Thursday, December 26, 2019

Disney Princesses, Cosplay, and Trademark Infringement

            In 2016, Disney sued Characters for Hire, LLC (“CFH”)[1]. CFH’s primary business was having performers dress up like Disney Princesses, Star Wars characters, or Avengers characters and performing at themed birthday party celebrations. When Disney sued, it claimed CFH infringed upon its trademark and copyrights through advertisements, marketing materials, and the actors performing at parties.
            In August 2018, the court ruled in a summary judgment motion that CFH’s use did not infringe upon Disney’s trademarks. In promoting its services, CFH used generic substitutes such as Big Green Guy, The Dark Lord, Smuggler’s Co-Pilot, etc., thereby avoiding confusion with Disney’s trademarks. Another factor the court found to weigh against trademark infringement was that Disney does not offer the services provided by CFH, namely character appearances at private birthday parties, and would be unlikely to do so in the future. The court also found no evidence of actual consumer confusion. However, the court did not rule on the trademark dilution and copyright infringement claims.  The case was voluntarily dismissed by the parties in December 2018.
            This case is fascinating to me for a couple of reasons. First, it tests the boundaries of trademark law. How close is too close for something to be considered a trademark infringement? CFH was essentially in the business of hiring out performers dressed as Disney characters. Evidence submitted in the case, such as disclaimers, contract language, and character descriptions, make it clear CFH knew it was walking a fine line. Personally, I think this case could have easily gone the other way. However, the court weighed the factors that go into evaluating a trademark infringement claim very favorably toward CFH.[2] Second, since the case was not appealed and no further courts have considered it, it is a case other accused infringers can look to for guidance and hopeful relief. If CFH could prevail against Disney in this case, with some of the unfavorable facts stacked against it, then others could as well.  
Finally, I’m intrigued by its application to the ever-growing field of professional cosplay. Well-known and well-regarded cosplayers are often compensated to make appearances at events dressed as characters. This case seems to give them, and event organizers, a bit more leeway to do so without worrying about a lawsuit based on their appearance as a character owned by another corporation.

[1] Disney Enterprises, Inc. v. Avi Lieberman, 1:16-cv-02340, (S.D.N.Y. 2016).
[2] “[T]he strength of his mark, the degree of similarity between the two marks, the proximity of the products, the likelihood that the prior owner will bridge the gap, actual confusion, and the reciprocal of defendant's good faith in adopting its own mark, the quality of defendant's product, and the sophistication of the buyers.” Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.1961)

Wednesday, November 27, 2019

What is the CASE Act?

