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.