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).
[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], ‘Twist Case Settled,’ Feb. 18, 2007, (last visited April 22, 2016).

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