The CASE Act is the short name for the Copyright Alternative in Small-Claims Enforcement Act. If passed into law, it would add a new section to the Copyright Act, and it would establish a Copyright Claims Board within the Copyright Office that would be able to hear and resolve copyright disputes outside of court. The current version of the Act passed in the House of Representatives on October 22, and it is now waiting to be heard before the Senate.
Currently, if copyright owners need to enforce their rights, they must litigate their claims in federal court. This can be time-consuming and expensive. The CASE Act was introduced in an effort to make it easier and more affordable for copyright owners to enforce copyright infringement claims, especially those with cases where the damages would be small.
Copyright owners who would like to pursue a claim under the CASE Act can file a claim with the Board and pay the prescribed fee, which is yet to be determined but in no event less than $100 or more than filing in a federal district court. The Board’s attorneys will review the claim. If the attorneys determine the claim meets at least the minimum standards for filing, then the claimant must serve notice on the opposing party. After being served, the defendant has the opportunity to opt-out of the Board proceeding. If the defendant opts-out, then the plaintiff would have to file a claim in federal court to continue pursuing the matter. If the defendant does not affirmatively opt-out of the Board proceeding, then it will continue.
There is no requirement that either party be represented by an attorney in a proceeding before the Board, and the proceeding is supposed to be primarily conducted via written statements or remote conferencing. A decision issued by the Board has limited ability to be appealed to a court. It can only be appealed “[i]f the determination was issued as a result of fraud, corruption, misrepresentation, or other misconduct[,] [i]f the Copyright Claims Board exceeded its authority or failed to render a final determination concerning the subject matter at issue[, or] [i]n the case of a default determination or determination based on a failure to prosecute, if it is established that the default or failure was due to excusable neglect.” The Board can award damages of up to $15,000 per infringed work. However, the maximum amount recoverable by one party in a proceeding under before the Board is $30,000, not counting awards of attorneys’ fees or costs.
I agree with most of the CASE Act supporters that copyright litigation is too expensive for many copyright owners to pursue, and as a result, some of these copyright owners are unable to enforce their rights. The CASE Act is a step in the right direction. However, there are three issues that I find troubling, at least at this stage of my review of the Act.
The first is the opt-out nature of the proceedings. Even though there are provisions in the Act to provide for proper service upon a defendant, it is still very likely the opt-out nature of the proceeding will be overlooked and people will not receive the documents or understand their importance and will have a judgment issued against them without their knowledge. Making it opt-in would be truly voluntary, and would alleviate many of the issues of notice.  
The second issue, and most troubling for me, is the limited review by courts. While I understand that the goal is to make the process cheaper and easier than pursuing a claim in a district court, I also understand that copyright cases are often complicated. Having seen the number of decisions overturned at the appellate levels due to an incorrect application of law, I am concerned about the Board’s decision being final, especially since a decision can still be as high as $30,000. If Board decisions could be appealed to the Court of Appeals, it would make the Board review process more enticing.
The final issue involves the benefits of a Board proceeding. The benefits of the Board proceeding are relatively apparent for the plaintiff: low cost, faster, and, it will likely be easier to obtain damages than in court. The benefits for the defendant are lacking. As mentioned, the lack of appellate review is a turn off. Additionally, there is some language in the CASE Act that appears to allow the plaintiff to claim statutory damages they would be otherwise unable to claim in court. The only benefit is the cap on awards. As of today, I don’t think I would advise a client to participate in a Board proceeding as a defendant unless their infringement was so blatant and excessive that the maximum award benefit worked in their favor.
The CASE Act is still not law, but it is getting close. The current version has made it farther than previous attempts, and at some point, I expect we will have an alternative means of copyright enforcement. The question will be whether the process will be an attractive enough alternative to litigation for defendants that they will want to participate.  

Monday, October 21, 2019

Halloween Costumes & Knockoffs - Part III

It’s that time of year again. The leaves are changing color, the days are getting shorter and colder, and ghosts, ghouls and goblins are on the forefront of my mind. So are knock-off Halloween costumes.  
    This is my third year doing this list. If you want to see previous entries, you can find them here and here. Without further delay, here are some of my favorite knock-off superhero costumes I’ve run across this year. (Note: all links affiliate links)

I can't wait to dress up in this Superhero Soldier Costume Deluxe Halloween Cosplay.

This one is called the Punishing One. It's painfully obvious what they're trying to do.

I've watched Miraculous enough times with my daughter to know this is more than just a Men's Cat Cosplay Costume.

Speaking of cats, they might want to be careful about using Catwoman in describing this one.

This one brings to mind a certain Storm-y look.

And we'll close out this year's list with a Sexy Aqua Warrior.

Sunday, September 22, 2019

A Sonic Victory for Archie

In my book Comics Startup 101: Key Legal and Business Issues for Comic Book Creators, I briefly discuss the Ken Penders litigation against Archie Comics. In summary, Penders wrote Sonic the Hedgehog comics for Archie in the 90s, and he never signed a work-made-for-hire agreement. He sued Archie over ownership of the characters, and the case eventually settled. Similarly, artist Scott Fulop filed a lawsuit against Archie Comics in 2016. He claimed ownership to the Sonic the Hedgehog stories he worked on and that Archie’s use of them was infringement. The district court finally issued its decision in the case, Narrative Ark Entertainment LLC v. Archie Comics Publications, Inc., No. 16CV6109 (VB) (S.D.N.Y.), at the end of August.
Fulop worked as a freelance writer and artist for Archie Comics between 1996 and 1998, creating stories and characters for the Sonic the Hedgehog line of books. During his time working on Sonic, he did not sign a work-made-for-hire agreement, and even though Archie Comics claimed he did, no evidence of one was introduced at trial. After learning from Penders that his creations were still being reprinted, Fulop registered copyrights in his works in 2009 and 2010. Archie claimed authorship and ownership of the works, filed for copyright registrations, and transferred its rights in the same over to Sega between 2011 and 2013. Fulop did not file his lawsuit until 2016, claiming he was evaluating his options and waiting to see the outcome of the Penders litigation.
In its decision, the court ruled against Fulop. The court found that at its heart, the case was about copyright ownership. Fulop claimed he owned rights to the stories he worked on, and Archie claimed he didn’t. In a lawsuit concerning ownership of a copyright, a claim must be brought within three years of discovering evidence of disputed ownership. Since Fulop was aware of the Penders litigation, having submitted an affidavit during it, and was aware of the disputed ownership claims over his works, the court dismissed Fulop’s claims as they were brought later than three years after discovering the dispute. Since Fulop’s ownership claim failed, his lawsuit for infringement could not move forward. As a result, the court dismissed Fulop’s claims against Archie.
Creators should pay attention to this case for two reasons. First, it’s important to know your rights and the details of the contracts you sign. And second, if you think you have a claim or dispute against someone, don’t wait too long in evaluating or asserting it.

