Friday, December 15, 2017

Comic-Con Trademark - Part 2

            I previously wrote a little about the Comic-Con trademark dispute here. In this post, I’d like to look at the history of the Comic-Con trademark and why it is a protectable mark.
A quick search of the United States Patent and Trademark Office (USPTO) database shows 79 entries using the phrase comic con, of which 59 are still active. At least 21 of those registrations belong to Comic Con International (CCI). You can find a list of the CCI trademarks at the end of the article.
            First, in order to register a trademark or service mark – for brevity, I’m just going to use trademark to refer to both – with the USPTO, the trademark must be used in interstate commerce, and it must not be confusingly similar to another registered mark. Additionally, there are four types of marks with varying degrees of strength of protection: fanciful or arbitrary, suggestive, merely descriptive, and generic.
Fanciful and arbitrary trademarks are the strongest trademarks. Fanciful marks are invented words used as a trademark, such as Pepsi, and arbitrary marks are common words used in a unique way, such as Apple for computers. Suggestive marks are also considered strong trademarks, and they suggest something about the product, but do not explicitly describe the product or service. An example of a suggestive mark would be Speedi Bake for frozen dough; it suggests an attribute of the product but does not describe the product. Merely descriptive marks describe the goods or services being offered. They are considered to have weak protection and cannot be registered unless they have acquired secondary meaning. A generic mark is when the ordinary, everyday name of a good or service is used as a trademark. Generic marks cannot be registered with the USPTO.   
In 1990, Comic-Con International (CCI) filed an application to register a “San Diego Comic Con” trademark as a logo featuring an image of a toucan and the words previously mentioned. It was registered in 1992, but later abandoned in 2016 for failure to file a renewal. CCI’s first attempt to register “Comic Con” as a trademark was in 1995. Eventually, the application was abandoned after it was challenged by Chicago Comicon. “Comic Con International” was registered as a trademark in 1999.
            As you can see, CCI has been working to secure their trademark portfolio for a while. In 2005, it filed an application to register “Comic-Con” as a trademark. This application was initially rejected because the examiner found the trademark to be merely descriptive of the goods and services being offered. A merely descriptive trademark is not eligible to be registered on the Principal Register, which entitles it to the fullest trademark protection possible, unless it has acquired secondary meaning. CCI petitioned the trademark office to register the mark because it had acquired secondary meaning. As evidence, it pointed to the fact Comic-Con had revenues in excess of $22 million between 2001 and 2006, it had spent $11 million in advertising over the same period, and attracted more than 100,000 visitors in 2005. CCI also claimed exclusive use of the trademark. Based on this evidence, the USPTO found “Comic-Con” had acquired secondary meaning and allowed the registration to issue in 2007. CCI also filed its statement of use and incontestability in 2012, which further strengthened the “Comic-Con” mark. Because it has acquired incontestability status, the “Comic-Con” trademark can only be invalidated on a few specific grounds going forward, such as the mark becoming generic or if there was a fraud committed upon the USPTO.
            It was this trademark CCI relied upon in its lawsuit against Salt Lake Comic Con, and it’s this mark and other related marks CCI has used to thwart other conventions’ attempts to register trademarks with comic con in the name, with Denver Comic Con, Wizard World Comic Con Box, and Wizard World Comic Con TV being notable examples.  
            Undeniably, CCI has managed to build a massive brand around Comic-Con, and they have taken the appropriate steps along the way to protect the brand. As evidenced when it was being registered, the Comic-Con mark is merely descriptive and not entitled to strong trademark protection. However, CCI has spent the time and money building it as a brand, and the recent victory against SLCC shows they have been successful.

The list of registered trademarks and applications belonging to CCI includes the following: COMIC CON INTERNATIONAL (Registration #:2218236)
COMIC-CON (Registration #:3219568)
ANAHEIM COMIC-CON (Registration #:4425806)
LOS ANGELES COMIC-CON (Registration #:4856095)
COMIC-CON (Serial #:86482541)
SAN FRANCISCO COMIC-CON (Serial #:86482550)
COMIC-CON (Serial #:86482556)
COMIC-CON (Serial #:86482561)
COMIC-CON (Serial #:86485096)
LA COMIC-CON (Serial #:86774356)
COMIC-CON DEMAND (Serial #:86775699)
COMIC-CON (Serial #:86937864)
COMIC CON (Serial #:86937870). 

