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.