Sunday, August 18, 2019

Youngblood Lost

            Not too long ago, Rob Liefeld broke the news on social media that he no longer owns the rights to Youngblood, the popular comic book series he launched when helping to found Image Comics. In his statement, he said the rights to his characters had been transferred to someone he would not work with, and he would no longer be associated with the comic book series he created.
            Explaining the situation further, Liefeld detailed how he had transferred the rights to a third-party in the late ’90s, and this person had now transferred the rights to someone else. Even though he worked well with the previous rights-holder over the intervening years, Liefeld called the initial deal in the ’90s a bad deal.
            Liefeld’s calling it a bad deal started me thinking about the nature of deals and transactions. Oftentimes, the ultimate outcome of a deal might not be known for years. The initial deal might seem fair, and each party might be satisfied for a while. However, over time one party’s opinion of the deal might sour and, eventually, said party will regret the transaction.
            As a distant observer, it’s easy to look back on a transaction and criticize what should have been done. Oftentimes, however, deals are a series of compromises and emotional decisions, and the end result can be less than ideal. In order to get a deal done, sometimes you have to agree to or give up something you might not want to. Sometimes, the deal might not turn bad until years later due to something that was negotiated in to or negotiated out of the contract. Ultimately, it comes down to who has the negotiating power, and how eager the parties are to make a deal happen.
            What could Liefeld have done differently in negotiating this deal? Not knowing the particulars, we can only speculate. Assuming the rights were assigned, which is not entirely clear from Liefeld’s post, one option would have been to license the rights instead. If the rights had been licensed, then Liefeld could have included a prohibition against further transfers or assignments and retained some control.
Even though the rights appear to have been assigned without restriction, there are two other options that could have been included. As with a license, the deal could have included a statement prohibiting transfer without Liefeld’s consent. Depending on the nature of the transaction, this might have been difficult to include. If someone is paying good money to acquire rights to something valuable, they do not want their rights to be impaired in any way.
Another possible option would have been to include a right of first refusal. By including a right of first refusal, Liefeld could have matched any future offers for the right to Youngblood. Again, this might not have been possible depending on the negotiations, but it is slightly more palatable to buyers than an outright restriction, even though it might lessen the value of the rights being acquired.
            So, how do you avoid a bad deal? The only sure way to avoid a bad deal is not make a deal in the first place. Otherwise, you should try to understand the deal you are making and all of the likely outcomes.

