Category Archives: intellectual property

Superhero Privacy Rights, Part One

In the real world comic book characters and their likenesses have been made into toys, video games, movies, television shows, lunchboxes, bed sheets, and innumerable other things.  All of these secondary uses are mediated through intellectual property rights, particularly copyright and trademark rights.  But if Superman were a real person, how might the situation be different?  Could just anyone slap his image or iconic S shield on a lunchbox?  What about uses that suggest that Superman endorses a product or service?  (“Try Metropolis Brewery Beer, the choice of the Man of Steel!”)  Or worse, what about revealing a superhero’s secret identity?

I. The Rights of Publicity and Privacy

Future posts will address copyright and trademark, but first we must address something that real people have that fictional characters do not: the rights of publicity and privacy. Unlike copyright and trademark, these rights are not  intellectual property rights per se but rather rights derived from common law torts. In the United States the rights of publicity and privacy are primarily matters of state law.  As you might imagine, much of the law is driven by the interplay between celebrities and the media, and the two states with the most well-developed case law are California and New York, although those are not the only states with right of publicity statutes.  Nineteen states have general right of publicity or privacy statutes (CA, FL, IL, IN, KY, MA, NB, NV, NY, OH, OK, PA, RI, TN, TX, UT, VA, WA, WI).  J. Thomas McCarthy, 1 Rights of Publicity & Privacy § 6:8 (2d ed.).  Arizona has a specialized statute that applies to active and former members of the US armed forces, which may be useful for the many superheroes that are or were part of the military.  Ariz. Rev. Stat. § 12-761.

The states that lack privacy or publicity statutes at least recognize the common law torts related to the right of privacy.  McCarthy § 6:2.  Usually this takes the form of Prosser’s four privacy torts of intrusion, disclosure, false light, and appropriation.  See William Prosser, Privacy, 48 Calif. L. Rev. 383 (1960).  This post will consider intrusion, and the others will be addressed in future posts.

For this series we will primarily consider the common law of privacy.  Only a minority of states have statutes, and they vary widely in their nature and scope.  Even the six states that modeled their statute after New York’s refer to it only loosely.  See, e.g., Tropeano v. Atlantic Monthly Co., 379 Mass. 745, 747 (1980) (noting that “The statutory scheme of Massachusetts differs from that of New York.”).  Since fully addressing the patchwork of privacy laws around the country could fill a book (and has), the common law approach lets us speak in general terms.

II. Intrusion

Prosser described intrusion as “intrusion upon the plaintiff’s seclusion or solitude, or into his private affairs.” Prosser at 389.  This has been described as “the right to be left alone.”  Humphers v. First Interstate Bank, 298 Or. 706, 714 (1985) (quoting W. Page Keeton et al., Prosser and Keeton on the Law of Torts § 117, at 851 (5th ed 1984)).  For a more precise definition we can turn to the Restatement (Second) of Torts, which gives three elements: (1) an intentional intrusion, physical or otherwise, (2) upon the plaintiff’s solitude or seclusion or private affairs or concerns, (3) which would be highly offensive to a reasonable person.  See Mauri v. Smith, 324 Or. 476, 483 (1996) (applying the Restatement definition).  Note that “intrusion into solitude appears to be based on the manner in which a defendant obtains information, and not what a defendant later does with the information, which is covered by the public-disclosure-of-private-facts branch.” Fernandez-Wells v. Beauvais, 127 N.M. 487, 491 (Ct. App. N.M. 1999).

From a superhero’s point of view, the main issues here are intrusion into his or her secret identity and secret headquarters, if applicable.  The latter case is squarely within the scope of the tort (physical intrusion into a home or office is a classic example of the tort), so let’s focus on the issue of secret identity.  In particular, does a superhero’s secret identity fall under the scope of the second element?  And when we say “reasonable person” do we mean a reasonable regular person or a reasonable superhero, or does it matter?

