Monday, July 25, 2016

Comics Startup 101 - The Infringement of Others' Intellectual Property - Part III, Copyright

Comics Startup 101: Legal and Business Tips for the Independent Comics Creator
Part 9: The Infringement of Others' Intellectual Property - Part III, Copyright

           This post is part of a series that grew out of my Comics Startup 101 panel I presented with comics creators at various comic book conventions around the Midwest. You can find the first post discussing doing a clearance search here, the second post discussing choosing a business entity here, the third post discussing contracts (part I) here, the fourth post discussing contracts (part II) here, the fifth post discussing an overview of intellectual property here, the sixth post discussing ways to protect your intellectual property here, the seventh post discussing infringement of the right of publicity here, and the eighth post discussing the infringement of another's trademark rights here. Today, we'll discuss copyright infringement lawsuits involving Superman.
           As always, I must disclaim that this is not meant to be an in-depth guide, nor is it meant to be complete legal advice. Any information provided in these posts is general in nature and should not be relied upon as legal advice. Meaningful legal advice cannot be given without a full understanding of all relevant facts relating to an individual’s situation. As such, you should consult with an attorney for specific legal advice that you might need.

The Infringement of Others’ Intellectual Property – Part III, Copyright
In the last two posts, we discussed DC being sued for right of publicity and trademarkinfringement. The final set of cases we’ll discuss in the Comics Startup 101 series also involve DC Comics. However, this time they are the ones doing the suing.
The first case is a precursor to the Captain Marvel case I discussed previously. In Detective Comics, Inc. v. Bruns Publications, Inc., et al., DC sued Bruns because it believed its Wonder Man character infringed on DC’s Superman copyrights.[1]  The court found that Wonder Man did infringe on DC’s copyrights due to the fact they are both “a man of miraculous strength and speed[,]” the “antics” of both characters are “closely similar[,]”  each hides their identity “beneath ordinary clothing” and when removed stands in “skintight acrobatic costume[,]” each is shown crushing a gun in his hand, each is “termed the champion of the oppressed[,]”  each is pictured stopping bullets, each are “endowed with sufficient strength to rip open a steel door[,]” and “[e]ach is described as being the strongest man in the world and each as battling against ‘evil and injustice.’”[2] Of particular note in this case is the court’s statement that even though Superman might be derivative of a Hercules, or other “heroes of literature and mythology[,]” since the Superman comics “embody an original arrangement of incidents and a pictorial and literary form” they are subject to copyright protection.[3] The court stated, “So far as the pictorial representations and verbal descriptions of ‘Superman’ are not a mere delineation of a benevolent Hercules, but embody an arrangement of incidents and literary expressions original with the author, they are proper subjects of copyright and susceptible of infringement because of the monopoly afforded by the act.”[4]  After winning this case and establishing their copyright interests in protecting Superman, and proving that a comic book character can be subject to copyright protection, DC initiated the lawsuit against Fawcett over Captain Marvel.
After their two successful attempts protecting their Superman copyrights in the ’40s and ’50s, DC tried again to sue under this theory in the ’80s. They believed the television show The Greatest American Hero infringed on their copyrights to Superman.[5] Part of what appears to have prompted the dispute was that after the success of Superman: The Movie, ABC sought to license Superboy for a television series.[6] After failing to secure a license, ABC created a television series about a normal guy who becomes a superhero.[7] The television series “contain[ed] several visual effects and lines that inevitably call Superman to mind, sometimes by way of brief imitation, sometimes by mention of Superman or another character from the Superman works, and sometimes by humorous parodying or ironic twisting of well-known Superman phrases.”[8] The character also had powers similar to Superman’s.[9] However, the court found that the lead character in The Greatest American Hero did not infringe DC’s right to Superman because the way he looks and acts “marks him as a different, non-infringing character who simply has some of the superhuman traits popularized by the Superman character and now widely shared within the superhero genre.”[10]
Our lesson from the Wonder Man and The Greatest American Hero cases: any similarities to an existing character could leave you susceptible to an infringement lawsuit. Personally, I believe that over the years courts have become more adept at analyzing the differences and similarities between characters in a way that promotes creation, which partially explains the different outcomes DC obtained in the Wonder Man and Captain Marvel cases and the result in The Greatest American Hero case.
The end?
This post brings to an end my initial series of Comics Startup 101 posts. I hope you enjoyed reading them as much I enjoyed writing them. Fear not, there will still be plenty of useful posts in the future dealing with similar topics.   
Do not let anything contained in these posts frighten you from making your works. The intent is not to frighten you, but to educate you about possible problems that could arise. None of the things we discussed should scare you away from making the comic book you want to make. Even though I barely scratched the surface of the issues you will need to be aware of as you start your business, I believe I have given you a great base of knowledge with which to proceed forward.
As you start your career making comics, keep in mind the topics and lessons we discussed. If you choose to start another type of business, the lessons learned here should still prove useful. These issues are universal to most businesses, and understanding them and learning from them will help keep you and your business out of trouble.