Monday, July 15, 2019

Plasm v. Plasmer

            I recently ran across an older trademark case that’s worth mentioning. The case is Marvel Comics v. Defiant.[1]
            The case pitted Marvel Comics against a new comic book company founded by former Marvel Editor-in-Chief Jim Shooter. Shooter’s new comic book company, Defiant, was going to launch a new comic book called Plasm. Marvel objected to the title of the new book because they had a Marvel UK comic titled Plasmer. Marvel’s lawyers told Defiant they needed to change the title of the book. They also said that if Defiant provided a list of titles, Marvel would approve one.[2] Defiant provided a list, but they never received a reply from Marvel. So, they went ahead and published the comic with one of the names on the list, Warriors of Plasm.[3]  
            Marvel sued Defiant in an attempt to halt publication of the book by seeking a preliminary injunction. Marvel had filed for a trademark application for Plasmer in the U.K., and its U.S. trademark registration was still pending. Both parties filed arguments in an attempt to have the case dismissed early. Defiant argued the case should be dismissed because Marvel did not have trademark rights in the word Plasmer. The court did an intriguing analysis of what type of pre-sale use can help establish trademark priority, and, using a standard appropriate for evaluating a motion to dismiss, it ultimately concluded Marvel had established enough rights to avoid a motion to dismiss the case.[4] The court also found it inappropriate to grant Marvel’s declaratory judgment due to the pending nature of their trademark application, which would impact Defiant’s liability, and the upcoming trial.[5] Eventually, the court denied Marvel’s preliminary injunction finding there was “little likelihood of confusion between the two.”[6] The case was dismissed shortly thereafter.
The aftermath of the litigation, however, was pronounced. According to Shooter, even though they won, the litigation cost them $300,000.[7] Defiant also lost out on a million dollar toy deal with Mattel because they could not afford to indemnify Mattel against future lawsuits, which Mattel now required because of the Plasmer lawsuit.[8] As a new company, Defiant had limited resources, and the lawsuit took a toll.[9] After only starting publishing in 1992, Defiant closed down in 1995.
Marvel’s U.S. trademark application for Plasmer was never issued.

[1] Marvel Comics Limited v. Defiant, a division of Enlightened Entertainment Ltd., 837 F.Supp. 546 (1993).
[4] Marvel Comics Limited v. Defiant, a division of Enlightened Entertainment Ltd., 837 F.Supp. 546, 549 (1993).
[5] Marvel Comics Limited v. Defiant, a division of Enlightened Entertainment Ltd., 837 F.Supp. 546, 550 (1993).
[6] The Comics Journal, No. 163, Pg. 14(Nov. 1993).
[9]; The Comics Journal, No. 163, Pg. 14(Nov. 1993).

Sunday, June 16, 2019

Book Review: Comic Book Implosion: An Oral History of DC Comics Circa 1978

           Comic Book Implosion: An Oral History of DC Comics Circa 1978 (affiliate link) is a thorough, detailed look at the lead-up to the DC Implosion in 1978, and its aftermath. However, at times it can be a dry read, and its appeal might be limited to die-hard comic book industry junkies or researchers. Nevertheless, I’m glad this book exists.
            The DC Implosion occurred during the summer of 1978. At the time, DC was planning a massive increase of its comic book line, billed as the DC Explosion, including increased issue sizes at an increased price. However, just as it was launching, DC was forced by Warner Bros., its parent company, to slash its lineup of comics being released by at least 40% and trim its staff. As news of the cuts spread, it gained the name the DC Implosion. 
The book compiles quotes from numerous industry journals, such as The Comics Journal, The Comics Reader, and MediaScene, of the major industry players involved in DC Comics at the time. You get article excerpts from Jeanette Kahn, publisher of DC Comics at the time, Paul Levitz, then DC Comics editorial coordinater, Mike Gold, then DC Comics public relations representative, and many others. There are also recollections pulled from articles, blogs, and biographies years later. It is an impressive piece of research and compilation to put all of these disparate quotes into a readable, valuable book. My only quibble is that it’s billed as an oral history, and from my spot check of the index, there only appeared to be 6 or 7 actual email interviews conducted, and most of them were with current industry insiders who were merely fans at the time of the Implosion. So, I don’t know if this book actually qualifies as an “oral history.”
            Particularly interesting to me were the snippets about contract negotiations, personnel moves, and creator-ownership of characters. The years leading up to the DC Implosion were when the creator-rights movement began to gain steam. Changes in the copyright law, the financial straits of Siegel & Shuster leading up to the release of Superman: The Movie, and the short-lived attempt to form a Comics Creators Guild, all contributed to the creator-rights movement gaining steam in the lead-up to the Implosion. In its aftermath, some comic books that would have been published and owned by DC ended up being published elsewhere and owned by the creators, such as Bucky O’Hare. There are also some interesting snippets about contract disputes with some of the creators, and the rights-clearance process for the Superman vs. Muhammad Ali cover.
The story behind the two Cancelled Comics Cavalcade books was also particularly interesting. The quickly produced books, consisting of only 40 copies, were made from the comics cancelled during the Implosion. It was apparently done to preserve the copyrights to these works, which is somewhat questionable reasoning. The books were primarily distributed to those involved in creating the cancelled works with a few held in the DC archives and some sent to the copyright office. 
            Another interesting piece from the book is its look at the causes leading up to the Implosion, including the massive winter blizzard that impacted sales in early ’78, and the issues with the diminishing returns of newsstand distribution. It concludes by looking at how the Implosion impacted the industry, not only in the short-term, but in the long-term evolution of how publishers did business in its aftermath. It partially attributes the rise of mini-series and the direct market as outcomes of the Implosion.
            Overall, Comic Book Implosion: An Oral History of DC Comics Circa 1978 is a fascinating, well-researched book. For those wanting to learn more about the business of comics, it is an essential read.

