Halloween Costumes & Knock-offs

          Happy Halloween! I’ve always loved Halloween; it might be my favorite holiday. Not only do I love the costumes, decorations, and candy, it’s also close to my birthday. I’m definitely a Halloween person.

            Adding to my love of the holiday was the fact one of my earlier jobs as a lawyer was working for a retailer of Halloween costumes and décor. Not only was it a fun job, but it also provided a crash-course on the outer limits of intellectual property law. As many people are aware, knock off costumes – unlicensed costumes resembling popular characters – are abundant. Knock offs are abundant for a few reasons. First, some costume manufacturers cannot afford the licensing fees but still want to capitalize on a recent trend or fad. Second, sometimes a license for a particular property might not be available, either due to poor planning by the licensor, choice, or unforeseen popularity. And third, if done correctly knock-off costumes are legal under copyright law.

            Knock-offs can be legal because copyright law does not protect functional designs. If a design is important to the actual purpose and operation of the good, then it’s not protected by copyright. (Patent protection for elements of clothing is possible, but will not be discussed here.) Therefore, clothes are generally not protected by copyright. However, the designs on the clothing, if distinctive enough, can be protected by copyright. This issue was recently addressed by the U.S. Supreme Court in the Star Athletics case, which I previewed here. So, if a manufacturer can come up with a design evoking a popular character without infringing on any possible copyrightable elements of the costume, then their costume should be legal under copyright law. However, they still must be wary to not run afoul of trademark law, which means they cannot use the character’s name or any related logos associated with the character, and they have to be wary of right of publicity law, meaning they have to be careful about using a famous person’s name or likeness. It can make for some interesting products and descriptions. Below are a few of the more interesting ones I found recently. (Note: affiliate links)

Most of us should be able to guess who this is supposed to be.


A little trickier, but click through the link to see the product description, which makes it obvious and could run them afoul of the rights-holder.

Most of my readers should be able to guess this one.

It's a little harder to find men's costumes skirting this issue, and it's not always obvious. To me, this seems like it's evoking a certain character from a long-running animated sitcom.

Changing Work Made for Hire

When I was in law school, I wrote a paper on what I perceived to be unfairness in the Copyright Act’s work-made-for-hire law. The main reason I believed the law to be unfair was due to the plight of comic book creators, and a good chunk of the article went on to highlight some of the unequal treatment creators encountered under this law. My article proposed a remedy to try and address the problem. It is not my finest work. But, it does have some concepts worth exploring.

I’ve written before about work-made-for-hire agreements, and I’ve discussed some lawsuits creators have brought trying to reclaim characters they created, but I don’t believe I’ve addressed the basics of why the doctrine exists in the first place. The work-made-for-hire doctrine was formally adopted in the Copyright Act of 1909, where it was briefly mentioned,[1] and it was adopted in more detail in the 1976 Copyright Act. (I previously discussed it in depth here: http://www.comicslawyer.com/2016/08/work-made-for-hire.html). The basic rationale behind the doctrine is that an employer has paid an employee to create the work, and it therefore belongs to the employer.

While writing my paper in law school, I believed the work-made-for-hire doctrine unfair to comic book creators. In most employment-related situations, the salary paid to an employee for their work is adequate. However, when an employee creates something potentially worth millions of dollars to the company, is it fair for the employee’s only compensation to be his salary?

The main remedy I advocated called for reworking the work-made-for-hire doctrine into a mandatory licensing scheme. Instead of the employee having no rights to his creation, he would be entitled to a fixed percentage of revenue generated by his creation outside of its original work. For instance, if the character was originally introduced in an established title but soon found its way into a stand-alone comic book, the creator would receive a percentage of profits. Additionally, if the publisher stopped exploiting the character for a fixed period of time, the rights to the character would revert back to the creator.

At the time, I thought my idea novel and a great solution to a problem I believed was prevalent. I spoke with a few people in the industry at the time, but I was not privy to the behind-the-scenes deals that were in place between publishers and their creators. My knowledge of the industry was a far cry from what it is today. The information on the inner workings of the comic book industry available today online and through well-researched books far surpasses what was available a decade ago. Imagine my surprise when I finally learned DC and Marvel had instituted a system not too dissimilar to my proposal on their own years before.

