Category Archives: trademark

Landslide Article

I recently co-authored an article with Professor Brad Desnoyer and Janet Fries discussing superhero-related intellectual property topics, both real and fictional.  Last month the article was published in Landslide, the magazine of the ABA section of IP law, as the cover story!  You can read the article for free online. Thanks to Brad and Janet for their excellent work on the article and to David Postolski for putting everything together.

ABA Annual Meeting Panel Tomorrow

Just a reminder for anyone attending the ABA Annual Meeting in San Francisco this week: I will be presenting “IP and the Comic Book Superhero” with Brad Desnoyer and Janet Fries tomorrow, Friday, August 9th from 4pm – 5pm at the InterContinental San Francisco.  Complimentary CLE credit is offered with the program.  We hope some of the attorneys and law students in the audience can make it out there!

ABA Annual Meeting

In other convention news, I will be presenting at the ABA Annual Meeting in San Francisco with Brad Desnoyer and Janet Fries.  Our panel on “IP and the Comic Book Superhero” will be Friday, August 9th from 4pm – 5pm at the InterContinental San Francisco.  Complimentary CLE credit is offered with the program.  We hope some of the attorneys and law students in the audience can make it out there!

Law and the Multiverse Online CLE Programs

For many attorneys it will soon be annual CLE reporting season.  If you need CLE credits, we may be able to help.  We have partnered with Thomson West in the past to produce four online, on-demand programs with CLE credit available in most states:

What Superheroes and Comic Books Can Teach Us About Constitutional Law

Real-Life Superheroes in the World of Criminal Law

Everyday Ethics from Superhero Attorneys

Kapow! What Superheroes and Comic Books Can Teach Us About Torts

For a 20% discount on any or all of these programs, use code KABLAM2013.

And if you missed the IP and the Comic Book Superhero program presented by the ABA IP Section, it is available for pre-order as an audio CD for delivery on May 17th.  It may be available as an on-demand program later, I’m not sure.

Finally, if you’ve already taken these courses or are looking for something different, keep an eye out for a new program (presented by Thomson West) to be announced soon.

IP CLE Reminder

This is a reminder of the live 90 minute CLE program this Friday, “IP and the Comic Book Superhero.”  The program starts at 10am Pacific / 11 am Mountain / noon Central / 1pm Eastern. The program will cover many aspects of IP law, including patents, trademarks, copyrights, publicity rights, and their tax implications with examples and inspiration drawn from both fictional superheroes and real-world superhero-related IP.  We hope you can join us!

IP and the Comic Book Superhero CLE

On Friday, April 26th at 10am Pacific / 11 am Mountain / noon Central / 1pm Eastern I will be co-presenting a live 90 minute CLE program called “IP and the Comic Book Superhero“, sponsored by the ABA Section on Intellectual Property Young Lawyers Action Group, the ABA Young Lawyers Division, the ABA Forum on the Entertainment and Sports Industries, and the ABA Center for Professional Development.  My co-presenters are Brad Desnoyer, associate professor at the University of Missouri School of Law and previous guest post author here at Law and the Multiverse; Janet Fries, of counsel at Drinker Biddle & Reath LLP in DC; and Martha L. Voelz, a solo attorney in New York.  The moderator is David Postolski, a patent attorney at Day Pitney LLP in New Jersey.

The program will cover many aspects of IP law, including patents, trademarks, copyrights, publicity rights, and their tax implications with examples and inspiration drawn from both fictional superheroes and real-world superhero-related IP.  We hope you can join us!

Spider-Man and Likeness Rights

Today we have a question from Hurley, who writes:

In [Ultimate Spider-Man #109]  Wilson Fisk, A.K.A. the Kingpin, points out to Spider-Man that the costume he wears and his name were given to him by a now-defunct wrestling company. Kingpin bought said company [in issue #106], which he says gives him merchandising rights to all things Spider-Man related. Clothing, toys, etc. Is this legally correct?

(If you’re interested, this storyline is collected in Ultimate Spider-Man vol. 18.)

Here’s the complete history: As usual, Spider-Man tried to make some extra money on the wrestling circuit.  The company that organized the matches was Hercules Wrestling, Inc., and apparently Parker signed away the Spider-Man name and merchandising rights to Hercules.  Later, a Spider-Man movie came out, and the studio managed to prevent Hercules from putting out Spider-Man merch, resulting in Hercules going bankrupt.  Apparently a company called C and C Licensing picked up the rights from Hercules in bankruptcy. C and C is a subsidiary of GG Enterprises, which Fisk purchased.  Thus, through this chain of subsidiaries, Fisk owns the rights to the Spider-Man name as well as the licensing rights for his likeness.  As a result, Fisk actually wants Spider-Man to keep doing his thing because Fisk makes more money from the merchandise sales than he loses from Spider-Man meddling in his affairs.  Pretty villainous, eh?

