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.
«- read more -»
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.