Monday, February 11, 2019

DeCarlo and Archie Comics - Part 1

            I never read Archie Comics when I was younger. My gateway into comic books was through Superman, the X-Men, and the launch of Image Comics. Recently, partly owing to my family’s obsession with Riverdale, I’ve started reading Archie comics—both new and old. As such, I was unaware of much of the history and circumstances concerning the creation of Archie characters and had overlooked the litigation between Dan DeCarlo and Archie Comics in the early 2000s.
            DeCarlo worked for 40 years as an artist at Archie Comics, helped create and define the classic, iconic look of many of the characters, and helped create the characters Josie and the Pussycats, Sabrina the Teenage Witch, and Cheryl Blossom.[1] In the late 1990s and early 2000s, as Archie exploited some of these properties in TV and movies, DeCarlo filed a lawsuit asserting his right to ownership.
            The first lawsuit, DeCarlo v. Archie Comic Publications, Inc.,[2] sought to assert DeCarlo’s rights to Josie and the Pussycats. In this suit, DeCarlo claimed that he was solely responsible for creating the characters, and he granted Archie Comics the right to use the characters in comic books and strips, which they subsequently breached by licensing the characters outside of comic books and comic strips and asserting ownership. His attorneys initially filed the lawsuit in state court alleging various breach of contract claims and other contract and state-based claims, but it was transferred to federal court because the main elements of the lawsuit arose under copyright law.
The court found that DeCarlo had waited too long to pursue some of the claims, i.e., the statute of limitations had run out, and his failure to do so in a timely manner had caused harm to Archie Comics because it relied upon his lack of ownership claims to its detriment, which is known as equitable estoppel. DeCarlo had actual knowledge of Archie licensing the works outside of comics and asserting ownership claims in the ’60s and ’70s. Additionally, DeCarlo signed agreements in 1988 and 1996 that seemingly assigned all rights he may have had in his previous works to Archie Comics. As such, the lawsuit was dismissed.
The second lawsuit, Archie Comic Publications, Inc. v. DeCarlo, 141 F.Supp.2d 428 (SDNY 2001), dealt primarily with DeCarlo’s claims to creating Sabrina the Teenage Witch. In this case, it was Archie Comics filling a lawsuit seeking a declaratory judgment against DeCarlo and his claims to ownership regarding Sabrina. Similar to the case involving Josie and the Pussycats, DeCarlo’s attorneys attempted to assert many state law claims and added a trademark claim against Archie Comics. The court found the Copyright Act pre-empted the state law claims. DeCarlo’s counterclaim of false designation of origin and reverse passing off arose because Archie Comics did not credit him as a creator on the TV and cartoon show and instead used the phrase “Based on Characters Appearing in Archie Comics.” The court ruled there was no confusion, and the statements at issue were not misleading.     

Next time: Part 2 discussing the final case involving Archie Comics and Dan DeCarlo.  

[2] 127 F.Supp.2d 497 (SDNY 2001).

Tuesday, January 15, 2019

Superheroes and the Public Domain

            In the intellectual property world, 2019 is a special year. For the first time in 20 years, copyrighted works have resumed entering the public domain en masse due to the expiration of their copyright term. This means as of January 1, all works originally published in 1923 are now in the public domain.
Works stopped entering the public domain in 1998 due to the passage of a law that year which extended the copyright term of works created before 1978 by an additional 20 years. So, works that would have entered the public domain in 1999 remained under copyright protection until this year.  
Here’s a brief copyright history lesson. Under the United States Copyright Act of 1909, copyrighted works were entitled to an initial 28-year term from the date of publication and a second renewal term of an additional 28 years. So, in total, a work could be protected by copyright for up to 56 years. However, a work would enter the public domain if it lacked a proper copyright notice, e.g., © Dirk Vanover 2019, or if it wasn’t renewed.
The 1976 Copyright Act changed the duration of copyright terms for works created before 1978 (the year the Act went into effect) to 75 years from the date of publication, more or less. In 1998, the Copyright Term Extension Act, aka the Sonny Bono Act, aka the Mickey Mouse Act, changed the length of copyright terms again by adding an additional 20 years to the term—95 years from the date of publication.
Works created by a single author and protected by the 1909 Act enter the public domain piecemeal—as their copyright terms expire. This is why works created in 1923 are now in the public domain after 95 years. However, works created by a single author after 1978 are protected for the life of the author plus 70 years and enter the public domain all at once.[1]
I’m bringing this up for two reasons. First, it’s great that works are entering the public domain again. Even though works published in 1923 or after may have already entered the public domain, it can be difficult to determine. As mentioned above, there are only two other ways for a work to have entered the public domain previously – either the work lacked or had an improper copyright notice, or it wasn’t renewed after its initial 28-year term. To be certain a work is in the public domain would require research, which can be lengthy, costly, and indeterminate.
Second, I often see people discussing online whether such-and-such golden age superhero is in the public domain. As might be evident from what I’ve written above, determining this can be tricky. If the work was created in 1923 or earlier, which really isn’t applicable because not many superheroes existed back then, now it is in the public domain—at least those original aspects introduced in that work. For any other work, it is safest to assume it is protected by copyright. Otherwise, you’ll have to determine if the work fell into the public domain due to a lack of copyright notice or if it wasn’t renewed. Furthermore, even if a work has entered the public domain, only that specific work itself is in the public domain. So, if you want to utilize the character in a new work, you’d be limited to just those elements of the character introduced in the work that is in the public domain. (See my post about Sherlock Holmes here for a further explanation).
            Overall, it is good news for everyone that previously copyrighted works are now entering the public domain again. However, if you want to use a character you believe to be in the public domain, you should proceed with caution and make sure you’re in the clear before you create a new work. Otherwise, you could expose yourself to a possible copyright infringement lawsuit.