[1] Detective Comics, Inc. v. Bruns Publications, Inc., 111 F.2d 432, 433 (2nd Cir. 1940).
[2] Id.
[3] Id.
[4] Id. at 433-34.
[5] Warner Bros., Inc. v. American Broadcasting Companies, Inc., 720 F.2d 231, 238 (2nd Cir. 1983).
[6] Id. at 236.
[7] Id.
[8] Id. at 237.
[9]Id.
[10] Id. at 243.

Monday, July 18, 2016

Comics Startup 101 - The Infringement of Others' Intellectual Property - Part II, Trademark

Comics Startup 101: Legal and Business Tips for the Independent Comics Creator
Part 8: The Infringement of Others' Intellectual Property - Part II, Trademark

           This post is part of a series that grew out of my Comics Startup 101 panel I presented with comics creators at various comic book conventions around the Midwest. You can find the first post discussing doing a clearance search here, the second post discussing choosing a business entity here, the third post discussing contracts (part I) here, the fourth post discussing contracts (part II) here, the fifth post discussing an overview of intellectual property here, the sixth post discussing ways to protect your intellectual property here, and the seventh post discussing infringement of the right of publicity here. Today, we'll discuss the infringement of another's trademark rights.
           As always, I must disclaim that this is not meant to be an in-depth guide, nor is it meant to be complete legal advice. Any information provided in these posts is general in nature and should not be relied upon as legal advice. Meaningful legal advice cannot be given without a full understanding of all relevant facts relating to an individual’s situation. As such, you should consult with an attorney for specific legal advice that you might need.


The Infringement of Others’ Intellectual Property – Part II, Trademark
In my last post, I discussed the Winter brothers case, where DC Comics was sued for violating the musicians’ right of publicity. DC Comics was also sued for trademark infringement because of the origin story of their character Flex Mentallo. Charles Atlas, Ltd. ran well-known advertisements in comic books, including DC comic books, advertising their bodybuilding courses.[1] One of the well-known ads was a one-page comic strip story that shows a character named Mac being bullied.[2] Mac then takes the Atlas course, finds the bully and punches him, and “receives newfound respect, particularly from his female companion” and becomes the “hero of the beach.”[3]
In a 1992 issue of Doom Patrol, Flex Mentallo and his secret origin are introduced.[4] Mentallo’s origin story “explicitly mirrors the storyline of plaintiff's comic ad.”[5] The court noted that the story replicates key artwork and dialogue from the ad, and Mentallo wears swim trunks similar to those worn by Charles Atlas in his photographs that appear alongside the ad.[6] However, the comic continues by showing Flex Mentallo beating up the woman he was with and telling her “I don’t need a tramp like you anymore!”[7] When the Charles Atlas company discovered the character a number of years later, it eventually sued DC.[8] At the time of the lawsuit, the comic book issue in question, Doom Patrol #42, had not been republished or redistributed since its initial publication.[9] However, the Flex Mentallo character did appear in some subsequent issues of Doom Patrol and a miniseries.[10] After it received a cease-and-desist letter from Charles Atlas’ attorney, DC cancelled plans to distribute “a 1998 trade paperback that would have included the Flex Mentallo character[,]”[11] while also stating that they have “no present plans to reprint or redistribute any of the Doom Patrol issues in the Flex Mentallo series.”[12] DC prevailed in the lawsuit on a number of different legal grounds, but Flex Mentallo has not been used much since. However, in recent years, DC has republished the trade paper backs of Doom Patrol and the Flex Mentallo miniseries.[13] DC is also launching a new Doom Patrol title in late 2016 that looks like it might feature Flex Mentallo, almost two decades since his last appearance.[14]
Our lesson from the Flex Mentallo case: even if you think you are in the right, and you win your case, you still might be denied the use of a character you create if another person or entity believes it infringes their rights and is willing to sue over it. A court found the Flex Mentallo character to be protected under the First Amendment,[15] and it found there was not a likelihood of confusion between the Flex Mentallo character and Atlas’ ad.[16] However, one of the factors that seemed to sway the judge on the likelihood of confusion of the trademark claim was DC’s representations “that it has no intention to use the Flex Mentallo character again[.]”[17] Additionally, one of the issues DC prevailed on was that Atlas waited too long to file the lawsuit, and the claims arising from Doom Patrol #42 were barred by the statute of limitations.[18] Based on that particular issue, republishing or reissuing this comic could give rise to a new claim for trademark infringement against DC. Even though DC won the case, they have been hesitant to continue exploiting the character. We do not know if there was a settlement between the parties restricting DC’s use of Flex Mentallo, or if DC was hesitant to use the character so as to avoid having to fight another lawsuit over Flex Mentallo. We do know that DC let twenty years pass before Flex Mentallo was set to reappear in an original comic book story after this lawsuit.[19] 