The best publicly available description of this policy I’ve been able to locate was posted by Mark Waid on his Thrillbent site: http://thrillbent.com/blog/how-dc-contracts-work/. It’s a fascinating read, and if you haven’t read it you should. Basically, if creators introduced a new character, they would be paid a small royalty on the revenue the character generates for the company.

Perhaps unsurprisingly, I was a little embarrassed when I discovered my “big idea” to help creators was already put into place years before. The nuts and bolts differ from what I proposed, but the basic elements are the same. Two differences separate my proposal from theirs. First, mine would be a change to copyright law. The programs put in place by the publishers are contractual—at best. If the additional incentives paid to creators are policies enacted by the companies and not actual contractual obligations, the company can change the program without much input from the creator.  Second, I advocated a way for the creators to regain their characters if the publisher failed to utilize it. While certain creators may be able to contractually negotiate this happening, most cannot. For those who cannot, their creations will always belong to the publisher.

Even though I’m embarrassed I failed to discover when I was writing my paper my solution was already being implemented, I’m still proud of myself for coming up with an idea to resolve the problem similar to what was actually used. Not too bad for a second year law student.     

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[1] “…or by an employer for whom such work is made for hire…”, Sec. 23, Copyright Act of 1909.

Comic Pros & Cons Podcast

Derek Becker was kind enough to invite me on his Comic Pros & Cons podcast. I had a great time chatting with Derek, and his podcasts touch on some great issues. You can check out the podcast with me here: http://www.comicprosandcons.com/episode-082-dirk-vanover/. While you're there, check out some of his other ones as well.

Would a Bumblebee by any other name sting as much?

           Last week news broke that Hasbro, manufacturer of the Transformers toys, sued DC Comics for trademark infringement.[1] The trademark at issue: Bumblebee. Both companies created a character and released a toy bearing the name Bumblebee. For Hasbro, it’s a car that transforms into a robot; for DC, it’s a character who created a suit granting her super strength and durability, and the ability to fly, shrink, and use sonic disruptors.[2]

            In its complaint, Hasbro states it has used the Bumblebee trademark in connection with toys since as early as October 3, 1983. This also is the date it gave when registering its Bumblebee trademark with the U.S. Patent and Trademark Office in 2015. DC’s Bumblebee character, however, was first introduced in 1978 in Teen Titans #48 (or Teen Titans #45 in 1976, when her non-Bumblebee character, Karen Beecher, was introduced).[3] However, it does not appear DC ever created a Bumblebee toy until recently. In its complaint, Hasbro alleges DC began using the “spurious” Bumblebee trademark in connection with its Superhero Girls line of toys, which it launched in 2015.[4]

Did I finally purchase the Bumblebee doll my
daughter wanted after this lawsuit was filed? Yes, yes I did.

            When discussing this case, it’s important to keep in mind the differences between copyright law and trademark law. Copyright law protects the way an idea is expressed through art, writing, film, music, etc. Trademark law protects the identifying marks of providers of goods and services. Additionally, trademark registrations are broken down in to multiple categories, and it is possible for two similarly-named trademarks to co-exist at the same time if they are in separate and unrelated categories. While the two characters can exist simultaneously with the same name under copyright law, provided they are not copies of each other, it can become a problem when the character names are both used in relation to the same category, in this case toys.

            Given Hasbro has been manufacturing Bumblebee toys since 1983, it’s surprising they never attempted to register a trademark for the name until 2005. In reviewing the online trademark records, Hasbro was prevented from registering the trademark at that time because another company was attempting to register a trademark using Bumblebee in the same toys category and a few others. Even though the other company’s trademark ultimately did not register, Hasbro did not attempt to register the Bumblebee name again until 2015. This time it was successful, and the trademark was officially registered in December.    

Since these characters have co-existed for decades, what has prompted this lawsuit now? A few things jump out. First, Hasbro finally registered and received a federal trademark registration for Bumblebee in the toys category in 2015. With a federal trademark registration secured, it has stronger trademark rights that it can enforce, along with a requirement to do so. Second, DC did not manufacture a Bumblebee toy until 2015. The two companies never had a competing toy on the market bearing the same name until recently. Third, a new film starring Bumblebee is coming out next year, which is probably why Hasbro registered the trademark since they’ll be manufacturing tie-in toys, and fourth, DC’s Superhero Girl toys are manufactured by Mattel. When you’re a large company like Hasbro, it’s unlikely you’d initiate a lawsuit solely to stick it to a competitor, but it doesn’t hurt.

