Originally published January 25, 2016.
It’s been almost ten years ago since the March 2006 blog post, which got a bit of play as it turned out, in which I expressed a sentiment that seemed incomprehensible to me at the time and a decade later I will admit I understand all too well: The idea that both Marvel and DC could, as they were, both claim to be own the putative trademark SUPER-HERO.
I wrote this:
DC and Marvel — the only two companies that financially could fight over this with the other of them — are “jointly” claiming rights in the term SUPER-HERO. Adding ™ to super-hero is a naked bid to steal “super-hero” from us and claim it for their own. . . . ,” continues [Boing Boing], concluding:
Here’s a proposal: from now on, let’s never use the term “super-hero” to describe a Marvel character. Let’s call them “underwear perverts” — as Warren Ellis is wont to — or vigilantes, or mutants. Let’s reserve the term “super-hero” exclusively to describe the heroes of comics published by companies that aren’t crooked word-thieves.
(Via Slashdot.) Well, that’s one approach. Here’s another one: I’ll represent pro bono any company harassed by this claim, if you can get me to where you are as necessary (and provide local counsel if needed).
By the way: They each have a registered trademark incorporating the term SUPER-HERO: MARVEL SUPER-HEROES and LEGION OF SUPER-HEROES, respectively. Does that mean they both have the trademark SUPER HERO? Actually — it means the exact opposite! In fact, if these two “competing” companies are trying to establish some sort of joint right in this term, it could be that rare case of trademark misuse so often pleaded and so never found by the courts…
Please, let me be your Lex Luthor, your Dr. Octopus! I eat kryptonite for breakfast!
No one ever took me up on that offer, which is now, by the way, closed, because of reasons. I was reminded of this post, however, first because of a recent representation inquiry concerning a comic book character, and secondly because of a post by her IP Mavenship Pamela Chestek, entitled, “The Exemplar Case For Why Joint Trademark Ownership is Bad,” which begins as follows:
According to McCarthy, “[w]hen there is a dispute over who owns a trademark, the worst possible solution is to allow mark ownership to be shared among the warring parties.”
That is in the lastest opinion on the the YOGI marks, which I’ve written about many, many, many times before. The cases revolve around the rights to the name and likeness of the late Yogi Bhajan, spiritual and religious leader of the Sikh religion in the United States. His wife, Bibiji Inderjit Kaur Puri, called “Bibiji” throughout the various opinions, sued the Golden Temple of Oregon for infringement of the marks YOGI and YOGI TEA and they stopped paying royalties, and she sued the trustees of the Yogi Bhajan Administrative Trust (“YA Trust”) for breach of trust and related claims, for trademark infringement, and for a determination by the probate court on ownership of the marks.
The latest opinion is in the case Bibiji brought accusing the YA Trust of trademark infringement. Only a legal procedure buff could love this opinion . . .
And I am that legal procedure buff, of course, though you may not be, so I will scroll you down to the bottom line — Pam’s, not mine, as I shall explain in a minute — to wit:
But, unlike in the case of a non-exclusive license, here the two co-owners can enforce entirely different standards of quality, driving the marks down an almost certain path to genericism* (“Honey, do you want the Golden Temple yogi tea or the Eternal Sunrise yogi tea?”). Indeed, the worst possible solution.
It’s bad, it’s bad.
It’s bad, certainly, from the perspective Pamela is writing from: The management of intellectual property, which of course can never serve two masters.
You would think.
Consider, now, however, the case of SUPER-HERO, which I am now going to stop capitalizing as if it were a trademark. Does this situation differ, doctrinally, from the essential problem McCarthy was writing about when he referred, in the passage quoted by Pamela, to the classic situation where two parties at war over a trademark, and decide that, rather than bloody each other over an ambiguous ownership battle, they decided the rights will be shared?
It certainly does. To illustrate the point, let’s consider another case Pam wrote about in the past: The great Del Monte mashup. I, in turn, covered it and commented in this blog post. This attempt at trademark coexistence was not born in war at all, but in a friendly corporate divestiture. It, too, turned out to be a big, honking disaster, and Pam, cogently explained why:
When you have two businesses using the same trademark in such closely related fields, it’s a guarantee for litigation as they each edge up to the line trying to sell as much as possible — there is no such thing as taking a conservative position on market share.
Right — so long as the trademark in question is THE trademark under which they’re doing business, that is.
But while Super-Hero — and now I’m going to stop both capitalizing or hyphenating it — is a shared so-called “trademark,” it is different from both the YOGI and DEL MONTE situations for a couple of reasons. For one, neither Marvel nor DC brands depends on it being a trademark for purposes of consumer recognition.
Instead, as I don’t have to tell anyone, DC and Marvel each offers a (competing) line of branded — and I do mean BRANDED — superheroes such as Batman, Superman, Spiderman, blah-blah-blah, each of which functions as its own brand, of course, and each of which is in turn is also branded as either a DC superhero or a Marvel superhero.
So each product offered by DC and Marvel is already a brand within a brand. “Superhero” is already almost besides the point. There’s not hardly anything brandy about it.
So what, then, is the point of the “shared trademark” embodied in that venerable registration? Why doesn’t Pamela’s point about “a conservative market share” apply?
Well, I’ve already answered the second question. The trademark has nothing to do with divvying up market share as between DC and Marvel. They compete with the superhero brands that matter, i.e., the characters and all … that.
And to answer the second question, dear friends, is to answer the first question. What DC and Marvel intend, and have, so far, probably succeeded to do to some extent, is nothing less than to divvy up the entirety of the “superhero” market, all of it, 100% and not less than its totality between the two of them by excluding others through use of a phony trademark claim. They don’t have the problem Pamela is referring to because reducing competition is the entire purpose of the “joint ownership” fiction.
This a kind of trademark bullying, of course, which means that it leverages the advantages of a presumptively valid trademark registration — improvidently granted, perhaps, or maybe not; who am I to say? — plus all the things that a cease and desist letter recites the registration will get a plaintiff if it marches into court waving it about; as well as the kind of revenue that makes “enforcement” against virtually all challengers nothing but a trivial line-item expense.
Still and all, there are strategies by which a sufficiently motivated — which does not necessarily mean massively funded — defendant can overcome seemingly insurmountable advantages such as these, as I’ve demonstrated in the past.
So you may wonder, why, over the space of ten years, did no one ever step up and take the opportunity I offered to challenge DC and Marvel on what seems, legally speaking, like low-hanging fruit — to crack open the superhero monopoly and take back the language?
Simple. It’s the same reason why, to analogize to fashion law, there are a hundred fawning “fashion law blogs” but virtually never analyses, much less questions, of how Big Fashion operates in the legal realm. Nor is it easy to find established counsel to represent a plaintiff against a major designer or act as an expert in a case against a well-known fashion house. (This phenomenon is alluded to in a slightly different context in this brave post in The Fashion Law entitled “Why is the Fashion World Almost Complete Devoid of Objectivity?”)
Every lawyer thinks, notwithstanding the unreality of it, that the phone is about to ring and that it’s Paris on the line with the Big Case. It’s a kind of trademark bullying you do in your own stupid, arrogant head.
So, right: Why has no creative comics genius taken on the superhero trademark? Because the fanbois who make new comic books are more interested in maybe having a chance to please their superheroes, and maybe even meeting them and stuff by breaking into the comics, than vindicating their rights to use some stupid old word!
Of course, they will never do any of these things. But that’s not my problem, of course.
I’m only human.
* For what it’s worth, we legal procedure buffs at LIKELIHOOD OF CONFUSION® say “genericness,” not genericism.