Next week: The last post in the Comics Startup 101 series -- part III of intellectual property infringement.


[1] Charles Atlas, Ltd. v. DC Comics, Inc., 112 F.Supp.2d 330, 331-32.
[2] Id. at 331.
[3] Id.
[4] Id. at 332.
[5] Id.
[6] Id.
[7] Id.
[8] Id. at 333.
[9] Id. at 332.
[10] Id.
[11] Id. at 333.
[12] Id.
[13] Weldon, Glen, New Year, New Changes; Also, FLEX MENTALLO! HERO OF THE BEACH!, Jan. 5, 2011, NPR.com, http://www.npr.org/sections/monkeysee/2011/01/05/132672533/new-year-new-changes-also-flex-mentallo-hero-of-the-beach (last visited April 25, 2016).  See also Cronin, Brian, Comic Book Legends Revealed #284, Oct. 29, 2010, http://goodcomics.comicbookresources.com/2010/10/29/comic-book-legends-revealed-284/ (last visited April 25, 2016).[14] Arrant, Chris, Doom Patrol Leads New DC Imprint by Gerard Way, April 07, 2016, Newsarama.com, http://www.newsarama.com/28744-doom-patrol-leads-new-dc-imprint-by-gerard-way.html (last visited June 27, 2016).
[15] Charles Atlas, Ltd., 112 F.Supp.2d at 339.
[16] Id. at  340.
[17] Id.                         
[18]Id. at 334.
[19] Arrant, Chris, Doom Patrol Leads New DC Imprint by Gerard Way, April 07, 2016, Newsarama.com, http://www.newsarama.com/28744-doom-patrol-leads-new-dc-imprint-by-gerard-way.html (last visited June 27, 2016).

Monday, July 11, 2016

Comics Startup 101 - The Infringement of Others’ Intellectual Property – Part I, Right of Publicity

Comics Startup 101: Legal and Business Tips for the Independent Comics Creator
Part 7: The Infringement of Others' Intellectual Property - Part I, Right of Publicity

           This post is part of a series that grew out of my Comics Startup 101 panel I presented with comics creators at various comic book conventions around the Midwest. You can find the first post discussing doing a clearance search here, the second post discussing choosing a business entity here, the third post discussing contracts (part I) here, the fourth post discussing contracts (part II) here, the fifth post discussing an overview of intellectual property here, and the sixth post discussing ways to protect your intellectual property here. Today, we'll discuss the infringement of others' intellectual property.
           As always, I must disclaim that this is not meant to be an in-depth guide, nor is it meant to be complete legal advice. Any information provided in these posts is general in nature and should not be relied upon as legal advice. Meaningful legal advice cannot be given without a full understanding of all relevant facts relating to an individual’s situation. As such, you should consult with an attorney for specific legal advice that you might need.

