SUPER HEROES NEED PROTECTION TOO!
William E. Maguire.
All Rights Reserved.
Previously published in NEW MATTER, the Official Publication of the State Bar of California Intellectual Property Section, Vol. 19, No. 4, Winter 1994.
PRIME®, ULTRAVERSE® and the "P" logo are © 1994 Malibu Comics Entertainment, Inc., a subsidiary of Marvel Entertainment Group, Inc. All Rights Reserved. Art by Brian Hitch. Used with permission.
PRIME, while having the distinction of being the world's strongest super human (within the ULTRAVERSE), is powerless by himself against infringers. PRIME is smart, in spite of his tender age of thirteen years, because he knew he needed trademark and copyright protection (which is also fortunate for this author because it got him a real job). In this article, PRIME has agreed to disclose and discuss several strategies for protection against potential infringers.
CLEARANCE
Even before PRIME has an identity of his own, it must be determined whether his name is available. The first step in this regard is to perform a screening search at uspto.gov and/or with an on-line service, e.g., CompuMark Saegis, Corsearch. In the case of PRIME, who has his own titled comic book series, a search of the federal register for PRIME in International Class #16 (hereinafter, Class) would be necessary. In addition, because PRIME is a titled character, other merchandisable classes should also be screened, including but not limited to, Classes #9, 18, 24, 25, and 28 (more information on these latter classes will be discussed below). If the screening search reveals no obvious conflicts, then the next step would be to order a full search from any one of several trademark research companies, e.g.,CORSEARCH, CompuMark. This full search can search several classes. If the full search indicates that the mark searched still appears to be clear of any potential conflicts, then it is reasonable to move to the next step.
TRADEMARK
The time is now at hand to prepare trademark applications. Because PRIME will first be marketed in the United States, it is best to seek registration with the United States Patent and Trademark Office (hereinafter, USPTO). Since PRIME is primarily and foremost a comic book character with his own titled comic book series, the first trademark application will be in Class #16 for comic books, trading cards, posters, printed milk caps, and other printed matter. The other classes to consider (and a listing of some of the goods to be considered) are as follows:
- Class #9 - for discs featuring music, action-adventure, and animation; prerecorded audio tapes, compact discs, vinyl records; sunglasses.
- Class #18 - for hand bags, day packs, backpacks, travel bags, duffel bags, purses, satchels.
- Class #24 - for bed linens, bath linens, bed sheets, bed spreads, blankets, mattress covers, curtains, draperies, bath mats, pillow shams, towels.
- Class #25 - for clothing; namely, t-shirts, shirts, shorts, socks, sweatshirts, ties, caps, and jackets.
- Class #28 - for toys, games, and playthings; namely, action figure toys and accessories therefor, toy vehicles, hand-held units for playing electronic and video games, (note: computer game programs, including downloadable software from a global computer network are registrable in Class #9), dolls and puppets and accessories therefor, stuffed and plush toys.
Other applications as referenced above were also prepared for PRIME since the potential for merchandising this character were considerable. Therefore, intent-to-use applications (ITU) were prepared in Classes #9, 16, 24, 25, and 28. The ITU method was chosen because at the time the plans were drawn up to exploit the character PRIME there was no use in commerce to support a use based trademark application. In the case of PRIME, within several months after the preparation of the ITU application in Class #16, the first issue of PRIME was shipped and sold in interstate commerce. Soon thereafter, a Statement of Use was filed with the USPTO with a Certificate of Registration issued several months later. Once the registration issued PRIME was also able to use the official trademark notice after his name, namely, PRIME®. Prior to registration only the symbol TM should be used.
Had PRIME been infringed prior to the date of his federal registration, then PRIME could have sought recovery in Federal Court under § 43 (a) of the Lanham Act (15 U.S.C. § 1125 (a))which prohibits acts of false designation of origin. In addition, there are state law theories available in state court for dilution, state or common law trademark infringement, as well as idea misappropriation in some jurisdictions.
COPYRIGHT
Another strategy for protecting the comic book character PRIME is copyright law. Under the U.S. Copyright Statute (17 U.S.C.§ 101 et seq.), works of visual art are protectible from the moment of their inception in any tangible medium. This means that the visual or graphic depiction of PRIME is protectible, even without registration with the U.S. Copyright Office in Washington, D.C. (copyright.gov). In the case of PRIME, however, the decision was made to register each issue of PRIME by preparing FORM VA for comic books (for both the art and the text), in addition to separately registering PRIME posters and trading cards. It should be noted that copyright does not protect the title or the name, PRIME, but rather in this particular case the art and/or text.
CONCLUSION
Enforceability will depend upon the extent to which a company invests in and follows through on the above strategies.Trademark would seem to be the most prevalent and important strategy in connection with the comic book industry. Copyright protection and registration is also important, yet the issue of substantial similarity has not seen as much play in this arena. In fact, there are several notable artists who frequently pay "tribute" to other artists by copying their style and poses.
Such instances usually go unresolved with litigation being the only way to determine actual infringement. In any case, such common features as rippling muscles, body suits, capes and hair styles are not in and of themselves protectible under copyright law.
Recognizing that a comic book character has tremendous ancillary potential in terms of merchandising is paramount. The comic book itself is just the beginning of what fruit such a character may bear. This being the case, a trademark and copyright lawyer must be ready to advise his/her client as to what steps are necessary to protect these characters. While not intended to be all inclusive, and with PRIME retaining several strategies up his bodysuited sleeves, this article has attempted to demystify several strategies for protecting comic book characters.
** William E. Maguire was Senior Counsel for MalibuComics Entertainment, Inc., a subsidiary of Marvel Entertainment Group,Inc., from 1992 - 1995, where he concentrated on the company's trademarks,copyrights and licensing. Currently, he is in private practice in Santa Monica,California, where he represents clients in the entertainment, publishing, sporting goods, toy, cosmetics and apparel industries. The author would like to thank Gary Gittelsohn, Esq., Senior Executive Vice President, LegalAffairs, Marvel Entertainment Group, Inc., for his editorial comments and suggestions. Thanks also to Jim Chadwick, formerly Art Director, Malibu Comics, for the artwork provided.
All Rights Reserved.
Phone (310) 470-2929 * Fax (310) 474-4710
E-Mail: maguire@artnet.net