[1] However, corporate works and works made for hire are still a fixed term of 95 years from publication or 120 years from creation, whichever is shorter.

Thursday, December 20, 2018

Dead Rabbit Q & A

            A few weeks ago, I wrote a post about a trademark infringement lawsuit involving the Dead Rabbit comic book released by Image Comics. For more information, see the original post here, but basically, a bar in New York named Dead Rabbit (“DRT”) made menus in comic book form, planned to release a book utilizing the comics in 2018, and registered a trademark shortly after Image announced a comic book series named Dead Rabbit in February 2018. DRT then filed a lawsuit for trademark infringement against Image and the comic book store Forbidden Planet.
 Today, I’m going to do a little armchair lawyering in the form of a Q&A.

Why did DRT sue a comic book shop?

I believe there are a few reasons why Forbidden Planet was sued. From the complaint, the most obvious reason is that DRT, which is located in New York, wanted to make sure the lawsuit was heard in New York. Image is a California company. By adding a defendant in New York, the chance of the lawsuit being switched to a different court in a different state is diminished.

Another possible reason Forbidden Planet was included is to put pressure on Image to settle quickly. Retailers and distributors don’t like being caught up in litigation over a product they are selling but do not manufacture or control. By suing a retailer, there’s more pressure on Image to make the case go away quickly. 

Is there any risk to Forbidden Planet?

Yes. Selling a product that infringes a trademark constitutes infringement. Even though Forbidden Planet was unaware the Dead Rabbit comic book infringed upon someone else’s trademark, they could still be liable for the issues they sold.

Why did Image recall the book?
The primary reason to recall the book is to protect itself and retailers. As mentioned above, selling an item that infringes someone’s trademark can make you liable, even if you didn’t make it. Also, continuing to use a trademark after you’ve been made aware of it can increase your liability to the trademark owner. It’s safer to pull the allegedly infringing items until the problem has been resolved.

Will this case go to trial?

Doubtful. From my perspective, there’s not much reason to go to trial. Image has already recalled the book from the marketplace, and it looks like they are agreeing to an injunction against further publications bearing the Dead Rabbit name. The only remaining issue would be monetary compensation, if any.

Due to the fact DRT filed the trademark application after the comic book was announced, and its registration was issued in September, there are bound to be questions about whether DRT can actually enforce the federally-registered trademark against the comic book. A particularly tricky issue will be determining when Image and Forbidden Planet used the Dead Rabbit trademark in commerce. Is it when they began soliciting orders, which was before the trademark was registered, or is it the on-sale date in shops?

The likelihood of a court awarding DRT its requested $2 million in damages also seems unlikely, especially considering the issues surrounding the timing of DRT’s trademark registration. Unless DRT, and its attorneys, are hoping to get legal fees awarded, the amount available to recover doesn’t seem very high.

For instance, in orders sent to comic book shops, issue 1 sold an estimated 19,031 copies[1] to shops, and issue 2 sold an estimated 9,761 to shops[2]. If the shops sold every issue, which is unlikely, at $3.99 an issue, the total sales would be $114,880.08—and not all of that money was pocketed by one entity. Due to the somewhat convoluted flow of money through the comic book distribution system (Consumer to Retailer to Distributor (Diamond) to Publisher), the amount at issue in this case is likely to be less than the amount stated above, unless it sold well through other retail channels. Regardless, while it’s a decent amount of money, it’s a relatively small amount to get into a high-stakes legal battle over.


