Trademarking a She-Hulk

             It’s a rare occasion when a MCU movie or TV show covers something that I feel like commenting on here, but a recent She-Hulk episode covered an interesting area of trademark law, and I think it warrants a bit of my commentary, particularly since I have encountered this situation before.

            In episode 5, “Mean, Green, and Straight Poured in to These Jeans”, Jen Walters, aka She-Hulk, finds herself in a trademark lawsuit. Her nemesis, Titania, has obtained a trademark for the name SheHulk and is using it to promote a line of beauty products. Titania has sued Walters to prevent her continued use of the She-Hulk name. Eventually, Walters is able to prevail in the lawsuit because she had embraced the She-Hulk name, and was identified by it, before the trademark lawsuit.

            Overall, the story reached the correct outcome, but I still have a few quibbles. Assuming this is a federal trademark, it didn’t feel like enough time had passed for Titania to have obtained a trademark registration, or even an approved application that would be enforceable. I’m willing to let that pass because I have no idea how much time has passed in continuity from the emergence of She-Hulk to the events in the current episode. Additionally, it is far more likely this would have been resolved at the trademark office than in a court, but that wouldn’t make compelling TV.

My biggest gripe is that Titania’s trademark application likely never would have gotten that far. In the United States, someone cannot register the name of a living person as a trademark without their consent. The relevant statute states:

             No trademark by which the goods of the applicant may be distinguished from the goods of                     others shall be refused registration on the principal register on account of its nature unless it—             …

 (c) Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent….[1]

 Further, this has been extended to also protect shortened names, pseudonyms, stage names, and nicknames.[2]

It is highly unlikely that Titania would have been able to obtain an approved trademark registration over the She-Hulk name. It is common practice for trademark examiners to conduct a basic search, and such a search would have shown the existence of She-Hulk, unless Titania had registered the trademark before there was a She-Hulk. If the examiner discovered someone identifying as She-Hulk, the application would have been rejected, unless the applicant, in this case Titania, could provide evidence that she had the right to seek registration.

Admittedly, sometimes an examiner might mess up and allow a trademark to register that shouldn’t, but I find it hard to believe it would occur in this instance. I have recently encountered something similar, but in a different jurisdiction. An attempt to register a character’s name as a trademark was initially refused because the examiner believed the character to be an actual person.

Interestingly, once a name has been registered as a trademark, then it can be sold and/or transferred, and it is entirely possible the person can no longer use their name as a trademark. This is fairly common in the fashion industry where a designer will launch a clothing line under their name, sell the company, and once they’ve left the company, try to launch a new brand. If they launch a new brand, they cannot use their name as the name of their new product line. For examples, look to Halston, Christian LeCroix, and John Galliano.

As stated above, the eventual outcome on the show was correct. Titania could not usurp the She-Hulk name without her consent, and, evidence of She-Hulk being identified as a person before Titania’s trademark would have been necessary to prevail. Nevertheless, this still proves the importance of maintaining control over one’s own trademarks, and if you are conducting commerce using your name, it might make sense to seek a trademark, and if you sell your company, be certain what intellectual property assets are being transferred.

---

[1] 15 U.S.C. Sec. 1052.

[2] See Trademark Manual of Examining Procedure,  Sec. 1206.1.

Review: Milestone Generations

 

I recall when Milestone comics first came out buying quite a few of them. They were cool, new, and dynamic. At the time, I do not think I realized the significance of the company, or that it was separate from DC. However, I did go all-in on the World’s Collide crossover and managed to piece together a giant poster that was taped to my wall —unsuccessfully—for at least a year. So, I was very interested in the new Milestones Generation documentary on HBOMax. Unfortunately, it left me wanting more.

Part of my issue with the documentary is that it felt more like a puff piece than a serious documentary. Being sponsored by Ally, which was mentioned heavily in the final minutes, definitely contributed to the feeling that this was a light documentary made on behalf of a corporation and primarily promoting a relaunch. It also ran a brisk 50 minutes or so, which doesn’t lend itself to a deep dive into the subject matter.

Milestone was an important publisher in comic book history. It was established by African Americans, and it had a diverse lineup of characters. Personally, I would have loved to see a bit more introspection on the launch of the company, the reasons for its failure in the ‘90s, and what it was doing between the ‘90s and now. It had interviews with many of the people who worked there in the ‘90s, and some academics to provide historical context, but it was lacking in interviews of modern creators inspired by the line. I feel like that was a missed opportunity.

