Contracts and Social Media Policies

            In light of the online uproar over the small publisher Alterna’s recent decision to enforce a social media policy against the creators whose works it publishes, now seems like a good time to talk contracts. The social media policy in question required creators who have work published by Alterna to refrain from using blockchains or other automated means on Twitter to block users from communicating with the creators.

            In general, when a publisher wants to publish your creator-owned work, you will sign a publishing agreement. This agreement will set forth the terms that govern your relationship with the publisher, such as how many issues might be published, how and when you will receive money from sales of your work, and, hopefully, when and how the contract will be terminated. It is also important to remember, in most cases, publishers are not the employers of those whose books they publish. The relationship between the publisher and the creator is contractual, and the contract governs the relationship between the publisher and creator.

            As I’ve written before, it is important to read and understand your contracts. In particular, one thing I’ve seen trip up people before is a reference in the contract to other terms, conditions, or policies that are not actually presented to you. It is up to you to seek them out and review them, and if you sign the agreement, then you are agreeing to them, whether you’ve read them or not. It is not something I have seen often in the comics publishing world, but it is prevalent in other industries.

            If the terms the publisher is trying to enforce against you were not originally agreed upon in the contract, then they are not part of your agreement. You do not have to agree to them. The original contract should still control your relationship. If the publisher is attempting to introduce and enforce new terms or conditions at a later date, then it should be considered a new agreement, or at least a modification to the original agreement requiring both parties’ consent.

            Frankly, a publisher attempting to enforce a policy that was not previously known or agreed upon has put themselves in a difficult position. The only real threat the publisher has is to terminate the publishing agreement, if they are contractually able to do so. Otherwise, the only options are to continue operating under the terms of the previous agreement, which renders their new policy moot, or attempt to get you to agree to the new conditions, which you don’t have to do. If it’s not clear that they can terminate the agreement without your consent, then the publisher potentially could be in breach of the agreement by threatening this course of action or otherwise taking a course of action harmful to the creator. The final option, and the one it appears a number of creators are exercising in this case, is to mutually agree to end the agreement.

            I harp on it a lot, but it is so important: make sure you understand your contracts and your legal rights. Instances like this, where a publisher introduces a new policy many of its creators may disagree with, are not common, but they do occur. By understanding the language in your contracts and your rights, then you can, hopefully, attempt to navigate the situation without too much damage to your work or your brand.

Book Review: Kirby: King of Comics

           Today marks the 101st birthday of Jack Kirby. Kirby, who passed away in 1994, was one of the most prolific comic book creators of his generation. With the popularity and endurance of the characters he created, his legacy reaches far into today’s comic book world. 

Originally published in 2008, Mark Evanier’s Kirby: King of Comics (Anniversary Edition) (affiliate link) received a revised version in 2017, which I recently finished reading. For those wanting to learn more about Kirby, it is a must read.

            The book tracks Kirby’s life from childhood, to his early jobs, through his career in comics, his death, and the legacy he left behind. It is well-written, easy-to-read, and features great Kirby art and anecdotes about the “King,” including an amusing anecdote about how he received that particular title.

            Of particular interest to me were the business and legal issues touched on by the book, particularly during his falling out with Marvel in the 1960s. As related in the book, Kirby was aware of the increasing value of his contributions to Marvel, and, at his wife’s suggestion, even stopped creating new characters for the company to exploit. He frequently tried to obtain a better deal for himself, but was put off or ignored.

When Marvel was sold to Perfect Film and Chemical Corporation, the company was intent on keeping Stan Lee, believing he was main catalyst of Marvel’s success, but it was unaware of and didn’t care about Kirby’s contributions. As Kirby and his lawyers pushed for a better deal, or any deal at that particular point, the new owners stopped responding. The lack of respect for his contributions and the absence of long-term commitments or recognition for his contributions were primary factors in Kirby’s move to DC comics.

            While tales of character ownership, contract disputes, and lawsuits pop-up in the book from time-to-time, the revised edition also includes a chapter on the Kirby family’s attempts to reclaim copyright ownership to some of characters Kirby created for Marvel. While it doesn’t get too far into the legal issues involved, it does track the thoughts and feelings of the family leading up to their filing the copyright termination notices necessary to reclaim ownership, the initial settlement talks, and Disney’s abrupt end to the settlement talks by filing a lawsuit to seek a declaration that the characters Kirby created were made as a work-for-hire. It succinctly tells how the Kirby family lost in the district court and the second circuit, with those courts agreeing that Kirby’s contributions were done as a work-for-hire, and it briefly discusses the attempt to get the case heard before the U.S. Supreme Court, which was rendered moot after Disney/Marvel and the Kirby estate finally settled the case.