The Infringement of Others’ Intellectual Property – Part I, Right of Publicity
            You’ve done your clearance search, and you’ve started your comic. You’re in the clear, right? Not necessarily. Even though you may think you’re clear, it is possible someone may believe that you are still infringing on their intellectual property. If this happens, you will most likely receive a cease and desist letter from an attorney threatening you with legal action and demanding you stop the infringing activity, provide an accounting of money earned, and all sorts of other nasty sounding language. It is important that you do not ignore this letter. When you receive a cease and desist letter, immediately take it to your attorney. Your attorney will be able to evaluate the merits of the demands being made and guide you in how to respond. Failing to take a cease and desist letter seriously could worsen the situation and escalate the problem.
            In previous posts, I’ve mentioned and discussed a few notable cases from the comic book world, some of which involve infringement of intellectual property. Now, we’ll highlight a few more lawsuits dealing with infringement of intellectual property that are interesting and informative.
            The first two cases we’ll look at both involve the right of publicity. The first case involves DC Comics and the singing duo the Winter brothers. In the 1990s, two new characters were introduced to the Jonah Hex miniseries named Johnny and Edgar Autumn.[1] The Autumn brothers were depicted with “pale faces and long white hair.”[2] The Winter brothers, musicians known for their distinctive albino-like appearance, sued because they felt their names and likenesses were being used and falsely portrayed them as “‘vile, depraved, stupid, cowardly, subhuman individuals who engage in wanton acts of violence, murder and bestiality for pleasure and who should be killed.’”[3] The court decided for DC Comics and found that the comics containing the Autumn brothers “do contain significant creative elements that transform them into something more than mere celebrity likenesses.”[4] Our second case once again involves Todd McFarlane and was decided at about the same time as the Winter brothers case. In McFarlane’s Spawn comic book series, he introduced a character named Anthony “Tony Twist” Twistelli.[5] The Spawn character “is a Mafia don whose list of evil deeds includes multiple murders, abduction of children and sex with prostitutes.”[6] In the letters columns of Spawn and in an interview in Wizard Magazine, McFarlane acknowledged that the “Tony Twist” character was named after the NHL player Anthony “Tony” Twist.[7] During trial, evidence was introduced that McFarlane marketed Spawn to hockey fans by producing “hockey pucks, hockey jerseys and toy zambonis” bearing the Spawn logo.[8] McFarlane “sponsored ‘Spawn night’ at a minor league hockey game, where McFarlane personally appeared and distributed Spawn products, including products containing the ‘Tony Twist’ character.”[9]  The court found that McFarlane’s use of Tony Twist’s name “was predominately a ploy to sell comic books and related products rather than artistic or literary expressions,” and was therefore a violation of Twist’s right of publicity.[10] After a second trial on these issues, a jury awarded Twist $15 Million in damages.[11] It was later reported that the case was settled for $5 million.[12]
            What can you take away from the Winter brothers and Tony Twist cases? Be careful when you choose to use someone’s likeness in your comic. Even if you think it is a parody, entitled to fair use, or protected by the First Amendment, it could still lead to a long, costly legal battle with an outcome that can be very uncertain. As I’ve stated before, the right of publicity varies from state to state, and the primary difference between the two outcomes in these cases hinged on the tests the state courts decided to apply.
Next week: Part II, Trademark



[1] Winter v. DC Comics, 134 Cal.Rptr.2d 634, 637-38. (Cal. 2003).
[2] Id. at 637.
[3] Id. at 638.
[4] Id. at 637.
[5] Doe v. Tci Cablevision, 110 S.W.3d 363, 366 (Mo. 2003).
[6]Id.
[7] Id. at 366-67.
[8] Id. at 367.
[9] Id.
[10] Id. at 374.
[11] Doe v. McFarlane, 207 S.W.3d 52, 56 (Mo. App. 2006).
[12] ICv2.com, ‘Twist Case Settled,’ Feb. 18, 2007, http://icv2.com/articles/comics/view/10104/twist-case-settled (last visited April 22, 2016).

Thursday, July 7, 2016

ComixLaunch Podcast

            I want to thank Tyler James for having me as a guest on his ComixLaunch podcast. We had a great discussion about contracts, Kickstarter, and other legal issues comic book creators might face. Here’s the link:  http://www.comixlaunch.com/session051/. Give it a listen. 
            Also, if you want to know more about navigating successful Kickstarter and crowdfunding campaigns for your comic book, you should probably be listening to this podcast series. 