Wednesday, May 29, 2019

Who owns your media rights?

           Over the past few weeks, Lion Forge and Oni Press merged, Dark Horse signed a first-look deal with Netflix, and Atlas Comics, a defunct publisher, sold its library of characters to a production company. The primary driver for all of these moves is to develop comic books, and the characters and stories they contain, into movies or television shows.
Optioning comic book rights to producers is currently where relatively easy money can be found for publishers. Often, publishers are operating on small margins, and the money they can make from these types of deals gives them some breathing room and some profit. Hopefully, it also puts a nice amount of money into the creator’s pockets as well.
            To me, these news stories are a great reminder that creators need to be aware of what they are giving to the publisher when signing a contract. My thoughts on the matter have been documented before, but it’s worth revisiting. To me, when you sign a deal with a publisher, you should only be giving them the right to publish your comic. If they want to do other deals with you, such as shopping your rights to Hollywood, then I believe it should be a separate deal, and it shouldn’t be tied to your publishing agreement.
Your media rights have value. Ideally, you should be getting paid for the privilege of shopping your media rights. If you are not being offered money for the ability to shop your media rights, then you need to ask what value, if any, the publisher adds by merely having the ability to shop your media rights. Do they add more value as an intermediary than doing it yourself or aligning yourself with an agent? Many of these publishers feel like they are entitled to your media rights as part of the publishing deal. After all, they published your book, shouldn’t they get a cut? Maybe. It depends on what the publisher brings to the table. Do they have connections that will benefit you? Have they had many properties optioned in the past? Are they aggressively shopping your project, or just hoarding the rights and hoping to take a cut if someone waving money comes along? Unfortunately, I’ve seen far too many publishers fall into that last category.
            If you have a publisher interested in obtaining your media rights, then – at a minimum – you should (i) be certain you understand how much, if anything, you’ll get paid, (ii) how long the publisher has the ability to shop your media rights and whether they revert to you, and (iii) whether you have approval over the final deal.
            The trend of publishers asking for media rights is on the rise, particularly among newer publishers, and it doesn’t look like it will abate anytime soon. By asking the above questions and understanding what you are agreeing to, you will be in a better position to evaluate the deal. Unfortunately for many newer creators, after evaluating the above, you may come to the conclusion that you’re better off not agreeing to the deal. This is a lament I’ve heard from numerous veteran creators who agreed to unfavorable deals early in their careers and lost control of their work. Sometimes saying no to a deal is the best thing you can do.  