            Two themes I took away from the book were Kirby’s desire to provide for his family, and his ability to see value in comics when others didn’t. His focus on providing for his family guided him through many of his career decisions, and it led him to seek new deals to properly reflect his contributions, which he didn’t always receive. When Marvel was sold in the ’60s, the book relates how Kirby felt the value placed on the company was too low, remarking that the character Ant-Man was worth more than what Marvel was sold for. As the book points out, Kirby recognized the potential value in the characters and stories. Time has shown the value of Kirby’s contributions to the world of comics and proved he was right.   

Kirby: King of Comics is a well-crafted biography written by a former assistant, and friend, to Jack Kirby and continues to be the definitive book on his life and legacy.

Update - Hasbro and DC's Bumblebee Trademark Lawsuit

           Last year, I wrote about Hasbro filing a trademark lawsuit against DC Comics. The dispute was about DC's Superhero Girls toys featuring the character Bumblebee, which Hasbro believed infringed on its Bumblebee trademark protecting its Transformers character. I’ve continued to follow the case, and as of August 14, 2018, less than one year after the lawsuit was filed, it appears the parties have settled the case.

            DC’s counsel, James D. Weinberger of the law firm Fross Zelnick Lehrman & Zissu, P.C., filed with the court a letter to request dismissal and stating the parties have reached a settlement in principle. Details of the settlement are not given.

            As I mentioned in my original post, it was unlikely this case would actually see trial or reach a decision on its merits. Since the settlement appears to be confidential, only the parties’ actions going forward will give us clues as to what was agreed upon. I look forward to patrolling the toy aisles to see if there are any apparent changes to the packaging or branding of DC’s Bumblebee toys in the near future. 

Why Creators Don't Want to Hear Your Idea

            In the wake of San Diego Comic-Con, I’ve been seeing creators on social media reminding their fans to not pitch them their ideas for stories. Why is this? Because they, and their employers, don’t want to be sued.

            While copyright infringement is probably the first thing you’d think of, those types of lawsuits have proven difficult for plaintiffs to win. In order to win a copyright infringement lawsuit, you must have a valid copyright in a work fixed in a tangible medium, and the complained-of work must be substantially similar to the plaintiff's. Those two elements usually trip up a would-be copyright lawsuit, particularly because the plaintiff’s “work” is not eligible for copyright protection because it’s merely an idea.

            Since copyright infringement is hard to win, plaintiffs have turned to suing under an implied-in-fact contract, or more generally, an idea theft lawsuit. Basically, the plaintiff claims they described and/or showed their work to the defendant with the expectation that if the work was used, they’d be compensated for it. Instead of basing the claim in copyright law, it is now based in contract law, and by using the plaintiff’s idea without compensation, the defendant breached the implied contract. These lawsuits have been easier for plaintiffs to get deeper into court proceedings than copyright infringement lawsuits, but they have not met with great success. More often than not, especially in Hollywood ones, the plaintiff eventually loses.

            Even so, studios and companies would prefer to not fight these lawsuits, and it’s just easiest to not accept unsolicited pitches. It’s the main reason most comic book publishers with established properties do not hear unsolicited pitches for their comics, and it’s a policy they encourage their creators to follow as well.

            While your story idea might be a good, or even a great one, the risk for a creator is too high for them to hear it.

Do Dr. Seuss and Fair Use (Comic)Mix?

            I’ve been following the Dr. Seuss versus Comic Mix case for a while. While the case is still ongoing, the Comic Mix website recently posted a plea for help. Comic Mix is starting to run out of money, and they are now seeking donations to continue defending the lawsuit.

           Comic Mix chose to publish a mash-up book using intellectual property it does not own, and involving an area of copyright and trademark law that is still not well-defined, and it now finds itself involved in a lawsuit that could help define the legal boundaries of fair use, mash-ups, and even fan art, for everyone else.

            Comic Mix’s plight is not atypical and brings up two points I’d like to discuss. First, fair use is a defense against copyright infringement claims. Second, defending your rights in the American legal system can be expensive and when you’re litigating a dispute in an area of law that is still being developed, your chances of winning are uncertain.

            As I’ve mentioned before, fair use is a strong defense to a copyright infringement claim. However, in order to avail oneself of it, you are probably going to be sued. Even though some courts have found the copyright statute to require copyright owners to consider whether fair use applies before filing an infringement lawsuit (see for example Lenz v. Universal Music Corp., 801 F.3d1126 (9th Cir. 2015), there have not been any cases, of which I’m aware, where the copyright owner has faced any adverse consequences for initiating a lawsuit.

