Super Rights in Super Heroes

By Geoffrey Gerber

About two weeks ago, at Archon, I was giving an interview about comic-book law. I was talking about the different ways to protect rights in a character and during the discussion of trademarks, I was asked about DC Comics and Marvel's joint ownership of the trademark for Super Heroes. This seems to come up a great deal when you are discussing IP law with aspiring comics creators. For example, check out the post at Comics Should Be Good.

Yes, DC and Marvel jointly own the "Super Heroes" trademark. U.S. Registration No. 1179067 for the trademark SUPER HEROES in connection with comic books and some other products. 

That still leaves a question: What does that mean for everyone else?

 

A trademark registration does not grant the owner a monopoly in the use of that trademark.

Martin Schwimmer at the Trademark Blog has a good post on this that collects links to the Wikipedia entry as well as to Newsarama's coverage of the instance when DC and Marvel demanded that Geek Punk stop using the name "Super Hero Happy Hour." Comic-con International instructor and lawyer Michael Lovitz was interviewed about this issue on NPR's All Things Considered.

Mr. Schwimmer explains one of the prominent issues with this jointly owned trademark. If a trademark is supposed to designate a source of origin for a good or service, how can it function when goods bearing the mark SUPER HEROES could have come from either of two different entities? Marvel and DC each use SUPER HEROES as components in their own Marks.

Reg. No. 1,073,580

Reg. No. 1,242,016

To obtain registrations for MARVEL SUPER-HEROES and for LEGION OF SUPER-HEROES, both Marvel and DC had to explain to the United States Patent and Trademark office that they were joint owners of SUPER HEROES and that the mark was used with permission of the joint owners. They asserted that use by one of the joint owners benefited the other and that the consumers would not be confused. While Mr. Schwimmer explains some of the issues related to joint ownership, I have seen no discussion of potential anti-competitive use of such jointly owned trademarks other than reference to Marvel and DC's "duopoly" power in the NPR interview. 

The other issue that seems to most concern comic-book creators is the generic nature of SUPER HEROES. How can it be a "distinctive" designation of source when common usage and dictionary definitions of the term could apply to characters created by any comic-book company. For example, Merriam-Webster defines superhero as "a fictional hero having extraordinary or superhuman powers," and Dictionary.com defines superhero as "a hero, esp. in children's comic books and television cartoons, possessing extraordinary, often magical powers." Certainly courts have used superhero in a descriptive fashion. Such descriptive use of superhero should be allowed. 

Given the absence of reported cases in which DC or Marvel have asserted their trademark registrations for SUPER HEROES, they presumably choose carefully when pursuing their enforcement efforts. The boundaries for using "super hero" in connection with comic books will likely remain undefined until someone decides to challenge DC or Marvel. 

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Dan - February 3, 2009 10:41 PM

As a first year law student interested in Intellectual Property, I think this blog is great. I stumbled upon it tonight and read a bunch of the articles. They are well-written, informative, and every one is interesting to me. Comic book law sounds like fun! Keep up the good work and I hope to read more posts here!

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