Icon icons

April 21st, 2004

One of the questions that’s come up following the announcement of Marvel’s new “Icon” imprint is with the name itself. The comics industry is often a trademark minefield that’s difficult to navigate safely, so any new name has to be carefully chosen.

The first trademark question that popped up was about the character Icon, who starred in his own series for several years during the 1990’s, produced for Milestone Media mostly by Dwayne McDuffie and M.D. Bright. Wasn’t Marvel’s Icon an infringement on his name? Maybe not. One of the key aspects of trademarks is that they expire if you don’t use them. Icon was cancelled several years ago, and the one collected edition is no longer in print. Marvel could (and presumably does) argue that Milestone and DC (the company that published the series) have abandoned the trademark. (Ironically, “Icon” was Milestone’s second choice for the character’s name. McDuffie wanted to call him “Paragon”… but there was a trademark conflict.)

Another possible conflict is Icon Comics. I know nothing about this publisher at this point except the logos Rich Johnston posted in his rumour column Lying in the Gutters. Given the fact that both are the names of publishing imprints, it seems like a pretty strong argument that Marvel’s use of it could lead to “confusion in the marketplace”. The similarity of the logos could compound that.

The logo similarities probably doesn’t indicate that Marvel deliberately stole the name and imagery from the other publisher, however. It’s just as easily explained by the concept of the name itself. An icon is a graphic symbol. Although its modern meaning refers mostly to computers, and its earlier meeting evokes totems of Roman Catholic worship, the idea also dates back to Pharoahic Egypt. If you want an icon for “Icon” and you don’t want to risk infringing on computer operating systems or offending some of your Christian readers, Egyptian symbols make sense.

I don’t know if either of these parties is actually pursuing legal action against Marvel. I doubt Marvel decided on the name “Icon” and this logo without first running it past their legal counsel, so they presumably think it’s safe. But like Icon himself, there’s plenty of historical precedent for a comics property having to change its name before going to press.

put it away

Marvel and creator-owned comics

April 10th, 2004

Once upon a time, Marvel Comics had an imprint called Epic, which provided a place for creators to produce non-Marvel-Universe stories which they retained ownership of. Last year, Marvel announced they were bringing the imprint back, with a different spin. Not only would it publish new creator-owned material, but people were invited to submit proposals for Marvel-U stories, which would become Marvel property. But the creator-owned option was cancelled early on by Marvel execs, who didn’t want to publish material the company didn’t own outright. The whole Epic experiment got shut down completely within the year. But now Marvel is bringing back the very thing they axed first. Only this time It’s called Icon.

This new Icon imprint will publish creator-owned non-Marvel-Universe material, much like the original Epic did. The first books to come out from it will be Brian Bendis’ Powers and David Mack’s Kabuki, both snagged from Image. Bendis and Mack have both been doing a lot of work on Marvel-owned material in recent years, which points out the goal of Icon: giving star Marvel-friendly creators a chance to “do their own thing” without going to other publishers. So it probably won’t be a place for “unknowns” to get their stuff into print.

I’m curious what kind of deal Bendis and Mack are getting from Marvel for this. The creator-owned contract that Marvel (briefly) offered for Epic required the creator to give up a lot: Marvel would have exclusive rights to the series for several years (indefinitely if they kept it in print), Marvel would control the movie/game/etc rights and get 60% of the money from any deals, Marvel could even fire the creator/owner from actually producing the book and hire someone else to do it. (See my earlier article for all the gory details.) I can’t see someone like Bendis or Mack agreeing to those terms (certainly not with these titles), so Icon must be offering something closer to what publishers like DC offer. (I can’t imagine it being close to Image’s terms, which - as evidenced by how easily and quickly these two titles were moved to Icon - are pretty close to “no strings attached”.)

Gaiman wins characters from McFarlane

February 25th, 2004
Contracts Copyrights

Neil Gaiman has won the appeal of his case against Todd McFarlane, giving him co-ownership of Angela, Medieval Spawn, and Cogliostro, the characters he spawned in his script for Spawn #9. The gist of the decision was that, in absence of a written contract assigning copyright of the script to McFarlane, Gaiman has co-ownership of whatever characters he created in it. (Because McFarlane illustrated the stories, contributing his own ideas to the characters as he drew them, he has co-ownership of them.) It has almost no bearing on the prospects of seeing Miracleman back in print soon… but that’s because it wasn’t really an obstacle in the first place.