Thursday, December 14, 2017

The Comic-Con Trademark - Part 1

In case you missed it, last week a jury found Comic-Con to be a valid, enforceable trademark. The jury ruled Salt Lake Comic Con (SLCC) infringed upon the Comic-Con trademark owned by Comic-Con International (CCI), the company behind San Diego Comic-Con, and it awarded CCI a judgment of $20,000, far less than the $12,000,000 it was seeking. For a great recap of some of the background and issues underlying the dispute, check out this Forbes article by Rob Salkowitz .
The two conventions have been litigating the issue since 2014, and this decision has implications for the broader comic book convention circuit. There are numerous comic book conventions around the country, and many of them use the phrase “comic con” in their name and branding. After this decision, many of these companies will need to re-evaluate their brand and determine if they need to change their name, change their marketing practices, or seek a license from CCI to use the phrase.
While SLCC has vowed to appeal the decision, recent reports suggest they are also looking at re-branding their convention.[1] The validity of the Comic-Con trademark is also being challenged with the United States Patent and Trademark Office (USPTO). Both routes are an uphill battle.
On appeal, the issues being appealed and the standard of review the court applies will likely determine the outcome. In order for SLCC to have a shot at winning on appeal, it will have to convince the 9th Circuit to review the case de novo, meaning the 9th Circuit will essentially rehear the case.[2] If SLCC can show there is a question of law or a mixed question of law and fact still at issue, then the 9th Circuit would use this standard of review. If, however, the court applies another standard of review, such as clearly erroneous, abuse of discretion, or substantial evidence, then the outcome favors SDCC. These standards are deferential to the lower courts findings, and it will be hard for SLCC to overturn the lower court’s ruling.
SLCC is also facing a tough battle in their proceeding to cancel the Comic-Con trademark with the Trademark Trial and Appeals Board (TTAB). CCI’s main Comic-Con trademark was registered in 2007. In 2012, CCI filed for incontestability, which means the mark had not been challenged during the previous 5 years, and it limits the ways a trademark can be invalidated. Now, the only way for SLCC to invalidate the mark would be to show it has become generic, which now may be impossible to do as a result of the jury decision, or by showing CCI committed fraud upon the USPTO when registering the trademark. The latter approach is the one being taken by SLCC, but the proceeding was suspended pending the outcome of the trial. Again, this is an uphill battle for SLCC, but if they can convince the TTAB the statements made by CCI to obtain registration were fraudulently made, then they have a shot.
Personally, I’m a little surprised by the decision. When it was registered, the USPTO found the “Comic-Con” mark to be merely descriptive because it describes comic conventions, but the mark was granted registration due to it acquiring secondary meaning. Merely descriptive marks describe the goods and services being offered and are usually afforded weak protection. Perhaps that is one factor explaining the low monetary award? Even though Comic-Con, and even Comic Con, are riskier phrases for convention organizers to use, it’s hard to imagine organizers being prevented from using the words comic book convention or comic convention to describe their events going forward.
As I said near the beginning, if you use the phrase “comic con” in your event title, you will need to re-evaluate your brand strategy. Honestly, it’s not the worst thing to do anyways. At best the comic con phrase is merely descriptive of the services being offered. You’ll be doing yourself a favor if you can come up with a unique brand name. It’ll be easier to trademark too, but that’s a discussion for next time.   


Tuesday, November 28, 2017

Book Review: Slugfest: Inside the 50-Year Battle Between Marvel and DC

I recently finished Reed Tucker’s Slugfest: Inside the Epic, 50-year Battle between Marvel and DC (affiliate link). While it should prove a worthwhile read for many, it didn’t cover enough new ground to be a valuable resource to me.
Tucker’s book covers the rise of DC and Marvel and the ensuing rivalry between the two companies. It starts with the rise of DC Comics through its flagship titles featuring Superman and Batman, and then covers the emergence and rise of Marvel as a powerhouse in the 1960s. It features anecdotes about the stories each company published, how each company viewed the other, and the ensuing tit-for-tat as each company tried to best the other. The first half of the book primarily covers the rivalry as it relates directly to comic books, but the second half covers the transition into film and television.  
For me, the book is at its best when it’s covering the business of comics. I found the discussions about sales figures and finances interesting, the quirky personnel stories intriguing, and the cross-over negotiations fascinating. While a few potential legal disputes were discussed, the book was light on legal topics—primarily because the two companies have never sued each other. However, the book covers a lot of near-miss disputes that I found interesting.
The book is written in an easy-to-read, journalistic style. Tucker zips along covering highlights of interactions between the two companies, and provides an excellent overview of the history between the two companies. Some of his attempts at humor felt forced and didn’t connect with me. Even so, it shouldn’t detract from most people’s enjoyment of the book.
 However, if you’ve followed comic book industry magazines or blogs for a while, then most of this will be old news to you. Many of the stories told in Slugfest were also recently covered in Sean Howe’s Marvel Comics: The Untold Story (affiliate link), which is a longer, more detailed book giving a detailed look at Marvel Comics. 
Overall, the book is a worthwhile read. It’s just better suited to people new to the comic book world, or those who don’t know much about the companies behind the books. 

