Wednesday, February 14, 2018

Wizard World & Sony

     Wizard World and Sony Pictures announced the other day they are partnering up to locate new properties for film development at Wizard World conventions. According to the reports, Wizard might be getting a cut of potential deals. Most people in the industry were taken by surprise, and some even mocked the deal—can’t Sony just buy a ticket to the conventions and talk to people themselves?

Here are my initial thoughts on the deal:

1. Who’s doing the work?
Is Sony sending someone to all of these conventions? My gut tells me no. If they’re smart, Sony would’ve structured the deal so as to make Wizard do all the work. Let Wizard host the pitches, sort through the materials, and present to Sony what they think is best. In reality, this puts Wizard in a scout role, with Wizard only getting a cut if Sony chooses to sign a deal with any of the creators Wizard presents to them.

2. Size
For some creators, this could be a good thing. San Diego Comic-Con and the other conventions in and around Los Angeles. aren’t getting smaller. It’s easy for your property to get overlooked. At the smaller Wizard World shows, newer creators might be able to be seen and heard.

3. Location
Somewhat related to the size of the conventions, for some aspiring creators, it’s a lot easier to make it to a Wizard World show. There are a lot of them in cities both large and small across the country, and many are within easy driving for many people. As mentioned in the press release, it might be easier to find some hidden gems.

4. Cost
If Sony has structured the deal as I envisioned it above, then there’s little risk to them. Make Wizard do the work, and pay them a finder’s fee if they find something good. Also, it’s probably cheaper for many aspiring creators to go to a Wizard World show than to travel out to Comic-Con, WonderCon, or New York Comic Con.

5. Contracts
There are obvious benefits to this deal for Wizard and Sony, but creators need to pay attention. Particularly, pay attention to what you’re signing. Will Wizard be incorporating anything relating to this in the Artist Alley or Exhibitor forms? I doubt it; such agreements should be treated separately. But, it’s best to be overly cautious. If you go to a pitch meeting and are offered a deal, be wary of signing anything without reviewing it and/or having an attorney review it. You shouldn’t feel pressured or put on the spot to sign a deal. As I’ve said elsewhere, pay attention to the details – Who gets money? Who gets rights to what, and for how long? Are there timetables to make things happen? Do you get your rights back if nothing happens? These are just a few of the questions to keep in mind.

     Overall, the partnership between Wizard World and Sony is surprising, and I will be following the details of it closely. Hopefully, it might lead to some breaks for lucky and talented up-and-coming creators. 

Friday, February 9, 2018

Practical Tips for Protecting Public Domain Characters

Editor’s Note: The following post is adapted from an article that appeared in the Entertainment & Sports Lawyer. You can find the original article here.

So, you own the rights to a character that is about to fall into the public domain under Copyright law. When this happens, you will lose control over the character and anyone is free to come along and create new works using your character. Is there anything you can do to protect and retain control over your character?

Currently, U.S. copyright law protects original works of authorship created on or after January 1, 1978 (i) for the life of the author plus 70 years, or (ii) 95 years from first publication or 120 years from the date of creation, whichever is shorter, for works made for hire, anonymous and pseudonymous works.[1] Once a work’s term of protection has ended, the work enters the public domain and is available for anyone to use.[2]
Looking solely to copyright law, it does not appear that there is anything you can do to extend the copyright protection for a character other than to have the character continually evolve over the years. However, “a copyright affords protection only for original works of authorship and, consequently, copyrights in derivative works secure protection only for the incremental additions of originality contributed by the authors of the derivative works.”[3]

In 2014, the Seventh Circuit court of appeals addressed the issue of whether a continually evolving literary character should fall into the public domain only after all works containing the character have entered the public domain, or if parts of the character can pass into the public domain whenever the original publications reach the end of their protected terms.
The case in question was Klinger v. Doyle Estate, Ltd.,[4] and it dealt with the character of Sherlock Holmes. Klinger co-edited an anthology of Sherlock Holmes stories written by modern authors, but he did not obtain a license from the Doyle estate to do so because he believed the works to be in the public domain.[5] The record in the case established that all but ten of the Sherlock Holmes stories had passed into the public domain.[6] However, his publisher at the time paid a licensing fee to the Doyle estate after being contacted.[7] Klinger and his co-editor then created another anthology for a different publisher.[8] Due to the Doyle estate’s demand of a licensing fee and threats to block publication of the book, Klinger’s publisher refused to publish the anthology unless Klinger obtained a license.[9] Klinger sued for a declaratory judgment that the Sherlock Holmes stories were no longer protected by copyright and that the few stories that were under copyright lacked “sufficient originality to be copyrightable.”[10] The Doyle estate argued that complex characters like Sherlock Holmes and Dr. Watson whose complexities are revealed across many stories should remain protected until the final story protected by copyright falls into the public domain.[11]  The court, however, ruled that only “original elements added in the later stories” should remain protected by copyright law.[12]

