analysis, whether you’re talking about patents, trademarks, or copyrights, although it can lead to enhanced damages. So the fact that Captain Marvel might have no choice but to infringe in order to transform (or the fact that he might be completely unaware of any infringement) is immaterial to the question of infringement.

      “would a court even have to go that far?”

      Yes, it would. Basically you’re making a fairness argument, which is something that the court wouldn’t consider until it was deciding whether or not to grant an injunction, which—in the case of a permanent injunction—would happen at the end of the trial. The court wouldn’t get to that until after it had already considered the legal (as opposed to equitable) arguments outlined in the post.

      Injunctions are a form of equitable relief, and the principles of equity are basically principles of fairness. Under the four factor test traditionally used in US federal courts when considering granting a permanent injunction the plaintiff must demonstrate:

      (1) that it has suffered an irreparable injury;
      (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury;
      (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted;
      and (4) that the public interest would not be disserved by a permanent injunction.

      See, e.g., eBay Inc. v. Mercexchange, LLC, 547 U.S. 388, 391 (2006).

      You’ve honed in on factors 3 and 4: basically that it hurts Captain Marvel far more to be prohibited from using the name than it helps the plaintiff, and that the public interest would be disserved by essentially eliminating a powerful superhero. Those are strong arguments against granting an injunction in this case.

      • Ken Arromdee

        I’m not convinced. Copyright doesn’t exist for functional expression. If he has no choice but to use the word if he wants to transform, then the word is obviously functional.

      • There’s no copyright issue here. Neither Captain Marvel nor a company could copyright a simple word like “shazam.”

        Now, as it happens, functional things can’t be trademarked, either. But the issue here is not that the company shouldn’t be allowed a trademark on “shazam”; the company’s use is non-functional and squarely within the bounds of what may be trademarked. The idea here is that, even if Captain Marvel’s use of “shazam” would otherwise be infringing, it is a defense that Captain Marvel’s use is functional. I can’t find a case directly on point for this, so it’s not clear to me what the answer is.

        On the one hand, marks clearly cannot be functional. 15 USC 1115(b)(8). But on the other hand the defense is specifically that the mark is functional, not that the allegedly infringing use is functional. I think a court, particularly a strongly textualist court, could find that functional use by the alleged infringer is not a defense.

      • > The idea here is that, even if Captain Marvel’s use of “shazam” would otherwise be infringing, it is a defense that Captain Marvel’s use is functional. I can’t find a case directly on point for this, so it’s not clear to me what the answer is.

        How about Sega v. Accolade?

      • Sega v. Accolade is a reasonable case for this, yes. “Even when the allegedly functional product feature is a trademark, the trademark owner may not enjoy a monopoly over the functional use of the mark.” Sega v. Accolade, 977 F. 2d 1510, 1531 (9th Cir. 1992).

  3. Alex in Chicago

    A discussion of trademark dilution without citing Starbucks? Ridiculous! In all seriousness though, dilution law is in way too much of flux to know what would happen, even though I do think your analysis would prevail in this case.

    • For those who may be wondering, Alex in Chicago is referring to Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009). The Starbucks case was decided in the wake of the Trademark Dilution Revision Act of 2005, which legislatively overruled a Supreme Court decision holding that dilution required a showing of “actual dilution.” The TDRA lowered the standard to mere likelihood of dilution, bringing it closer to the likelihood of confusion, mistake, or deception standard used for regular trademarks.

      What Alex in Chicago meant by dilution law being in a state of flux is that the various circuit courts are still hashing out exactly what the TDRA did (e.g. exactly how to apply the new standard, how to weight the six factors given in the law, etc), and the Supreme Court has not yet had its say, so the law is somewhat volatile.

  4. Presumably in a world with superheroes Marvel and DC do not jointly trademark the word “Superheroes”

    • David Johnston

      I don’t think we can presume that. Here’s the real question. If comic book companies within a comic book universe coined the word “superhero” to refer to crime fighters with exceptional abilities and trademarked the term, would that interfere with a newspaper’s ability to refer to the “real life” examples in that way in their headlines?

