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I’ve been noticing something a lot lately.
Maybe it’s because I’m a fan of superhero stuff and/or because I practice intellectual property law. Maybe due to all the superhero movies, and the fact that people not only don’t mind being associated with comics, they would LOVE some of that comics mojo to rub off on their business.
Sometimes, a company taking an item from an existing comic and using it to market their business. For example, a new mom and pop pizza chain near my house recently distributed a promotional flyer using Superman, Batman, Spider-Man, and some other superheroes all enjoying their pizza. You can bet they didn’t have a license for those trademarks. That’s a one-off that realistically caused little if harm and probably won’t be noticed. But I’ve also noticed other companies utilizing what familiar comic book-related names. For example, there’s Wayne Enterprises, which has nothing to do with Bruce Wayne. Then there’s Stark Industries, which doesn’t make flying robotic armored suits (although they do manufacture “seismic gun compressed air supply systems”). There are lots of LexCorps out there. I’m not saying they infringe (most of them probably don’t). But when does this cross the line and become infringement under the Lanham Act?
This has been litigated before. For example, in a highly publicized 2004 case, DC Comics sued Kryptonite Corp. (KC), a bike locks and accessories manufacturer alleging, among other things, trademark infringement and dilution. KC countered that DC’s trademark registration should be cancelled. DC and KC had licensing agreements over the word “Kryptonite“, but KC was prohibited from using the word “super” and other things associated with the Superman universe, in marketing its products.
For the trademark infringement claims, the plaintiff must demonstrate (1) that it has a valid mark that is entitled to protection under the Act and (2) that there exits a likelihood of confusion that consumers will be misled or confused as to the source of the goods in question.
1. Ownership of a valid mark
KC argued that DC Comics’ use of Kryptonite does not qualify for protection under the Lanham Act because DC Comics has not used Kryptonite as a brand name or trademarkto indicate the source of its goods. KC argued that DC Comics does not own the trademark in Kryptonite because DC Comicshas never used the mark in commerce the only evidence of use is as a story element. KC argues that Kryptonite is simply a fictitious substance that appears in the Superman story for narrative—not source identifying purposes. According to KC, Kryptonite is one small part of the overall content of a comic book story used in the story to describe a fictitious substance and enhance the story -not to identify or designate the source of a real product or service. KC contends that the word “Kryptonite” (except as a name for KC’s locks and other products) has no commercial meaning identifying the source of goods or services.
DC Comics,countered that it has made significant use of Kryptonite as a trademark on products other than comic products and motion picture products. For example, DC Comics argues it has used Kryptonite with merchandise such as toys, apparel, books, calendars, games, greeting cards, novelty items, and video games. In addition, DC Comics argues that it owns two trademark registrations for the use of Kryptonite on t-shirts which are incontestable.
This was not a close call. The Court held that DC Comics owned a trademark in Kryptonite. The law holds that:
where the product sold by plaintiff is ‘entertainment’ in one form or another, then not only the advertising of the product but also an ingredient of the product itself can amount to a trademark protectable under § 43(a) because the ingredient can come to symbolize the plaintiff or its product in the public mind.
DC Comics, Inc. v. Filmation Associates, 486 F.Supp. 1273, 1277 (S.D.N.Y.1980).
- the strength of DC Comics’ mark;
- the similarity of the DC Comics’ mark;
- the competitive proximity of the products;
- the likelihood that the DC Comics will “bridge the gap” by entering KC’s market;
- actual confusion between the products;
- good faith on KC’s part;
- the quality of KC’s product; and
- sophistication of buyers.
The Court held that there were triable issues. In cases with this many intent-based factors, summary judgment is generally unlikely, and trial (or, more realistically, settlement via a licensing agreement) more likely. Be careful using comic trademarks. The best advice is to talk to a lawyer first. You don’t want to build up a brand, and then have to change everything midstream — or, worse, get involved in costly litigation with a deep pockets plaintiff.
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Clothing producer,