In light of the recent Sherlock Holmes case and other cases finding similar results,[13] what options are available to protect a character about to fall into the public domain? Realistically, there are not a lot of options. Your character has been protected for decades, and soon it will belong to the public. As the court in Klinger pointed out, extending copyright protection further shrinks the public domain making it more difficult to create new work,[14] and perpetual copyright protection would violate the Constitution, which authorized “copyright protection only for ‘limited Times.’”[15]  
However, there are two methods by which you may retain some control over your character, or, at a minimum, limit the ability of others to capitalize on the character. The two methods are through any trademark rights you may have gained in the character and through continued, official exploitation of the character.
The first method is to register all applicable trademark rights for your character. While this will not prevent others from using a character in the public domain, it should limit their ability to advertise and exploit the character. If your character’s name doubles as the title of a continuing publication, such as a comic book, then newcomers might be prevented from using the character’s name in the title of a competing publication. If you exploit your character on merchandise, then you should be able to prevent others from doing the same with the character. Personally, I do not believe using trademark rights to totally protect your character is possible. However, there have been instances where a character’s image fell into the public domain and trademark law protected it from exploitation,[16]  but overall, many feel that expanding trademark rights to wholly protect characters that have entered the public domain goes against the public policy goals of granting limited copyright protection.[17] In light of this, and this author’s beliefs on the matter, trademark rights to a character should only be allowed to prevent exploitation in areas unrelated to the character’s original medium that has entered the public domain. For example, if the Doyle estate has a valid trademark on Sherlock Holmes hats, then while a newcomer could exploit Sherlock Holmes in literature and other possible narrative mediums, the newcomer could be prevented from creating Sherlock Holmes branded hats. 
The second method is not exactly law related, but business oriented. One way to protect against unwanted exploitation of public domain characters is to establish a licensing regime to exploit your character. If your character is popular enough, you should be able to retain some control over the exploitation of it by establishing stories, books, movies, etc. that would fall into an official canon for the character. By designating specific works that will be officially recognized as continuing to tell the story of the character, you will be able to distinguish the official works from unofficial, derivative works. This method of creation and exploitation should encourage fans of the character to seek out and consume works that build upon and expand the official world of the character.
Ian Fleming Publications Ltd. appears to be doing a great job of doing what I described above. Ian Fleming passed away in 1964. The rights to many of his literary creations, including James Bond, now belong to Ian Fleming Publications Ltd. This entity continues to work with authors to create new James Bond stories in various media, including new books[18] and even new graphic novels.[19] In 2016, the company partnered with IDW and hired noted comic book writer Warren Ellis to create an “‘Official Continuation’ of the Bond of the book.”[20] By commissioning and approving new works that enhance and expand the stories of James Bond, Ian Fleming Publications Ltd. has set up a clear system to exploit new works and protect the character of James Bond when Fleming’s original Bond novels finally fall into the public domain.
In my opinion the Doyle Estate took too long before implementing this approach to make it effective. Over the years, new stories were released, including some by Arthur Conan Doyle’s son, but none were officially recognized as continuing Holmes and Watson’s adventures. In 2016, the Estate did authorize a writer to release a new Sherlock Holmes book in 2011.[21] It was the first book officially endorsed by the Arthur Conan Doyle family in 80 years.[22]
Even though you do not want to hear that others might soon be able to exploit the character you have rights to, it is going to happen. Your character and stories will fall into the public domain. However, if you take actions beforehand, you may be able to exert some control over the fate of your character before others start using it.