      • It’s hard to say for sure. It depends on a lot of things, including who was using the term first, whether consumer surveys and other evidence indicate a likelihood of confusion, whether the court would be willing to restrain the press, and whether the term had become generic in the public mind (i.e. that it now only meant “superpowered crimefighters” and not “the fictional superpowered crimefighters associated with a definite source”).

  5. Interesting choice of example James as Captain Marvel was actually the focus of a lawsuit between DC Comics and Fawcett. DC alleged that Captain Marvel was a rip-off of Superman. The court decided in DC’s favor in 1953. The story is even more twisted because DC never copyrighted Captain Marvel when Fawcett ceased publishing its own series, letting Marvel copyright the name and thus, although DC has made Captain Marvel stories it has to promote them under Shazam!

    Speaking of Marvel, could Ben Grimm copyright his battle cry “it’s clobberin’ time” or Peter Parker do the same with “Your friendly neighborhood Spider-man”?

    • I didn’t pick the example, so any kudos should go to Walter, the astute reader who sent in the question.

      As mentioned in the post, generally speaking individual words and short slogans can’t be copyrighted. They could be trademarked, but that requires using the phrases commercially (i.e. in connection with the sale of goods or services; probably goods in this case).

  6. Would it matter any that the Wizard had been granting license to use his name since the time Egypt was a major world power?

  7. Does the fact that “Shazam” is really an acronym rather than just a word have any bearing on the discussion?

    • I don’t think so. Since it’s spoken aloud by Captain Marvel, people who overhear it wouldn’t realize it’s an acronym. Also, it’s generally written ‘shazam’ rather than ‘s.h.a.z.a.m.’

  8. Rafael is wrong in his brief synopsis of the Superman vs. Captain Marvel suit. It was a copyright infringement suit that DC won over Fawcett. DC could not “copyright” the preexisting Captain Marvel stories because Fawcett already copyrighted them, and owned the copyrights. Eventually DC bought the Fawcett characters and intellectual property rights. By then, however, Marvel Comics trademarked the name Captain Marvel for its character’s title, as the Fawcett TM lapsed from nonuse over the years. DC could not publish a comic called Captain Marvel as it would infringe on Marvel’s trademark because it would tend to create confusion in the buying public as to the source of the merchandise. That is why DC’s comic is called “Shazam”.

  9. If a person from the future were to travel to their past and murder their former self (and then not disappear in a paradox) would we be capable of charging them with murder?
    On another (though similar) note, in the graphic novel Watchmen we see that Doctor Manhattan can easily make multiple copies of himself. If he were to kill one would it be murder? If so, would it also be murder if he were to absorb the copies into his original body (assuming they would have any idea which was the original)?

    • The thing about Doctor Manhattan making multiple copies of himself is that they are not separate individuals. This situation has occurred in the comics with Jamie Madrox (The Multiple Man). One of Jamie’s dupes was killed by Proteus. I think killing one of Jamie’s dupes would be considered murder. Certainly it is assault. One reason for calling it murder is that there is no limit to the amount of time a dupe can live on its own: one storyline in X-Factor had Jamie getting sick and dying but then it turns out that this was actually a dupe and the original Jamie was still alive (or vice versa?)
      Jamie can put himself back together again and he remembers everything that each of his dupes did so that’s not murder, although one would imagine that the longer the two are separated the harder it is to reconcile the conflicting memories. He’d probably end up forgetting aspects of each of their separate lives.

      • I don’t believe it’s ever made clear if the other Dr. Manhattan’s were separate of the original or not (or if one could even be considered the ‘original’ considering his exotic origins). They certainly seem fully capable of performing tasks such as making love or scientific research without any apparent guidance from one of them.

    • Two other points: Jamie cannot reabsorb a dupe once it dies. Jamie was horrified when one of his dupes died in an issue of X-Factor and he couldn’t absorb him. Also, if sufficient time has passed a dupe can develop a separate personality and Jamie will develop a temporary case of multiple personalities when he absorbs a dupe until one of the personalities dominates. He can also absorb a dupe against its will if he wanted to. The combination of absorbing a dupe against its will and eliminating the dupe’s personality would be akin to murder but it is not the usual way Jamie reabsorbs dupes: it’s usually a mutual thing.

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