Around two months ago, DC and Marvel attempted to force their will onto a small time author. Graham Jules, author of “Business Zero to Superhero”, was taken to court for using the trade marked word “Superhero” in his book’s title, only for the famed comic publishers to back out subsequently for “commercial reasons”. This here, covers the legal battle apart from providing a nice little overview of superhero literature through the 1900s.
I will not be directly discussing the above mentioned occurrence here.
Rather, I’ll be dealing with three broader areas:
- The History of the Trade Mark “Superhero”.
- The Validity of the Trade Mark “Superhero”.
- DC and Marvel’s Activities in Relation to Protecting the Trade Mark “Superhero”.
The History of the Trade Mark “Superhero”
The word (not trade mark) “Superhero” was first used in 1917, to refer to “a public figure of great accomplishments”. Meaning, back then a “Superhero” was pretty much just a successful human. Probably the first fictional character to be called a “Superhero” was Doc Savage. But he too was nothing more than an intelligent homo sapien. It was sometime after the 1930s, that the word started taking modern connotations i.e. Superheroes being people with superhuman powers.
Neither DC nor Marvel (the Duo) came up with the term, but that’s not a relevant factor for determining the owners of a trade mark. We need to look at who commercially used the term to refer to themselves, but more on that later.
In 1937, Superman’s transformation from a psychotic villain (surprise!) to Mr. Goody Two Shoes, led to a flurry of superhuman characters. Interestingly, none of these benevolent souls were referred to as ‘superheroes’. Rather, they were given descriptions that seemed to be designed to test the vocabulary of second graders. One such specimen is “The Flash-The Fastest Man Alive”.
Moving over my distaste for comic book titles of yore, let us look at the trade mark origins of “Superhero”. Who do you think was the first to register the word as a trade mark?
If you guessed either Marvel or DC, you guessed wrong.
Ben Cooper Inc., was the first to register the word “Superhero” for the product costumes, in 1967.
In 1972, Mego Corporation tried to register “World’s Greatest Superheroes” for toys, but Ben Cooper Inc. sued them.
Meanwhile, as a result of a drop in comic book sales, The Duo started focussing on licensing. By the 1970s, The Duo started making more money out of licensing registered trade marks (such as, “Superman”), than out of comic book sales. Consequently, it didn’t take them much time to realize the extent of lucre available in the mark “Superhero”.
Coming back to the Mego and Ben Cooper saga:
Mego soon grew tired of the legal proceedings and handed over the burden to the (eager) Duo.
In the face of daunting opposition, Ben Cooper Inc. dropped their opposition and by the late 1970s, it had gone bankrupt and handed over all its original rights concerning the trade mark to the Duo.
Essentially, by 1983, The Duo had rights over “Superhero” over various categories.
The US Trade Mark and Patent Office states that they own the trade mark over:
“Publications, Particularly comic books and magazines and stories in illustrated form, cardboard stand-up figures, playing cards, paper iron-on transfer, erasers, pencil sharpeners, pencils, glue for office and home use, such as is sold as stationery supply, notebooks and stamp albums.”
I have conveniently avoided some of the history associated with how The Duo acquired the mark, but I believe I have the retained the gist of it, which I believe should suffice for analysing the legal concerns that have come up.
The first question that comes to mind is:
Can two entities own the same trade mark?
This discussion merits a separate piece and I shall hilt one out soon. For now, it should suffice to conclude that after considering the question, the registration office granted joint ownership to the Duo.
The Validity of the Trade Mark “Superhero”
The second question that comes to mind is the validity of the mark as a trade mark.
For determining validity of “Superhero”, there is one question that we need to answer.
1. Is the mark generic?
Before delving into the answer, let us briefly explore the concept of genericity.
Over time, word trade marks might be assimilated into common language.
The most commonly cited example is that of “Xerox”. Though the common noun is ‘photocopying’, consumers have started to use the originally trade marked term “Xerox” to refer to a photocopy in general. The moment consumers start doing that, they no longer use the mark to identify the manufacturer. Consequently, when they no longer use the mark to identify the manufacturer, the mark has lost its value as a trade mark, because a trade mark’s primary function is to indicate the product’s origin. In such a scenario, throttling competitors from using the mark through the trade mark regime would be anti-competitive because they should be able to describe their product in a manner that the public understands i.e. through common language. Therefore, a registered mark that has become generic ceases to be a trade mark.
Here is a fun write up by H. Ganesan on genericity.
So, has the “Superhero” mark become generic?
This depends on the evidence that the Duo provide.
In my opinion, they will be fighting an uphill battle to disprove genericity.
This is all the more so, because the Duo themselves have used the mark descriptively.
Here are a few examples:
Caption: “The Strangest Superheroes of All!” Caption: “Prisoner of the Superheroes!”
I cannot conclusively state that “superhero” is a generic mark, but there definitely seems to be strong arguments that could be made for revoking the mark’s trade mark status on grounds of genericity. Also, there exist considerably famous super-humans beyond the realm of the Duo. E.g. Green Hornet. So, the claim that consumers associate the mark with the Duo is on feeble ground.
This begs the question, if the mark seems to be generic, then why haven’t courts struck it down?
For answering this question, we need to look at the Duo’s enforcement strategy.
DC and Marvel’s Activities in Relation to Protecting the Trade Mark “Superhero”
It is interesting to note that until now, the mark has not been tested for genericity in court.
“How so?” you ask.
The Duo were a rather scheming pair!
They monitored registrations for trade marks that contained the word “superhero” and instead of immediately filing an opposition, they simply asked the registration office for more time to file an opposition. The applicant, upon learning about the Duo’s chagrin, would be intimidated by the Duo’s might or might settle with them.
Not one application (of 36 so far) has seen a trial.
Apart from monitoring registration applications, they also bully around enterprises through the mere threat of suing. The Duo’s strategy seems to be to take the opposition right to the precipice of a trial, hoping that the opposition would either back out or settle before that. Even if they don’t put across any threats, the mere knowledge of the Duo’s formal ownership over the mark makes competitors weary of using “superhero”.
Their victims range from gaming companies to small time publishers.
I understand that companies need to zealously protect their trade marks to ensure that consumers continue to associate a particular mark with them, but why go after adorable kid workshops?
I would love to have been a part of this workshop “Superhero Training”.
Obviously, not now.
Back when I was a kid and was interested in that sort of trivial, childish, immature tomfoolery. Obviously, not now.
Anyway, I digress. This brings me to the main takeaway from this piece.
All this goes show that a registered trade mark, no matter how weak in its claims for validity, coupled with financial might could become a very potent weapon that could be used to the detriment of competitors at large, in both direct and indirect ways.
The Duo’s mark has not been challenged in court.
We have seen how “superhero” might not be a valid mark at all.
And yet(!), except in a few freak cases (such as Graham’s), the Duo has been consistently been able to mend the opposition’s will to suit its desires for almost the last four decades. Countless others must have desisted from using the mark, even without the Duo’s interference.
Therefore, it is imperative that trade mark officers take up the responsibility that competitors haven’t. There is a need for registration officers to scrutinize an applicant’s mark in a comprehensive manner, because otherwise, we have seen how a registered mark can be misused. Even after registration, when the companies have to revive their trade marks, reviewers need to have a much closer look for testing genericity. If the US trade mark office had done that in 2006, the Duo might not be having their trade mark today.
“The ‘Amazing Adventures’ of Superhero” by Ross D. Petty.
I have borrowed a lot of factual and a bit of legal analysis from this piece.
Images from here, here, here and here.