Wednesday, November 28, 2018

Beating a Dead Rabbit

            News broke last week that Image Comics is recalling a recently released comic book, Dead Rabbit, from the market. A bar in New York, also called Dead Rabbit, filed a trademark infringement lawsuit against Image and the retailer Forbidden Planet NYC seeking $2,000,000 in damages and to cease publication of the book, amongst other things. Apparently, the bar is known for producing menus in comic book form and releasing versions the public can buy. They recently received a trademark registration covering Dead Rabbit comic books.
            As readers of my blog will recall, I recommend doing clearance searches on the title of your book before publishing it. Clearance searches are done to prevent situations like this from happening—even though they rarely occur.
I don’t know if the creative team, Gerry Duggan and John McCrea, did a clearance search for Dead Rabbit, but even if they did, it would have been easy to miss this one. Image Comics announced its Dead Rabbit comic book at Image Expo on February 21, 2018.[1] The group owning the Dead Rabbit bar didn’t file a trademark application to cover comic books until February 23, 2018.
Whenever someone conducts a trademark clearance search, the first place they look is the U.S. Patent and Trademark Office’s trademark database. Even if McCrea and Duggan did so before announcing their book, a conflict would not have been readily apparent. The only way for them to discover a potential conflict would have been through general web searches, and I can imagine it would be easy to overlook a bar named Dead Rabbit as a potential conflict for a comic book without some serious investigating.
Image Comics began soliciting orders for Dead Rabbit in July,[2] and the first issue was released on October 3. The bar’s trademark registration was not issued until September 4, 2018. The attorneys representing the bar did not reach out to Image until October 22, and they filed a lawsuit on November 8, one day after the second issue of the comic book was released.
I don’t know why they waited so long after filing the application, and receiving the registration, before contacting Image. One theory would be that by waiting until they have the actual registration issued, they would be in a stronger position to get Image to stop distributing the book. Even though they didn’t have a registered trademark when the Image book was announced, they still have rights to the Dead Rabbit name if they were using it in commerce first. Another theory would be that they waited until Image’s book was published, which would potentially increase liability for any infringing party and put more pressure on the defendants.
From my perspective, this whole lawsuit is a bit of a mess, and, frankly, unnecessary. Maybe I’m too trusting, but had someone reached out to Image or the creators sooner, this situation probably could have been avoided. I’m pretty sure Image and the creators would have changed the title if someone had said, “Hey, we release comics under the Dead Rabbit name.” From my perspective, as someone who has been on both sides of these disputes, it is far easier and cheaper to just change a name than to try and fight a trademark dispute. Instead, by waiting so long, it has created a massive headache for the parties involved, which the cynic in me believes was probably the point.
One final note that I haven’t seen addressed yet. The creative team is not a current party to the lawsuit. They are mentioned in the complaint, but Image and Forbidden Planet are the defendants. At this point, it looks like Image’s attorneys are taking point on negotiating the lawsuit, but this doesn’t mean Duggan and McCrea are off the hook. Many publishing contracts, especially creator-owned ones, include an indemnification provision stating the creators will cover all the costs and legal fees the publisher might incur by publishing their book if it infringes someone else’s rights. If this provision was in Duggan and McCrea’s contract, then Image could seek to recoup their legal fees from the creators. Definitely a scary prospect for the creative team.



Tuesday, October 23, 2018

Halloween Costumes & Knockoffs - Part II

    Once again, it's my favorite time of year. While a good many people love the Christmas season, Halloween has always been my favorite holiday. I love the costumes, the candy, the decorations, and the scares. 
    Last year, I wrote a piece about Halloween costumes and knockoffs. If you want to re-read it for the legal whys behind knockoff costumes, you can find it here. Otherwise, I’m just going to dive in to some of my favorite knockoff superhero costumes I’ve run across this year. (Note: all links affiliate links)

Oh Captain, my Captain!

This black-clad assassin will make many widows.

This one makes my lawyer-sense tingle.

You have failed this knockoff. (From what I can tell, this is not officially licensed. If it is, I retract my previous statement.)

Are they even trying?

I really need to get the new game.

Wednesday, October 3, 2018

Book Review: The Amazing Adventures of Kavalier & Clay

            A review of a book released in 2000 isn’t exactly timely, but I think the book is important to cover here nonetheless. I recently finished reading Michael Chabon’s The Amazing Adventures of Kavalier & Clay (affiliate link), and it was fantastic. As a fan of comics, I was aware of the book when it was released, but somehow I didn’t get around to reading it until this year. Personally, I’m glad I waited.
            The book follows the exploits of two cousins, Sam Klayman (aka Clay) and Josef Kavalier, as they enter the comic book industry in New York City in 1939. As tensions rise in Europe leading up to World War II, they create a new character, The Escapist, that quickly rises in fame. The book follows the ups-and-downs of their careers and the twists-and-turns of their lives, and it’s a gripping, entertaining read.
            One of the aspects I enjoyed the most about the book was its near seamless blending of real world fact with fiction. Jerry Siegel, Joe Shuster, Stan Lee, and many other comic book greats inhabit the world of Kavalier & Clay, and the book draws many anecdotes from the era. The story arc of Kavalier & Clay and the ownership of their character draw many parallels to Siegel & Shuster and Superman. Additionally, one of the main turning points of the book involves the Superman lawsuits DC brought against Victor Fox (Wonder Man) and Fawcett (Captain Marvel). There is even a scene where Kavalier & Clay and a group of creators lock themselves in an apartment all weekend to create a 60-page comic book, echoing a similar tale involving Jerry Robinson, the co-creator of the Joker and Robin.
            As I said previously, I’m glad I waited 18 years before reading this book. Some of the nuances and references would have been lost on me had I read it when I was younger. Even so, it is an excellent book for anyone looking for a compelling story set during the golden age of comics.

Thursday, September 6, 2018

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.