Tuesday, October 31, 2017

Halloween Costumes & Knock-offs

          Happy Halloween! I’ve always loved Halloween; it might be my favorite holiday. Not only do I love the costumes, decorations, and candy, it’s also close to my birthday. I’m definitely a Halloween person.
            Adding to my love of the holiday was the fact one of my earlier jobs as a lawyer was working for a retailer of Halloween costumes and d├ęcor. Not only was it a fun job, but it also provided a crash-course on the outer limits of intellectual property law. As many people are aware, knock off costumes – unlicensed costumes resembling popular characters – are abundant. Knock offs are abundant for a few reasons. First, some costume manufacturers cannot afford the licensing fees but still want to capitalize on a recent trend or fad. Second, sometimes a license for a particular property might not be available, either due to poor planning by the licensor, choice, or unforeseen popularity. And third, if done correctly knock-off costumes are legal under copyright law.
            Knock-offs can be legal because copyright law does not protect functional designs. If a design is important to the actual purpose and operation of the good, then it’s not protected by copyright. (Patent protection for elements of clothing is possible, but will not be discussed here.) Therefore, clothes are generally not protected by copyright. However, the designs on the clothing, if distinctive enough, can be protected by copyright. This issue was recently addressed by the U.S. Supreme Court in the Star Athletics case, which I previewed here. So, if a manufacturer can come up with a design evoking a popular character without infringing on any possible copyrightable elements of the costume, then their costume should be legal under copyright law. However, they still must be wary to not run afoul of trademark law, which means they cannot use the character’s name or any related logos associated with the character, and they have to be wary of right of publicity law, meaning they have to be careful about using a famous person’s name or likeness. It can make for some interesting products and descriptions. Below are a few of the more interesting ones I found recently. (Note: affiliate links)

Most of us should be able to guess who this is supposed to be.

A little trickier, but click through the link to see the product description, which makes it obvious and could run them afoul of the rights-holder.

Most of my readers should be able to guess this one.

It's a little harder to find men's costumes skirting this issue, and it's not always obvious. To me, this seems like it's evoking a certain character from a long-running animated sitcom.

Thursday, October 12, 2017

Changing Work Made for Hire

When I was in law school, I wrote a paper on what I perceived to be unfairness in the Copyright Act’s work-made-for-hire law. The main reason I believed the law to be unfair was due to the plight of comic book creators, and a good chunk of the article went on to highlight some of the unequal treatment creators encountered under this law. My article proposed a remedy to try and address the problem. It is not my finest work. But, it does have some concepts worth exploring.
I’ve written before about work-made-for-hire agreements, and I’ve discussed some lawsuits creators have brought trying to reclaim characters they created, but I don’t believe I’ve addressed the basics of why the doctrine exists in the first place. The work-made-for-hire doctrine was formally adopted in the Copyright Act of 1909, where it was briefly mentioned,[1] and it was adopted in more detail in the 1976 Copyright Act. (I previously discussed it in depth here: The basic rationale behind the doctrine is that an employer has paid an employee to create the work, and it therefore belongs to the employer.
While writing my paper in law school, I believed the work-made-for-hire doctrine unfair to comic book creators. In most employment-related situations, the salary paid to an employee for their work is adequate. However, when an employee creates something potentially worth millions of dollars to the company, is it fair for the employee’s only compensation to be his salary?
The main remedy I advocated called for reworking the work-made-for-hire doctrine into a mandatory licensing scheme. Instead of the employee having no rights to his creation, he would be entitled to a fixed percentage of revenue generated by his creation outside of its original work. For instance, if the character was originally introduced in an established title but soon found its way into a stand-alone comic book, the creator would receive a percentage of profits. Additionally, if the publisher stopped exploiting the character for a fixed period of time, the rights to the character would revert back to the creator.
At the time, I thought my idea novel and a great solution to a problem I believed was prevalent. I spoke with a few people in the industry at the time, but I was not privy to the behind-the-scenes deals that were in place between publishers and their creators. My knowledge of the industry was a far cry from what it is today. The information on the inner workings of the comic book industry available today online and through well-researched books far surpasses what was available a decade ago. Imagine my surprise when I finally learned DC and Marvel had instituted a system not too dissimilar to my proposal on their own years before.
The best publicly available description of this policy I’ve been able to locate was posted by Mark Waid on his Thrillbent site: It’s a fascinating read, and if you haven’t read it you should. Basically, if creators introduced a new character, they would be paid a small royalty on the revenue the character generates for the company.
Perhaps unsurprisingly, I was a little embarrassed when I discovered my “big idea” to help creators was already put into place years before. The nuts and bolts differ from what I proposed, but the basic elements are the same. Two differences separate my proposal from theirs. First, mine would be a change to copyright law. The programs put in place by the publishers are contractual—at best. If the additional incentives paid to creators are policies enacted by the companies and not actual contractual obligations, the company can change the program without much input from the creator.  Second, I advocated a way for the creators to regain their characters if the publisher failed to utilize it. While certain creators may be able to contractually negotiate this happening, most cannot. For those who cannot, their creations will always belong to the publisher.
Even though I’m embarrassed I failed to discover when I was writing my paper my solution was already being implemented, I’m still proud of myself for coming up with an idea to resolve the problem similar to what was actually used. Not too bad for a second year law student.     