Sunday, April 14, 2019

Do Dr. Seuss and Fair Use (Comic)Mix? - Part 2

            I mentioned the Dr. Seuss Enterprises, L.P. v ComicMix, LLC case in two previous blog posts (here and here). Recently, the court District Court for the Southern District of California issued a summary judgment in the case. In its  ruling, the court found that the ComicMix book, Oh, the Places You’ll Boldly Go!, was entitled to a fair use finding and dismissed the case.
            By way of background, ComicMix launched a Kickstarter campaign in 2016 to fund a mash-up book in the style of Dr. Seuss’ Oh, the Places You’ll Go, but instead using characters from Star Trek: The Original Series. The Kickstarter campaign raised almost $30,000, and ComicMix had discussions with publishers and retailers about distributing the book. ComicMix did not seek to license from either Seuss Enterprises or CBS/Paramount, the owners of Star Trek, because they believed their work to be a parody and hence constituted fair use under copyright law. After some back-and-forth correspondence between Seuss Enterprises and ComicMix, Seuss Enterprises filed a copyright and trademark infringement lawsuit in November 2016.
            During the next two years, the case wound its way through the litigation process. Early on, the court found the work to not be a parody, but did believe it was transformative. However, it declined to rule on the issue. Meanwhile, ComicMix was able to get the trademark claims related to the title dismissed.
            In the most recent summary judgment ruling that addressed the remaining claims, the court again revisited ComicMix’s fair use defense. After weighing all of the fair use factors,[1] the court found that the balance was close, but slightly favored ComicMix. Working in ComicMix’s favor was that even though the work was commercial, the court found it to be transformative. The court also found ComicMix’s book did not take more material than was necessary for the creation of its book, and Seuss Enterprises could not prove there would be market harm to its works, or its licensing programs, if ComicMix’s book were to be released. The court also ruled that Dr. Seuss’ illustration style was not a protectable trademark right, and that the typeface used in the title of the work is also not a protectable trademark.
            A few notes of caution for readers. First, this case is not yet over. Seuss Enterprises could appeal the decision to an appellate court, and the outcome could be different. Personally, I think the court has it right in this scenario, but one can never be certain. Second, this decision only applies to the Dr. Seuss elements incorporated into ComicMix’s book. If CBS/Paramount were to sue over the Star Trek elements used in the book, the analysis of the fair use factors could turn out differently. Finally, as I’ve said before, fair use is a defense to copyright infringement, and it is performed on a case-by-case basis. If someone thinks you are infringing on their work, they will probably sue you, and a court will decide if it’s a fair use. If that happens, it will take a significant amount of time and money to settle the issue, as evidenced by ComicMix’s appeal for help funding this litigation that I talked about last year.
            Overall, it is a good win for ComicMix, and it helps shed some light on how courts view mash-up works in relationship to fair use. However, this does not mean that all mash-up works are automatically entitled to fair use, and anyone creating them should proceed with caution.

The court opinion can be found here

[1]“(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
  (2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.” 17 U.S.C. Sec. 107.

Friday, March 1, 2019

The Umbrella Academy and Abandoned Trademarks

            I was watching an episode of Netflix’s The Umbrella Academy when a familiar name appeared on a store sign: Gimbel Brothers Department Store. For those unaware, Gimbel Brothers, and its shorter version Gimbels, was a popular department store chain decades ago. Personally, I’m intrigued by Gimbels for a few reasons. First, it traces a substantial part of its origins back to Milwaukee, where I currently reside. Second, it expanded into a large national chain, and even acquired other retailers that still operate today. And, third, it shut down operations in 1986.
            I’d like to discuss that third point today. One of the defining characteristics of trademark law is that you must continually use the trademark in commerce. If you continue to use the trademark in commerce, then your trademark is protected. However, if you cease using the trademark in commerce, then it can be considered abandoned and anyone can use it. Under the federal trademark law, aka the Lanham Act, a trademark is presumed abandoned after three years of non-use or if the trademark owner discontinues use of the trademark with an intent not to resume use.
            I find it fascinating that Gimbels, a trademark abandoned in 1986, or thereabouts, continues to live on in popular media. Because of the store’s former fame, the Gimbels name resonates with consumers and provides an air of realism to the media it appears in. While Gimbels did appear in some popular media before its closure, notably Miracle on 34th Street, since closure the store has been featured or referenced in the film Elf, as well as the television shows Happy!, The Goldbergs, Once Upon a Time, The Simpsons,[1] and, now, The Umbrella Academy.
            Once a trademark has been abandoned, others are free to use it or register it as a trademark. Theoretically, the appeal of using the Gimbels or Gimbel Brothers name is because the store is no longer operating, and people using its name in media wouldn’t need to worry about infringing on its trademark or damaging its goodwill.
            However, it turns out there is still a store bearing the Gimbels name. It is a small shop based in Maine, called Gimbel & Sons, and it was once sued by the Gimbels department store for trademark infringement.[2] The lawsuit was dismissed, and the Maine store was allowed to continue using its name provided it attached a sign stating it was not affiliated with the bigger department store chain. After Gimbels went out of business, the Maine store acquired the federal trademark registration for Gimbles Department Stores and has licensed it out to Hollywood, reportedly receiving $5,000 for its use in Elf and also licensing it for use in The Goldbergs.[3] I have not been able to determine if The Umbrella Academy licensed the name or attempted to skirt the issue by using the full Gimbel Brothers Department Store name on store signage.
            It’s yet another reminder that if you are seeking to register a trademark or claim trademark protection for your book, brand, or goods, continued use of the trademark is a must, and if you are thinking about using an abandoned trademark, it’s worth your time to make sure it’s actually abandoned. 