One of the tricky aspects of the case was the nature of Gaiman’s and McFarlane’s agreement. It had been a handshake deal, with McFarlane merely promising to treat Gaiman “better than the big boys” (Marvel and DC) would treat him. Gaiman finally ended up asking that McFarlane just treat him the same as the big boys (specifically DC) do.

The court considered the possibility that this meant just a Work For Hire agreement, like Marvel and DC usually offer writers. But because Gaiman wasn’t treated as an employee (with a salary, benefits, etc.) and because there was no signed piece of paper saying that it was Work For Hire (like Marvel and DC have writers sign), it was not WFH. That means Gaiman is co-creator, and co-owner of everything new he added to the Spawn story in issue #9.

McFarlane had conceded that Gaiman co-created (and co-owned) Angela. He disputed Gaiman’s claim to Medieval Spawn and Cogliostro.

One of the issues of the case was whether the statute of limitations had run out on Gaiman’s suit. Under federal copyright law, the injured party has 3 years to sue once he discovers that someone is claiming to own something he created. McFarlane tried to argue that the copyright notices he’d put in Spawn #9 (in 1992) and in the later reprints of that issue and Gaiman’s Angela mini-series (in 1997), had notified Gaimain of his claim. But the court ruled that these weren’t sufficient notice, because the first copyright statement was ambiguous and the author wasn’t expected to read the copyright statements in the reprints. There was also the example of McFarlane’s copyright registration, but the court said Gaiman wasn’t expected to watch the Library of Congress records, either. Furthermore, McFarlane had referred to Gaiman as “co-creator” of these characters and paid him royalties, as he’d be entitled to as co-owner.

The first unamiguous claim of sole ownership didn’t come until February 1999, when McFarlane sent Gaiman a letter declaring (emphasis added) “all rights to Medieval Spawn and Cogliostro shall continue to be owned by Todd McFarlane Productions”. Gaiman filed his suit one month before the 3-year limit.

The statute of limitations question turned out to be a red herring, because Gaiman wasn’t claiming that McFarlane had violated his copyright. As co-owner, McFarlane had every right to publish Angie, Med, and Cog. The issue was simply whether Gaiman had been given his fair share of the profit.

McFarlane also had a backup argument for why Gaiman couldn’t be co-owner of the two disputed characters: they weren’t copyrightable. For example, he claimed that Count Nicholas Cogliostro was just a “stock” character, and you can’t copyright a character which is nothing more than a standard literary cliché. But the court ruled that Cogliostro was distinctive enough to be copyrighted, and that each of the people who contributed to building that distinctive character (Gaiman’s description and name, McFarlane’s somewhat differing illustration) was a co-owner. The question of Medieval Spawn’s copyrightability was settled by declaring that he was sufficiently different enough from the Al Simmons Spawn character to be distinguishable from the original (but still a derivative work that would automatically give Spawn’s original creator certain rights to him).

Incidentally, there’s nothing fishy about McFarlane having two mutually inconsistent arguments for why Gaimain’s suit is invalid. For one thing, it’s common practise in legal matters to have a Plan B in case Plan A doesn’t work. In fact, if Plan A failed, and Plan B - which the lawyer didn’t use because he didn’t really agree with it - would have worked, the client could sue the lawyer for malpractise. In an adversarial legal system, it’s the lawyer’s job to win, not to be right. Second, it’s a bit like saying that you didn’t shoot someone, and you can prove it because A) you were out of town when it happened, and B) you don’t know how to fire a gun. Whichever convinces the jury.

Lawyers and judges tend to get a bad rap as obfuscatory blowhards. But if you read the actual decision written by the court, you’ll find a rather personable, well-reasoned, and in places just a wee bit sarcastic description of what the real issues involved were and how they applied to this situation.