I’m a little surprised this actually ended up in court. Most likely Hasbro filed the lawsuit to put pressure on DC during negotiations – to let them know Hasbro means business. In trademark infringement lawsuits, the test is likelihood of confusion. It’s hard to believe a likelihood of confusion could be found between these two very different toys, but the way the system is set up favors Hasbro because they have a registered trademark. Ultimately, I imagine this case will settle before trial with DC making some minor tweaks to the packaging of their Bumblebee figures, such as a slight renaming like calling it DC Comics’ Bumblebee.

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[1] http://variety.com/2017/biz/news/bumblebee-trademark-transformers-dc-comics-warner-bros-1202541577/

[2] http://dc.wikia.com/wiki/Karen_Beecher_(New_Earth)

[3] https://en.wikipedia.org/wiki/Bumblebee_(comics)

[4] http://www.dccomics.com/blog/2015/10/01/the-dc-super-hero-girls-universe-is-live

ComixLaunch Podcast

I'd like to thank Tyler James for having me as a guest on his ComixLaunch podcast once again. In this episode, we have a detailed talk about publishing contracts and what creators need to be aware of when they negotiate them. You can find it here.

If you like what you hear and want to learn more about some of the nuts-and-bolts of the self-publishing world, check out more of the ComixLaunch podcast. The episodes are full of useful and practical advice

Fan Art & Fair Use - An Update

I’m frequently asked about fan-created works. I’ve written about my thoughts on the matter previously here, and generally, my thoughts on the matter remain the same: if you don’t own the rights to the characters you are drawing, you are probably in violation of someone’s intellectual property rights. Recently, rulings have been made in two cases involving works akin to fan art that will perhaps provide some guidance.

            First, we have the Axanar case. I previously wrote about the Axanar case when Paramount and CBS released their fan art guidelines. Briefly, Axanar Productions was attempting to create a feature-length film based around a character who appeared in an episode of the original Star Trek series, Garth of Izard. Axanar raised over $1 million on Kickstarter to fund its production and was planning on hiring people who had worked on Star Trek productions in the past. In 2015, Paramount/CBS sued for copyright infringement. In January, the judge hearing the case ruled Axanar was not entitled to a fair use defense in its work, and the case was settled shortly after. For more information, see the Hollywood Reporter coverage.

            Our second case also involves Star Trek, but in this case, a different rights-holder is suing. ComicMix, LLC started a Kickstarter campaign to fund a mashup of Dr. Seuss’ Oh, the Places You’ll Go! and Star Trek called Oh, the Places You’ll Boldly Go![1] It did not have permission from Paramount/CBS or from Seuss Enterprises.[2] Seuss Enterprises sued ComicMix for copyright and trademark infringement.[3] In addressing ComicMix’s Motion to Dismiss, the court weighed the four factors of fair use and found it evenly weighted between the two parties.[4] As such, it could not dismiss the case. Additionally, the court found the ComicMix work was not a parody.[5] The work used Go!’s style and format to tell stories from the Star Trek canon.[6] However, the court did find the work transformative because it creates a completely new work from the two source worlds.[7] The court also dismissed the trademark claims.[8]

            Initially, these two cases might seem at odds with each other, but they can easily be reconciled. They also shed light on questions surrounding fan art. The Axanar case involved a work heavily reliant on the Star Trek universe to tell its story. Since it sought to develop a character and story line first mentioned in the original Star Trek series, it is easy to clarify it as a derivative work. It primarily used Paramount/CBS’ intellectual property to create a new work. However, the ComicMix case involved a mash-up. As the court points out, it blends two different intellectual properties together to create a new work. [9] The court recognized mash-up works as an emerging culture and did not want to categorically eliminate this form of art.[10] Whether or not a mash-up work qualifies as a fair use will be a case-by-case determination, and in the ComicMix case, it is still to be determined whether Oh, the Places You’ll Boldly Go! will qualify as a fair use.[11]

            As I mentioned in the beginning, if you don’t own the rights to the intellectual property you’re using in your fan-created work, you could be infringing on someone’s rights. Even though you might believe your work qualifies as fair use, it’s likely you will have to go to court to assert your fair use defense. As both of these cases illustrate, courts determine fair use on a case-by-case basis, and you can easily find yourself on the wrong side of a copyright infringement claim.  Especially since there is not a clear line demarcating the point of infringement. If you are creating a piece of work using someone else’s intellectual property, tread carefully.  