            Even in the Lenz case, the court gives copyright owners leeway by stating they must have a “subjective good faith belief that the use was not authorized by law[,]” i.e., fair use. Basically, in my opinion, if an intellectual property owner believes you are infringing on their work, you are probably going to get sued if you don’t capitulate to their requests.

            No matter how great you think the chances are you will win your case, litigation is time-consuming and attorney’s fees can add up quickly. For the most part in the American legal system, each party pays their own fees. While there are some statutes that allow for a winning party to recover their attorney’s fees from the other party, it is not very common.

            One of the unfortunate side effects of the system is that it is safer and cheaper to not fight than to litigate a dispute, even if you believe you are in the right. I do applaud those people and companies that choose to fight. Without people willing to litigate cases, the boundaries of the law would not be explored and defined. Even when someone fights and loses, often society gains because the judicial decisions help shape and guide the decisions of others facing similar dilemmas.

            If you are interested in donating to assist Comic Mix, the link is here.    

           

Tarzan, John Carter, Trademarks, and the Public Domain

            A while ago, I posted an article I wrote about ways content owners might be able to protect public domain works. One of the scenarios I mentioned in my article, using trademark rights as a way to protect the work, was actually used against a comic book publisher a few years ago.

            In 2010, Dynamite Entertainment launched a few new comic books adapting Edgar Rice Burroughs stories that had passed into the public domain in the United States. The titles of the comics were Lord of the Jungle, featuring Tarzan stories, and Warlord of Mars, featuring John Carter stories.

            The Edgar Rice Burroughs estate, ERB, Inc., filed a lawsuit in 2012. One of the issues ERB asserted was that Dynamite’s titles for the new comics violated ERB’s trademark rights by selling comics bearing titles confusingly similar to those used by ERB. Even though the Dynamite comics did not mention the main characters’ names in the title, the titles Dynamite chose had been used as subtitles in the past. ERB also claimed Dynamite’s publication of the books diluted or damaged its brands, partially due to some risqué covers associated with the books, and Dynamite’s publication of the books would harm the comic book licensing deals it currently had in place with another publisher.

            Unfortunately, from a legal observer perspective, the case did not get very far. After a few initial filings, the parties settled the case. Interestingly, as part of the settlement, Dynamite ended up acquiring the license to publish Tarzan and John Carter comics that had previously been with another publisher.

            Even though we did not get a ruling that might have given us a better understanding of the interplay between public domain works and trademark law, I still find it an interesting case. It shows the importance of securing trademark rights to ongoing titles, and a possible way for content owners to retain some control over works that might fall into the public domain.

            Barring another extension of the copyright term, a number of early, high-profile comic books should fall into the public domain over the next 15-20 years, such as the first appearances of Superman, Batman, Captain Marvel/Shazam, and Captain America. As tempting as it might be to reprint or create derivative works based on these stories, anyone attempting to do so should consider if there any trademark risks in doing so. Particularly, if the character is still being published.    

Trademark FAQs

A while back I did a FAQ on many of the copyright questions I receive. It’s about time to do one on trademarks as well.

Note: This is not a complete list of everything you need to know about trademarks, but a few commonly asked questions I receive.

1) Do I need to register a trademark?

If you think the trademark is vital to your brand or organization, then registering it with the U.S. Patent and Trademark Office (USPTO) makes sense—this is known as a federal trademark. But, only do so if you are using it in interstate commerce and plan on continuously using it. Sales of product in interstate commerce and continued use are requirements to maintaining federal trademark protection. If you are using a trademark without registering it, you have what are known as common law rights, but it can be difficult to establish and protect those rights. Registration with the USPTO is the best way to prove and enforce your rights.

2) Can I register a comic book title as a trademark?

Yes, so long as you continue publishing the comic book as an ongoing series under the same title. Again, continued use is key to maintaining a trademark. Because of this requirement, titles of books or one-shots are not eligible for trademark protection.

3) How much does it cost to register a trademark?

It costs between $225-275 per class of goods/services to file a trademark registration. Depending on how it’s filed, the number of classes of goods/services selected, and if it encounters any issues during the registration process, the costs of registration could increase. If you’re using an attorney or a service to assist you in registering the trademark, those fees will be separate. Once registered, there are additional fees to maintain your trademark registration.

4) Are there other trademark registration options?

You can try and register your trademark in the state in which you reside. It will be cheaper, but only grants you trademark rights in that state.

5) Can’t I just put a ® next to my title?

No, the ® designation is reserved only for trademarks registered with the U.S. Patent and Trademark Office. Unregistered trademarks may be designated with a “TM,” but it does not grant you any special rights.

If you’d like to read more about trademarks, check out my previous post in my Comics Startup 101 series.