The answer to the first question is probably yes.  Courts have held that the right to privacy includes psychological & emotional solitude and the intrusion can occur in a public place.  See, e.g., Phillips v. Smalley Maintenance Svcs, Inc., 435 So.2d 705, 711 (Ala. 1983) (holding “one’s emotional sanctum is certainly due the same expectations of privacy as one’s physical environment.” and “the ‘wrongful intrusion’ privacy violation can occur in a public place, when the matter intruded upon is of a sufficiently personal nature”).  As the definition states, the intrusion need not be directly physical and can include demands and threats.  Phillips, 435 So.2d at 711.

The answer to the second question is that the offensiveness of the intrusion is judged by the standard of an ordinary, reasonable person, not a superhero.  Prosser at 397.  Further, “the intrusion must be of such a character as would shock the ordinary person to the point of emotional distress.” Roe ex rel. Roe v. Heap, 2004-Ohio-2504, 2004 WL 1109849 (Ohio Ct. App. 10th Dist. Franklin County 2004).

Taking all of that together, I think we can see that the intrusion would have to be pretty severe.  Merely asking about or even forcifully demanding to know a superhero’s identity would probably not “shock the ordinary person to the point of emotional distress.”  However, things like ripping off a superhero’s mask or demanding the answer at gunpoint likely would qualify, even if the superhero was impervious to bullets (remember the ordinary person standard). One way to consider it is: would an ordinary, reasonable person feel coerced into giving up his or her secret identity?  Given the danger posed to a superhero and his or her family by exposure, such coercion would cause severe emotional distress.

Or consider the situation in The Dark Knight, where the Joker puts pressure on Batman to reveal his true identity by threatening not only Rachel Dawes, but random civilians. It is not hard to argue that a public figure of the sort that Batman had become in the film would reasonably feel coerced–Wayne would have revealed himself if Dent had not stepped in–by a threat like that one. So if anything, the unusual situation most superheros find themselves in, particularly those who are more-or-less explicitly dedicated to public service, the range of potential coercion adequate to ground such a tort would appear to be quite broad.

Even more, the scope of this tort is not limited to supervillains. A sub-plot of the movie involved a consultant threatening to go public with Batman’s real identity. While the Joker probably wouldn’t care all that much about being served with a civil lawsuit (Any volunteers for that job? No?), trying to blackmail someone like Bruce Wayne by threatening to go public is a spectacularly bad idea even aside from the “do-you-really-want-to-blackmail-Batman?” bit.

However, even if the assailant did not learn the secret identity or, if it were learned, did not disclose it, the elements of the tort would still be met because intrusion is distinct from disclosure.  And even if the acts occurred in public, they would still be tortious because intrusion is not limited to particular physical places.

III. Conclusion

The intrusion form of invasion of privacy likely protects superheroes from highly offensive intrusion into their secret identities and headquarters, but not from more casual inquiries.  Villains should think twice before demanding that Batman take off that mask.

Batman and Patents

[Be sure to read the update to this post in Law and the Multiverse Retcon #1!]

Batman’s use of gadgets developed by Wayne Enterprises poses an intellectual property strategy problem for the company.  Specifically, Batman’s public use of the inventions may actually prevent WE from obtaining patent protection.  Luckily, there’s a solution, albeit one that requires a little help from Bruce Wayne’s friends in the Department of Defense.

Batman is well known for his use of gadgets, many of which are based on advanced technology unavailable on the open market.  Some times these gadgets are explained as the product of Bruce Wayne’s own considerable intellect.  In other cases the gadgets have their origin with Wayne Enterprises R&D, perhaps with some modifications for Batman’s purposes.

Of course, Batman must always be ahead of the curve, so over time his gadgets have advanced to keep pace with technology.  The flip side is that over time gadgets and advanced technologies that were once exclusive to Batman fall into common use, perhaps sold by Wayne Enterprises.