Overall, it was still enjoyable to watch, and it is a worthwhile watch for anyone unfamiliar with Milestone comics.  

Book Review: The Business of Independent Comic Book Publishing

            I recently had the pleasure of reading a complimentary copy of Gamal Hennessy’s The Business of Independent Comic Book Publishing. As the name suggests, it is a business-oriented look at the comic book publishing process, and Hennessy draws from other sources, both inside comic publishing and outside, to create a useful guide. It is at times both encouraging and discouraging, but it is a beneficial book to anyone wanting to make their own comics.         

            In The Business of Independent Comic Book Publishing, Hennessy lays out the basics someone would need to know to self-publish their own comic book. It is a step-by-step guide that will help someone go from idea to published product and beyond. Along the way, the reader will learn the basics of business, production, distribution, marketing, sales, and many other relevant and helpful topics. He also includes many useful guides and forms creators can consult and use during the process of publishing their comics. Focusing more on the business-related issues in comic book publishing, it is not a guide to assist with creative aspects of your book.

            Hennessy is forthright in his commentary. He seeks to support and inspire aspiring creators, but he acknowledges the difficulties in financially succeeding in the industry. He highlights many of the areas where aspiring creators might encounter problems, and he provides sound advice with how to deal with, or avoid, those types of situations. Anyone following the steps laid out in the book will likely position themselves well to commercially exploit their comic—if their comic can find the right audience.

            Overall, The Business of Independent Comic Book Publishing is a worthwhile read, but it is best-geared toward those new creators who have little-to-no understanding of how to make a business work or to sell a product.

Affiliate link below.

Copyright and LLCs

 

            Something I have seen discussed in the general entertainment realm, but less so in comics is the use of loan-out companies or LLCs and the implications on copyright. As I believe this is a valuable topic, I want to briefly touch on the issues below.

            For those unfamiliar with the concept, a loan-out company is when a person, usually a creative individual, forms a company. This company then hires the performer, and contracts their services out to other companies. It is primarily done to lower the ultimate tax burden on the creative. However, because the company is hiring the creative, the creative could be considered an employee of the creative’s company. This might have serious implications on the copyright status of any works created.

            As a brief reminder, copyright protection initially vests in the author of the work.[1] If the work is being created as a work-made-for-hire, then the initial owner of the work would be the person or entity for whom the work was prepared.[2] A work-for-hire is a work created by an employee, or a work created pursuant to a written agreement and falling within one of the nine categories of works specified in the Copyright Act.[3] (Click the link for a more detailed summary of work-made-for-hire.)

            If a work is not a work-made-for-hire, then the length of copyright protection for works created after 1978 is typically the life of the author plus 70 years.[4] If the work is a work-made-for-hire, then the term of copyright protection for works created after 1978 is “95 years from the year of its first publication, or a term of 120 years from the year of its creation, whichever expires first.”[5] The 1976 Copyright Act also that an author can terminate a transfer of copyright 35 years after the date of the transfer, or publication of the work.[6] However, the right to terminate a transfer does not apply to a work-made-for-hire.[7]

            If a creator is using an LLC or other type of company to hire out their services, then they could be inadvertently impacting their copyright rights. They may be changing the term of copyright protection for the work, and they may be removing their ability to reclaim a work after it has been assigned pursuant to the transfer termination provision mentioned above.

            It is important for creator’s considering utilizing a corporate entity for their work to consult with both their accountant and a copyright lawyer. By doing so, the creator might be able to craft a plan to utilize the tax benefits while also protecting their copyright rights.

