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 firstname.lastname@example.org and email@example.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!