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,, (last visited April 25, 2016).  See also Cronin, Brian, Comic Book Legends Revealed #284, Oct. 29, 2010, (last visited April 25, 2016).[14] Arrant, Chris, Doom Patrol Leads New DC Imprint by Gerard Way, April 07, 2016,, (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,, (last visited June 27, 2016).

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