Note that this ruling says absolutely nothing about Miracleman. (It mentions him, but it also mentions the Lone Ranger and Sam Spade. Doesn’t mean Gaiman owns either of them.) Gaiman has been trying to piece together the rights to Miracleman so he can re-publish the existing work and finish the story. McFarlane has believed (or at least claimed) he owned some or all of those copyrights, and Gaiman had offered to exchange his rights to Angie, Med, and Cog. But Gaiman now believes that McFarlane actually owned very little, and what little he did have (Eclipse’s trademark registration for the “MM” logo) have lapsed. He’s opposing McFarlane’s attempt to re-register the trademark. (One of these days I’m going to have to get to work on an article about that whole Miracleman mess.)

Neil Gaimain has commented about the verdict on his blog.

Michigan & Arkansas suspend “hide the smut” enforcement

February 17th, 2004
Free Press

An article in the Detroit News reports that Michigan’s prosecutors have agreed not to enforce the provisions of a new law which requires books and magazines to be blocked from the view of minors if they happen to contain sexually explicit material “harmful to” them inside. An article on Newsarama indicates that the US District Court has instructed prosecutors in Arkansas not to enforce a similar law being challenged in that state.

But don’t pop the cork on the champagne yet.

Neither law hast been repealed. In Michigan this is just the prosecutors agreeing not to use it, and in Arkansas the court telling them not to. Meanwhile the lawsuits challenging their constitutionality are still pending. It’s an encouraging sign, because it shows some reluctance on the Michigan prosecutors’ part to be named as codefendants in an actual test case, and it’s a clue how the court is inclined to rule in the Arkansas case. But if either court upholds either law, you can be sure some of these prosecutors will add it to their arsenals for later use.

I suspect the courts will pick apart the most illogical and poorly-written parts of the laws (such as the Michigan law’s requirement to restrict covers based solely on the hidden contents of the book), and the rest will stand, as a slightly less dangerous weapon… but a weapon nonetheless.

Super-Heroes® a Trademark of DC and Marvel

January 30th, 2004

The publisher of Super Hero Happy Hour, a comical comic series about superheroes hanging out at a bar during their off hours, is changing its name to just Hero Happy Hour. The reason has nothing to do with a change of focus of the series. It’s because they’ve been advised that “Super Heroes” is a trademark, belonging… to DC Comics. And to Marvel Comics. That’s right: both of them.

My goal here isn’t to argue whether it’s “right” or not, but to explore the facts and what the legal implications are.

Yes, it’s kind of a weird situation, but the two rival publishers filed a joint trademark registration of the phrase “Super Heroes”. One version of how it came to pass (which seems consistent with what other facts I’ve been able to confirm) is that it was precipitated by Mego making a line of action figures called “World’s Greatest Super Heroes” which included both Marvel and DC characters. This may have raised the question of who owned the trademark rights to the term (such as whether Mego could put “Super” on a package with a Marvel character in it). The joint registration may have been an easy way to settle it without a fight.

This co-registration allows either publisher to use the term in the marketing of their products, but no one else. It is USPTO registration #73222079, and gives them exlusive rights to the name in the marketing of “PUBLICATIONS, PARTICULARLY COMIC BOOKS AND MAGAZINES AND STORIES IN ILLUSTRATED FORM”. The registration cites a “first use in commerce” of 1966, and it was filed in 1979. Evidently no one challenged it, so it went into effect in 1981. Marvel and DC also share registrations of the name in the “MASQUERADE COSTUMES”, “BELTS”, and “TOY FIGURES” categories.

Meanwhile, Marvel and DC each own a few variations on the trademark, individually. For example, DC has a registration for “Legion of Super Heroes” (their long-running team series), and Marvel has registered “Marvel Super Heroes”.

There are other companies who’ve registered terms such as “Super Hero Ice Cream”, in categories of commerce that Marvel and DC don’t have anything to do with. They can do that because trademark registrations are category-specific. DC and Marvel don’t own exclusive right to the phrase for the whole universe of commerce. (Fred McDonald could probably start a software company called “McDonald’s Software”, for example, as long as he avoided using a rounded “M” in his logo, or anything else that might make it look like he was somehoe connected to Ray Kroc’s fast food chain.)

Trademarks don’t put any restrictions on ideas or the expression of them (like copyright does). So while Marvel and DC might jointly own “Super Heroes”®, they don’t own the concept of super-heroes. This doesn’t give them a lock on the super-hero publishing market; they’ve managed to maintain their joint dominance of that by various other means (some less ethical than others).