[1] Circular 15a, Duration of Copyright, 1, U.S. Copyright Office, (last visited May 24, 2016)..
[2] Kurtz, Leslie A., The Methuselah Factor: When Characters Outlive Their Copyrights,  11 U. Miami Ent. & Sports L. Rev. 437, 446 (1994).
[3] Silverman v. CBS Inc., 870 F.2d 40, 49 (2nd Cir. 1989).
[4] Klinger v. Doyle Estate, Ltd., 755 F.3d 496 (7th Cir. 2014).
[5] Id. at 497.
[6] Id.
[7] Id.
[8] Id.
[9] Id. at 498.
[10] Id.
[11] Id.
[12] Id. at 501.
[13] See Klinger, 755 F.3d at 500-01; See also Kurtz, The Methuselah Factor, at 447.
[14] Klinger, 755 F.3d at 501.
[15] Id. at 503.
[16] See Frederick Warne & Co., Inc. v. Book Sales, Inc., 481 F.Supp. 1191 (S.D.N.Y. 1979).
[17] Kurtz, 11 U. Miami Ent. & Sports L. Rev. at 450-51.
[18] About Us, (last visited June 15, 2016).
[19]Vargr hits shelves – James Bond Comic Issues #1 Out Now, Nov. 4, 2015, (last visited June 15, 2016).
[20] Bailey, Benjamin. Warren Ellis Talks Bringing Ian Fleming’s James Bond to 2016,, (last vistited July 13, 2016).
[21] A New Sherlock Holmes Story: The House of Silk b Anthony Horowitz, (last visited July 7, 2016).
[22] A New Sherlock Holmes Story: The House of Silk b Anthony Horowitz, (last visited July 7, 2016).

Thursday, January 25, 2018

Convention Season Tips

           Now that comic book conventions occur in every month of the year, I’m not sure when convention season officially kicks off. But, since I’m presenting at two conventions next month, I’m going to say February is the start of convention season – at least for 2018. If you’ll be at Wizard World St. Louis, I’ll be doing a panel on fan art on Saturday, February 3. I’ll also be presenting two panels at Capricon 38 in Chicago. One discusses the legal issues surrounding creations of works and adapting works from one medium to another, and it will be on Friday, February 16. The other panel is an overview of intellectual property, and it will be on Saturday, February 17. If you’ll be at either of these shows, please stop by.
            Since I’m declaring it the beginning of convention season, I thought I’d list some of my convention tips. Mind you, these are things I’ve discovered over the years that enhance my enjoyment of a convention.

1. Walk Artist Alley

Whenever I go to a comic book convention, the first thing I do is walk to artist alley. I love browsing the art and comics people are selling, and I want to get an idea of what’s available for purchase. Also, if you’re looking for original art, getting there early gives you the best shot at buying something unique from a creator. My favorite piece of original art I’ve bought was purchased within 10 minutes of walking on to a show floor.

2. Go easy on the prints

Over the years, I’ve bought a lot of prints from artists – too many of which are still in poster tubes. These days, I try to focus on original art, but I still end up getting a few prints per show. If I buy a print these days, I try to buy prints only from artists who have worked on the book/title/character of the print they’re selling, and I try to get it personalized in some way. 

3. Take a chance on an unknown (to you)

While you’re walking the show floor and artist alley, take some time to listen to the creators pitching their works. If one strikes your fancy, take a shot at buying their book. It means a lot to them, it usually doesn’t cost too much, and you might discover something neat before everyone else. Even if you’re afraid to risk your cash on self-published books, it’s a low risk to take a chance on a creator-owned book published by Image, Dark Horse, Vault, or any other number of small publishers.

4. Cash is king

Most exhibitors take credit these days, and it’s a good thing. You can only bring so much cash with you. However, cash is still king on the show floor, and if you can pay in cash, you might be able to negotiate yourself a nice deal.

5. Go to a panel

If you’re sick of walking the show floor and spending money, go to a panel. Most conventions have panels throughout the day discussing anything from who’s the greatest comic book artist to how to protect your intellectual property (naturally). There should be something you’ll find interesting.

Bonus tip: Bring a snack

You’ll be walking a lot, and you’ll likely be standing in a lot of lines. Convention food can get pricey, and healthy options are limited. Pack a small nutritious snack such as granola bars, nuts, fruit, or crackers to keep up your energy.

           The thing I love about conventions is the passion on display. People go to conventions because they love something that brought them there, be it a comic book, video game, movie, TV show, or wrestler. Take it all in, and make sure to have some fun.

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.