---

[1] 17 U.S.C. §201(a)

[2] 17 U.S.C. §201(b)

[3] 17 U.S.C. §101

[4] 17 U.S.C. §301(a)

[5] 17 U.S.C. §301(c)

[6] 17 U.S.C. §203(a)(3)

[7] 17 U.S.C. §203(a)

Pixels & Panels Podcast Interview

     With what little free time I have lately, I have been working on a long article on a specific area of copyright law. I could have whipped up a quick post that what have likely been a rehash of something I've written before. Instead, I'll leave you with a link to a recent podcast interview I did. I hope you enjoy.

https://podcasts.apple.com/mx/podcast/13-what-does-a-comic-lawyer-do-and-why-do-you-need/id1591270391?i=1000558630458

Book Review: Words for Pictures

 

            I recently read Brian Michael Bendis’ Words for Pictures (affiliate link). It was a well-written and informative book. It is a must for any aspiring comic book creator, particularly writers.
            This book has been on my list to read for some time, but I kept putting it off until multiple people recommended my reading it. I was worried it wouldn’t be relevant to my interests, as I thought it would be primarily focused on the craft of writing, working with artists, and making comics. To my pleasant surprise, Bendis included an entire chapter on the business of comics, which touched on some major legal issues.
            In Chapter 6, Bendis included an interview with his wife Alisa, who runs their company. This section includes many nuggets of great advice, including some great information on important contractual terms. One piece of advice that really spoke to me, besides hire a lawyer, was to treat each of your projects as if they will be big successes and plan and negotiate accordingly. Even though I write and talk about many of the topics they discuss in this chapter, it was refreshing to see it from a different perspective.
            Creators, new and old, will definitely benefit from reading the book, but I urge readers to pay attention to chapter 6. If you won’t take my advice, I hope you’ll at least listen to Alisa and Brian Bendis.

Top 5 Questions to Answer Before Signing a Creator-owned Contract

 

        This year marks the 30^th anniversary of Image Comics. As most of the readers of this blog should know, Image Comics was formed when a group of top Marvel artists decided they wanted to strike out on their own and reap the rewards of owning the characters they created. To this day, I still believe that the main line of Image Comics is the truest version of creator-owned comics. Image takes a reasonable fee for publishing the book, and it doesn’t take a creator’s media rights. In honor of Image’s anniversary, below are some of the key I think creator’s should answer when evaluating a creator-owned deal.

 

1) How long is the deal?

This is often called the Term in a contract. The Term of an agreement can vary. Sometimes, it can be a set number of years. Sometimes, it can be tied to the length of a series. Sometimes, a publisher can ask for the rights to last indefinitely. It is important to know how long your work could be tied up by a publisher. I am strongly of the opinion that a publishing contract should have a defined end date. If it does, make sure you are comfortable with how long it is. If it doesn't, then you need to see point 2 below.

 

2) How and when do the rights revert?

This can fall under both termination rights and reversion. Are there clear instances where you can terminate the agreement if the publisher takes, or doesn’t take, certain actions? For example, if the publisher goes out of business or stops publishing comics, can you terminate the agreement? If the publisher doesn’t release your work within a certain period of time, can you terminate the agreement? These are all important. Additionally, you’ll want to make sure that at some point, either via termination or a reversion clause, the rights to your work revert to you. This is particularly important if there is not a defined Term to the publishing agreement.

 

3) How much are you being paid?

Are you receiving an advance? What’s the royalty percentage? How often are you being paid? All of these should be considered when you are evaluating whether a publishing agreement is right for you.

Pay attention to what percentage the publisher is taking from sales of the book and any other rights they might have. Also, pay close attention to what they are recouping before paying you your percentage. Most deals are structured in a way where the publisher will earn back any money it has spent in connection with publishing and distributing your book, once those fees are recouped, there might not be much left for your split of the profits.

 

4) What rights are you giving up?

Be wary of what you are giving up. Some publishers like to bill themselves as creator-owned or creator-friendly, but they still try to take all of your rights and leave you with no control over your work.

Also, I’ve talked about this before, but I’m strongly of the belief that publishers should only get publishing rights. However, more and more creator-owned publishers are demanding the ability to profit from a comic’s media rights as well. You will need to carefully evaluate whether this makes sense for your work, and if you are comfortable giving up whatever control the publisher may ask for.

 

5) What does the publisher bring to the table?

Are they paying you? Are they a top publisher who can substantially expand your reach? Do they have a history of launching and promoting successful books? Can they actually help you shop and/or exploit your media rights? In today’s world where it has never been easier to self-publish quality comics, it is important to evaluate what a publisher can do you for you.

 

While these are not all of the things you should watch out for, these are some of the top things I look for while evaluating a contract. You should carefully weigh pros and cons of working with a particular publisher before signing a contract, and taking into consideration these points will help.