There are three major questions here.  First, what rights are involved, exactly?  Second, could Fisk have purchased them that way?  Third, is Spider-Man really powerless to do anything about it?

I. Name and Likeness Rights

Name and likeness rights generally fall under the right of publicity, which is something that we (and guest author Brad Desnoyer) have talked about before.  As Brad noted, the right of publicity “protects an individual’s ability ‘to control the commercial use of his or her identity.'” (quoting 31 Causes of Action 2d 121).  In Spider-Man’s case, the rights of publicity at issue would likely cover his “stage name” and his likeness.

Since this all happens in New York, we can use the New York right of publicity statute.  The statute covers a person’s “name, portrait or picture.” N.Y. Civil Rights Law § 51.  A “name” can include a stage name, if it “has become known to the public and identifies its bearer virtually to the exclusion of his true name.”  See, e.g., DeClemente v. Columbia Pictures Indus. Inc., 860 F.Supp. 30, 53 (E.D.N.Y. 1994).  Under this standard, Spider-Man would qualify, as he is nationally known as Spider-Man and is essentially unknown as Peter Parker.  And of course his image would qualify as a “portrait or picture.”

So the rights at issue are pretty much as described in the comics (at least at the beginning; later on Spider-Man refers to Fisk owning “his copyright,” which is not accurate, unless Spider-Man was engaging in a little fourth wall-breaking.).

II. The Chain of Title and IP Holding Companies

From what I can tell from the comic, this all seems believable enough.  It’s not 100% clear to me how the movie studio drove the wrestling company into bankruptcy, but admittedly I haven’t read those earlier issues yet, so maybe that’s explained in more detail.  In any event, the maze of holding companies and subsidiaries is par for the course.  Many media companies have separate holding and licensing companies for characters, trademarks, and other IP.  For example, Marvel Entertainment, LLC (itself now a subsidiary of The Walt Disney Company) has three IP holding companies, including Marvel Characters, Inc.

You might be wondering why businesses bother creating IP holding companies.  The answer, as is so often the case with strange corporate behavior, is tax reduction:

Specifically, if a holding company is created to own the trademarks of the operating company, it can license those marks back to the operating company. In some states, tax income from royalties from license agreements owned by the holding company is exempt. Further, the state from which the income is paid, cannot tax that payment either. Finally, the operating company may deduct the royalty payments as operating expenses.

Allan J. Sternstein et al., Designing an Effective Intellectual Property Compliance Program, in Corp. Compl. Series: Intell. Prop. § 3:7 (2011).  Pretty sweet setup, huh?

III. So is Spider-Man Out of Luck?

Probably, unless his original contract with the wrestling company is invalid or unenforceable.  The New York statute allows a person to sign away (in writing) their right of publicity.  Interestingly, if the person is a minor, then their parent or guardian must give their written consent.  N.Y. Civil Rights Law § 50.  Ultimate Spider-Man is apparently a minor at the time, and I doubt Aunt May or Uncle Ben (who was still alive at the time) signed off on the wrestling contract, so that might be a way out.

Another issue might be whether the contract made the right of publicity assignable or available for sublicense.  If the contract was solely with Hercules Wrestling, then it might not have been properly assigned to C and C, leaving Fisk with nothing.  Unfortunately, Fisk’s storyline gets wrapped up before we find out whether Spider-Man had any legal way out.  Too bad, since he was already teamed up with Daredevil, and I’d think Murdock would like to not only see Fisk behind bars but also a piece of his business empire taken away from him.

IV. Conclusion

This was a nice application of what should be a significant issue in comics: within the fictional comic book world, superheroes and supervillains are real people and so have rights of publicity and privacy that would be worth a lot of money.  Shady licensing deals would likely abound, but some superheroes could become rich from merchandise sales and endorsements (or they could donate it to charity, as it is sometimes suggested that Superman does).  At the same time, a lot of the copyright issues that surround comic books in the real world wouldn’t exist.  Thus, instead of comic book authors getting raw deals, the superheroes themselves would.  Progress!

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 and 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!

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.

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