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[1] Dr. Seuss Enters., L.P. v. ComicMix, LLC, No. 16cv2779-JLS, at page 2 (S.D. Cal. 2017).

[2] See Cullins, Ashley, Dr. Seuess Enterprises Takes Another Shot at Vaporizing ‘Star Trek’ Parody Book, July 3, 2017, HollywoodReporter.com,  http://www.hollywoodreporter.com/thr-esq/dr-seuss-enterprises-takes-shot-at-vaporizing-star-trek-parody-book-1016754 (last visited July 28, 2017).

[3]Id. at page 3.

[4] Id. at page 13.

[5] Id. at page 8.

[6] Id.

[7] Id.

[8] Id. at page 20.

[9] Id. at pages 8, 12.

[10] Id. at 12.

[11] See Cullins, Ashley, Dr. Seuess Enterprises Takes Another Shot at Vaporizing ‘Star Trek’ Parody Book, July 3, 2017, HollywoodReporter.com,  http://www.hollywoodreporter.com/thr-esq/dr-seuss-enterprises-takes-shot-at-vaporizing-star-trek-parody-book-1016754 (last visited July 28, 2017).

The Batmobile and the Bounds of Copyright Protection

           When can a character be protected by copyright? Over the years, it has been an interesting question for courts to address. In early cases involving Superman, the court found the character was sufficiently different from stock Hercules-type characters to warrant copyright protection.[1] A more recent example was addressed in Gaiman v. McFarlane (briefly discussed here); the Seventh Circuit looked closely at the Cogliostro character to determine if the character was more than a stock wizened, wise wino.[2]

            In 2015, the Ninth Circuit Court of Appeals revisited the question of what characters can be protected by copyright in DC Comics v. Towle.[3] At issue was whether the Batmobile could be considered a character entitled to copyright protection.[4]

            Mark Towle made and sold replicas of the Batmobiles from the Adam West TV show and the Michael Keaton movie.[5] They were near-exact replicas, and he also advertised the cars as the Batmobile and used bat motifs throughout the vehicles.[6] In 2011, DC brought a lawsuit against him alleging copyright infringement, trademark infringement, and other causes of action.[7] The district court found Towle’s actions in reproducing the Batmobile constituted copyright infringement.[8]

            On appeal, the Ninth Circuit upheld the lower court’s decision.[9] The central part of the Court’s decision revolved around how “‘sufficiently distinctive’” a character must be in order to receive copyright protection and whether the Batmobile met the requirement.[10] In analyzing the Batmobile, the court found (1) “it has ‘physical as well as conceptual qualities,’ and is thus not a mere literary character[,]”[11] (2) it is “recognizable as the same character whenever it appears” because it is almost always high-tech, has bat-like features, and has consistent features, and character traits,[12] and (3) it’s “‘especially distinctive’ and contains unique elements of expression” because of its sidekick-status, character traits, physical characteristics, and recognizable name.[13] Because the Batmobile satisfied the court’s three-part test, it ruled the Batmobile to be an “‘especially distinctive’ character entitled to copyright protection.”[14] Because the Batmobile is entitled to copyright protection, Towle’s faithful reproductions of the Batmobile constituted copyright infringement.

            The court’s decision further paves the way for copyright protection to extend to non-traditional “characters” in comic books so long as they meet the criteria set forth by the court. It’s good to keep this case in mind as you create your work and realize that copyright protection can apply to inanimate, side “characters” in addition to your main creations.

                         

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[1] See Detective Comics v. Bruns Publications, 111 F.2d 432 (2nd Cir. 1940).

[2] See Gaiman v. McFarlane, 360 F.3d 644 (7th Cir. 2004).

[3] 802 F.3d 1012.

[4] DC Comics, 802 F.3d at 1019.

[5] Id. at 1017.

[6] Id.

[7] Id.

[8] Id. at 1017-18.

[9] Id. at 1027.

[10] Id. at 1019.

[11] Id. at 1021 (citations omitted).

[12] Id. at 1021-22.

[13] Id. at 1022.

[14] Id. at 1023.