And therein lies the problem, at least for gadgets that come out of Wayne Enterprises R&D.  Like many businesses, presumably Wayne Enterprises would seek to patent its inventions.  But Batman’s own use of the inventions in public may prevent Wayne Enterprises from obtaining a patent.  In the US, you generally cannot obtain a patent on something that was “in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States.”  35 USC 102(b).  This is known as the “on sale bar,” and it is a strict statutory bar to patentability.  So if Batman starts using a new Wayne Enterprises technology in a gadget more than a year prior to the patent filing, then he may have ruined the company’s chance at a patent.

Of course, Wayne Enterprises could always file for a patent before the one year grace period is up, but that would mean disclosing the technology to the public 18 months later when the patent application is published by the Patent and Trademark Office. 35 USC 122(b)(1)(A).  At most Batman would have 30 months in which to use the technology before supervillains could look it up online and start copying it (presumably supervillains are not concerned with patent infringement suits).

As Bruce Wayne, Batman could also keep the Wayne Enterprises technology to himself: using it in public–and thus destroying patentability–but also ordering Wayne Enterprises R&D to keep the technology on the shelf.  In the end Wayne Enterprises still loses, whether because competitors can copy the unpatentable technology or because the company is prevented from selling the technology.

So Batman’s use of Wayne Enterprise technology puts Bruce Wayne between a rock and a hard place: either harm the company that indirectly finances his heroics by using the technology in public or concede a round of the technological arms race by allowing the technology to be disclosed in a patent.

You might be thinking that all this talk of “public use” is a bit silly.  After all, Batman isn’t exactly walking around giving public demonstrations of his latest gadgets, much less explaining how they work.  The patent laws, however, take a broad view of what constitutes public use.  It was long ago established that it is enough that a single instance of the invention was used by a single person in public, even if the device itself and its method of operation were not visible (e.g., a hidden piece of armor beneath Batman’s costume).  Egbert v. Lippman, 104 U.S. 333, 336 (1881).  The purpose of the on sale bar is to induce inventors to disclose their inventions early; if the invention works well enough to use it in public, then it works well enough to be patented.

There is an exception to the public use bar for experimentation, but it is a narrow one, and it may not be practical in this case.  In general the exception requires that the experimentation be done by or at the direction of the inventor as part of the development and testing of the invention.  City of Elizabeth v. Pavement Co., 97 U.S. 126, 134 (1877).  Although Batman often uses gadgets that are not yet fully developed, it is doubtful that Wayne Enterprises would call Batman to the stand to testify that he was using a new gadget at the behest of a Wayne Enterprises scientist in order to test its performance under real world conditions.

Furthermore, the experimental use exception also requires that the testing necessarily be in public, such as in the case of a new pavement material.  Id.  But most if not all of Batman’s gadgets could be tested in a lab or other testing facility.  It’s hard to argue that it’s necessary to test them on actual supervillains and criminals

But now you might be saying: if Batman keeps his use of the gadget secret, and the criminals he catches don’t understand or even notice the new technology, how will this ever be a problem in practice?  Who’s going to snitch?  I think there are two major possibilities.  First, Batman doesn’t always have the luxury of operating in the shadows.  Sometimes he works in public, and cameras and bystanders may observe new technology in use.  But the second and more serious problem is that Bruce Wayne himself and possibly other Wayne Enterprises employees (e.g., Lucius Fox) know of Batman’s use of the technology.  Would Bruce Wayne really be willing to break the law in order for Wayne Enterprises to make more money?  Or would he choose for the company to forgo a patent in order to keep crime-fighting technology secret a while longer?  I think he would probably choose the latter.

There is hope, however.  Patent applications that include classified information are not published until either a set time period has expired or the secrecy order has been lifted. 35 USC 181; MPEP 120.  But neither do such applications mature into patents; effectively they are held in limbo while they remain classified.  So if Bruce Wayne could convince, say, the Department of Defense to classify a given technology, then Wayne Enterprises could apply for a patent early on, Batman could use the technology, and once the time was right the classification could be lifted, the patent could issue, and Wayne Enterprises could make a lot of money.  Given that Wayne Enterprises does a lot of work for the US military, this is a plausible solution to the problem.