Tuesday, February 19, 2019

DeCarlo and Archie Comics - Part 2

Editor’s Note: This is the second part of a blog post discussing the lawsuits between Dan DeCarlo and Archie Comics. The first part can be found here.

The final lawsuit involving Dan DeCarlo and Archie Comics[1] was another action brought by Archie Comics seeking declaratory judgment and injunctive relief against DeCarlo’s estate, who passed away in December 2001. In the lawsuit, DeCarlo’s estate tries again to argue ownership claims for the Josie and Sabrina characters and also adds the character Cheryl Blossom and her family. The court reaffirmed the previous decision that DeCarlo was equitably estopped from contesting Archie Comics ownership of the Josie and the Pussycats characters. As for Sabrina, the court found there to be a presumption that Sabrina was a work for hire, and if it wasn’t, DeCarlo’s signing of the 1988 and 1996 agreements, in which he assigned all rights he might have in previous works to Archie Comics, conclusively grants ownership of Sabrina to Archie Comics. The court also found the agreements signed in 1988 and 1996 also transferred any rights DeCarlo may have had in the Cheryl Blossom characters. Furthermore, the court also ruled that the copyright assignment termination notices the estate sent to Archie Comics in an attempt to reclaim ownership of the character are null and void because (i) the Sabrina work was a work-made-for-hire, and (ii) the statutory time period for filing the termination notices in regards to Josie or Cheryl Blossom had not occurred. In a footnote the court states, “Whether defendant or DeCarlo's heirs may be entitled to invoke Section 203 with respect to any of DeCarlo's Josie or Cheryl Blossom works is a question which, in the case of the 1988 assignment, can occur no earlier than 2013. The Court declines to rule on that issue at this time.”[2]   
Speaking bluntly, these cases are a bit of a mess, but it’s easy to pass judgment in hindsight. In interviews, DeCarlo stated that he contacted a Cartoonist’s Association attorney in 1970 because he was upset about how Archie Comics handled the Josie cartoon—not telling him about it until the day before it was to air.[3] The attorney he spoke with told him he had a good case, but he would probably be blackballed in the industry if he pursued it; so, he didn’t.[4] In the 2000 case, DeCarlo’s attorney sought to primarily argue state law breach of contract claims. After the arguments failed in the Josie case, instead of focusing on copyright law, they attempted to retry many of the same state law and contract claims, which I imagine didn’t endear them to the court. I can only speculate that they chose this approach because they didn’t like their chances under copyright law. Even though it appeared the court in the last case gave the estate an opening to seek termination of copyright assignments, thus far I have not seen any indication the estate has done so, and based on the outcome for the Shuster family, it might not be successful.
  While DeCarlo was a valuable contributor to the characters inhabiting the Archie universe, his attempts to gain control over the characters failed. As is so often the case when a creator asserts claims against his former employer, the relationship ended poorly. After the first lawsuit was filed, Archie Comics immediately fired him after having worked for Archie Comics for  over 40 years, stating they “found that they and their employees could not stomach having [DeCarlo], in his words, “sneaking” around Archie Comics’ offices.”[5] We’ve seen it before in other cases I’ve discussed. When a company feels like its ownership of its intellectual property is being challenged, it will lash out. It’s an understandable reaction, but incredibly disappointing to see. As a fan, you would prefer to believe these companies would take care of the creators who’ve contributed so much to the company’s legacy (and profits), but that is seldom the case.
The takeaway for creators: (i) know your employment status and if the work is a work-for-hire, (ii) make sure you understand what you are giving away when you sign agreements, (iii) don’t wait too long to take action if you think someone is infringing on your rights, and (iv) if you sue someone, the relationship will likely end.

[1] Archie Comic Publications, Inc. v. DeCarlo, 258 F.Supp.2d 315 (SDNY 2003)
[2] Archie, 258 F.Supp.2d at 334 n.121.
[3] The Comics Journal, No. 229, page 43 (2000).

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.