The trademark registration does not mean that only DC and Marvel can use the phrase “super heroes”. It means that only they can use it commercially. You and I can talk about “super heroes this” and “super heroes that” all we want. We can fill a whole book with the phrase. That’s because this is a trademark, not a copyright. (The differences between copyright and trademark are pretty substantial. I could go on for kilobytes about it.) I could even revive my childhood team “the Union of Super Heroes” and publish a series featuring them. DC and Marvel couldn’t do a thing to stop me.

But I couldn’t put that name on the cover, because DC & Marvel’s trademark prevents me from using “super heroes” as part of the marketing of a comicbook (or a costume or a toy figure or a belt). And the title is obviously a big component of the marketing. That’s where creator Dan Taylor and “guerilla publisher” GeekPunk ran afoul of Marvel and DC’s legal departments. I suspect that this is part of the reason why Malibu Comics decided to refer to the heroes of their Ultraverse comics as “ultras”, so they’d have freedom to use this term wherever and however they wanted, including the books’ covers, action figure packaging, etc.

The trademark also doesn’t mean that you can’t use just “Super” or “Heroes”. In fact, trademark registrations routinely declare that they’re not claiming the exclusive right to use some subset of the phrase they’re using. Putting this disclaimer on it makes it easier to get the registration approved, because it means the US Trademark Office doesn’t need to research whether anyone’s used “Super” as a brand of comicbooks. So you could publish “Super Comics” without conflicting with this trademark. (Of course you’d probably run into some problems with DC alone, who’d argue that it conflicts with their trademark on the name “Superman”.)

Some fans (and to a lesser extent, Taylor) have groused that The Big Two are picking on the little guy here, and there’s certainly an element of that here. Why else register the term (at a time when Marvel and DC together clearly dominated the comics business) if they didn’t intend to use it to keep other publishers from using it to promote their own books?

But it’s also true that DC and Marvel have some level of obligation to do this. Unlike copyright and patent registrations, which last __ years and you have pretty much absolute rights for that whole period, trademarks have indefinite terms. They last as long - but only as long - as you maintain them. First of all, that means you have to continue using the trademark. If you don’t it lapses into the public domain and anyone is free to use it. (See Captain Marvel vs. Captain Marvel for more about that.) Second, you pretty much have to sue anyone who infringes on it, or a competitor who tries to treat it as a generic term. You can’t just turn the other cheek if it’s a publisher you “like” (assuming they feel that way about GeekPunk) and then go after someone you don’t. You have to be nasty to everyone, or the judge is likely to decide that you weren’t serious about it, or you gave the public mixed messages.

It’s important to note that this is subjective. There isn’t a formula you can plug all this into and get an answer. The American judicial system is based on people making decisions based on what they’re told and what they feel is right. (Personally, I like that fact. I don’t trust machines to make decisions for humans.)

Some years ago, Johnson & Johnson put a fortune into pushing the phrase “Band-Aid® brand bandages”, to reinforce the idea that it’s a trademark, not a generic term for little plastic things to put on boo-boos. The Kleenex® and Xerox® people went through similar efforts. That’s because it’s possible for a registered trademark to become generic if enough of the public use it that way.

You could argue that this has happened with “super hero”. If GeekPunk (or some other publisher of comics featuring heroes with supernormal abilities) wanted to challenge the Big Two’s trademark rights, they’d have to demonstrate to the court that “super heroes” is no longer associated in the minds of most consumers with just Marvel’s and DC’s characters. I’m not sure what the burden of proof would be, but I’m sure you’d have to do more than wave your arms and point at Spawn, Savage Dragon, Madman, He-Man, and Go Boy 7 as other examples of “super heroes”. DC and Marvel would probably assert that, if you asked people to name “super heroes”, most would recite a short list of Marvel- and DC-owned characters only.

The case could probably go either way, depending on how well it was argued. There’s probably some relevant case law out there that I’m not in a position to research, which could also tip it one way or the other. I suspect it hasn’t been challenged (and won’t be) for much the same reason DC and Marvel agreed to share the term in the first place: it isn’t worth the time and money to fight over it. At least that’s what GeekPunk has decided.