[1] “…or by an employer for whom such work is made for hire…”, Sec. 23, Copyright Act of 1909.

Thursday, September 28, 2017

Comic Pros & Cons Podcat

Derek Becker was kind enough to invite me on his Comic Pros & Cons podcast. I had a great time chatting with Derek, and his podcasts touch on some great issues. You can check out the podcast with me here: While you're there, check out some of his other ones as well.

Wednesday, September 6, 2017

Would a Bumblebee by any other name sting as much?

           Last week news broke that Hasbro, manufacturer of the Transformers toys, sued DC Comics for trademark infringement.[1] The trademark at issue: Bumblebee. Both companies created a character and released a toy bearing the name Bumblebee. For Hasbro, it’s a car that transforms into a robot; for DC, it’s a character who created a suit granting her super strength and durability, and the ability to fly, shrink, and use sonic disruptors.[2]
            In its complaint, Hasbro states it has used the Bumblebee trademark in connection with toys since as early as October 3, 1983. This also is the date it gave when registering its Bumblebee trademark with the U.S. Patent and Trademark Office in 2015. DC’s Bumblebee character, however, was first introduced in 1978 in Teen Titans #48 (or Teen Titans #45 in 1976, when her non-Bumblebee character, Karen Beecher, was introduced).[3] However, it does not appear DC ever created a Bumblebee toy until recently. In its complaint, Hasbro alleges DC began using the “spurious” Bumblebee trademark in connection with its Superhero Girls line of toys, which it launched in 2015.[4]
Did I finally purchase the Bumblebee doll my
daughter wanted after this lawsuit was filed? Yes, yes I did.
            When discussing this case, it’s important to keep in mind the differences between copyright law and trademark law. Copyright law protects the way an idea is expressed through art, writing, film, music, etc. Trademark law protects the identifying marks of providers of goods and services. Additionally, trademark registrations are broken down in to multiple categories, and it is possible for two similarly-named trademarks to co-exist at the same time if they are in separate and unrelated categories. While the two characters can exist simultaneously with the same name under copyright law, provided they are not copies of each other, it can become a problem when the character names are both used in relation to the same category, in this case toys.
            Given Hasbro has been manufacturing Bumblebee toys since 1983, it’s surprising they never attempted to register a trademark for the name until 2005. In reviewing the online trademark records, Hasbro was prevented from registering the trademark at that time because another company was attempting to register a trademark using Bumblebee in the same toys category and a few others. Even though the other company’s trademark ultimately did not register, Hasbro did not attempt to register the Bumblebee name again until 2015. This time it was successful, and the trademark was officially registered in December.    
Since these characters have co-existed for decades, what has prompted this lawsuit now? A few things jump out. First, Hasbro finally registered and received a federal trademark registration for Bumblebee in the toys category in 2015. With a federal trademark registration secured, it has stronger trademark rights that it can enforce, along with a requirement to do so. Second, DC did not manufacture a Bumblebee toy until 2015. The two companies never had a competing toy on the market bearing the same name until recently. Third, a new film starring Bumblebee is coming out next year, which is probably why Hasbro registered the trademark since they’ll be manufacturing tie-in toys, and fourth, DC’s Superhero Girl toys are manufactured by Mattel. When you’re a large company like Hasbro, it’s unlikely you’d initiate a lawsuit solely to stick it to a competitor, but it doesn’t hurt.
I’m a little surprised this actually ended up in court. Most likely Hasbro filed the lawsuit to put pressure on DC during negotiations – to let them know Hasbro means business. In trademark infringement lawsuits, the test is likelihood of confusion. It’s hard to believe a likelihood of confusion could be found between these two very different toys, but the way the system is set up favors Hasbro because they have a registered trademark. Ultimately, I imagine this case will settle before trial with DC making some minor tweaks to the packaging of their Bumblebee figures, such as a slight renaming like calling it DC Comics’ Bumblebee.