Tuesday, July 5, 2016

Comics Startup 101 - Protecting Your Intellectual Property

Comics Startup 101: Legal and Business Tips for the Independent Comics Creator
Part 6: Protecting Your Intellectual Property

           This post is part of a series that grew out of my Comics Startup 101 panel I presented with comics creators at various comic book conventions around the Midwest. You can find the first post discussing doing a clearance search here, the second post discussing choosing a business entity here, the third post discussing contracts (part I) here, the fourth post discussing contracts (part II) here, and the fifth post discussing an overview of intellectual property here. Today, we will discuss ways to protect your intellectual property.
           As always, I must disclaim that this is not meant to be an in-depth guide, nor is it meant to be complete legal advice. Any information provided in these posts is general in nature and should not be relied upon as legal advice. Meaningful legal advice cannot be given without a full understanding of all relevant facts relating to an individual’s situation. As such, you should consult with an attorney for specific legal advice that you might need.

Protecting Your Intellectual Property
1)      Copyright
            As I mentioned in the Intellectual Property Overview post, a copyright is any “original works of authorship fixed in any tangible medium of expression.”[1] The comic that you are creating, when finished and offered for sale, is a copyrighted work, and the entire work is protected under U.S. copyright law.
            An important decision will need to be made about if and when you want to apply for copyright registration with the U.S. Copyright Office. You may register a copyright at any time. However, you must register it within three months of its first publication in order to be granted full copyright protection, including statutory damages. If you register a work after this time-frame, you are only entitled to actual damages. The cost to register a copyright can vary from as little as $35 to as much as $85 or more, depending on the work you are seeking to register and depending on the method you choose to register, i.e., electronic versus paper registration. If you can afford to register your work with the Copyright Office, it is best to do so as soon as the work is published. 
2)      Trademark
            When starting your new business and comic, you may be creating trademarks. If you have adopted a business name, it might be a trademark. For example, Marvel,[2] DC,[3] Image,[4] and Top Cow,[5] all are registered trademarks.
            In addition to your business, the title of the comics you are publishing may be entitled to trademark protection. Some recent examples of trademarked titles from Robert Kirkman’s stable of comics include The Walking Dead,[6] Thief of Thieves,[7] and Super Dinosaur.[8]
            If your comic becomes successful enough that you start to produce merchandise bearing your creations, then you may be able to register additional trademarks associated with those goods. For examples, see the discussion of the Superman trademark registrations in the Intellectual Property Overview post. 
            As stated above, you may register a trademark with the USPTO at any time. Before you start publishing your comic, you may also file an intent-to-use application to reserve your rights to your prospective trademarks. You may also file at any time after you have begun to use the trademark in commerce. Keep in mind, however, that federal trademark registrations can be costly. The filing fee per class of goods or services is $325 or higher, and there are additional fees for the renewals of your trademark.[9] This is in addition to any attorney fees you may encounter, and if there are issues registering your trademark, the cost could escalate even higher.
3)      Domains
            Generally speaking, domain names are not considered intellectual property, but I believe they play an important role in today’s intellectual property protection and enforcement strategies. In my post on doing a clearance search, I mentioned that you should check domain registries as part of your clearance search. This will help identify possible existing conflicts. At the same time, if you are committed to using the names you have selected for your comic and your business, this is a great time to lock up those domains. You do not want someone else coming along later and registering a domain using the name of your comic or business. While it is possible to challenge a later registration, it can be costly, time-consuming, and it is not always possible to recapture a domain. If you can afford it, it is best to spend the money early and secure the domain name rights to the names you are planning to use for your comic and your business.



[1] 17 U.S.C. §102(a).
[2] Trad. Reg. No. 0870506, Registered June 3, 1969.
[3] Trad. Reg. No. 1003409, Registered January 28, 1975.
[4] Trad. Reg. No. 1884871, Registered March 21, 1995.
[5] Trad. Reg. No. 2120058, Registered December 9, 1997.
[6] Trad. Reg. No. 4443715, Registered December 3, 2103.
[7] Trad. Reg. No. 4430107, Registered November 5, 2013.
[8] Trad. Reg. No. 4149779, Registered May 29, 2012.
[9]See Trademark Processing Fees, USPTO, http://www.uspto.gov/learning-and-resources/fees-and-payment/uspto-fee-schedule#TM%20Process%20Fee (last visited April 21, 2016).