The Law of Superheroes

by James Daily

  A Tale of Two Superhero Journalists

  Peter Parker (a.k.a. Spider-Man) and Clark Kent (a.k.a. Superman) 37 are both journalists: Parker is a freelance photographer who primarily sells his work to the Daily Bugle and Kent is a reporter for the Daily Planet. In order to publish their photographs and stories, the newspapers must either own the copyright to the photo or story or have a license. As it turns out, the law treats Parker and Kent differently because of the different relationship each journalist has with their respective newspapers.

  In general, copyright belongs to the author of a new work by default. 38 This means that when Peter Parker snaps a picture of Spider-Man, Parker owns the copyright in the work. When Parker sells a photo to the Bugle he either also sells the copyright or at least grants the Bugle a license to use the photo. This gives Parker leverage to potentially sell the same photo to multiple newspapers or to charge the Bugle a premium for an exclusive, at least if he can talk J. Jonah Jameson into it.

  The situation is different for Clark Kent. Works that Kent, as an employee of the Daily Planet, prepares within the scope of his employment (i.e., stories he writes as part of his job as a reporter) are “works made for hire.” 39 The employer owns the copyright in a work for hire unless explicitly agreed otherwise. 40 This means that Kent has no rights in the stories he writes; he can’t sell them to another paper or reprint them on a blog, for example.

  So how do the courts decide if someone is an employee for copyright purposes? The Supreme Court has held that the courts should use a long list of factors derived from the common law of agency, including who provides the tools for the work; the duration of the relationship between the parties; whether the hiring party has the right to assign additional projects to the hired party; and the extent of the hired party’s discretion over when and how long to work. 41 Unsurprisingly, these factors show that Parker is an independent contractor while Kent is clearly an employee.

  Copyright and Superhero Merchandising

  In the real world, comic books themselves are plainly subject to copyright protection, but within the comic book world the characters are real people, so their own physical appearance isn’t copyrightable (though it is protected by the rights of privacy and publicity discussed in chapter 5). So what could a character copyright? Copyrightable subject matter is defined in 17 U.S.C. § 102, and our best bet is probably the “pictorial, graphic, and sculptural works” category. 42 Could this include costumes and vehicles?

  Costumes

  Historically the law has not favored intellectual property protection for fashion designs. 43 But, in a classic example of legal hairsplitting, there is a distinction between the design of an article of clothing (i.e., its cut and shape) and the design of the fabric from which it is made (i.e., the print or pattern). “[F]abric designs…are considered ‘writings’ for purposes of copyright law and are accordingly protectible [sic].” 44

  So this suggests, for example, that no superhero (or supervillain) can lay claim to the classic cape-and-tights combo, but a costume with an original fabric pattern could be protected. Good examples would be the web pattern on Spider-Man’s costume and the golden fish-scale pattern on Aquaman’s costume. There’s a bit of a gray area when it comes to logos and symbols (e.g., Batman’s stylized bat, Superman’s S shield, Flash’s lightning bolt). Some superhero logos are too simplistic to be protected under copyright (e.g., the Fantastic Four logo) as they are basically “basic geometric shapes [that] have long been in the public domain.” 45 More likely though, they could count as trademarks and thus fall into a different category of intellectual property law with its own protections. Generally speaking, a work can be eligible for either copyright or trademark protection but only rarely will a particular work be eligible for both. Trademarks are discussed in more detail later in this chapter.

  Vehicles

  Like articles of clothing, vehicles are useful articles, and as such aren’t ordinarily subject to copyright, but just like fabric patterns, the nonfunctional design aspects of a car might be copyrighted. For example, the web pattern on the (short-lived) Spider-Mobile may be protected, but the design of the vehicle itself (e.g., the giant wings on the Batman Forever Batmobile) is not likely to be protected. Design patents 46 provide better protection for ornamental design features of useful articles like vehicles, but they must be applied for, cost money, and last for only fourteen years, unlike copyright, which is virtually eternal.

  Why Worry About Copyright Protection?

  So why should superheroes care if they have copyright protection in their costume or vehicle? One major reason is to control merchandising rights. Many superheroes either work for a living (e.g., Spider-Man), seem driven by fame and fortune (e.g., Booster Gold), or could always use another revenue stream to fund their work (e.g., Iron Man), so getting a cut of the merchandising rights would be very useful. Others might not care about money but simply want to ensure that their image isn’t used inappropriately (e.g., Superman).

  Many superheroes may also be concerned about copycats and impersonators, whether because of ego, image maintenance, or a concern that a non-superpowered impersonator might get themselves hurt.

  Of course, supervillains might care too. More or less sane villains might want to prevent the sale of toys and other merchandise that portray them as bad guys (“every villain is the hero of his own story,” as the saying goes). Or a villain like the Joker might want to have a hand in the production of Joker toys as part of an evil plot. And the villains might be able to do it too, even from behind bars. While a criminal’s assets are often subject to forfeiture, the law usually focuses on tangible assets, particularly those that are themselves contraband (e.g., illegal drugs), proceeds from illegal activities, or that were used to commit crimes. 47 Intellectual property assets like copyrights and patents are intangible, and they don’t fall into any of those three categories, so it might be difficult for the government to seize them.

  Superheroes and supervillains might use trademarks to control the use of their iconic symbols for many of the same reasons.

  Trademarks

  Unlike copyright, which is exclusively federal, there are both federal and state trademark laws in the United States. However, as commerce has become less and less localized, the importance of state trademarks has diminished somewhat, so we will focus on the federal scheme.

  Federal trademark law is primarily governed by the Lanham Act. 48 Individuals and corporations seeking federal trademark protection must register their marks with the United States Patent and Trademark Office. Unlike applying for a patent, applying for and maintaining a trademark is usually fairly straightforward, though there are some minor pitfalls and one big catch that we’ll discuss later.

  All kinds of things may be trademarked: words, graphic designs, shapes (e.g., a Coca-Cola bottle), sounds (e.g., the NBC chimes), and even colors (e.g., green and gold dry cleaning pads). 49 Of these, words and graphic design marks are the most common, and they’re likely the most applicable for superheroes and supervillains. There are some exceptions to what may be trademarked, and these are given in 15 U.S.C. § 1052.

  Most importantly, § 1052(e)(5) prohibits trademarking anything that “comprises any matter that, as a whole, is functional.” Functional things are pretty much the exclusive province of patent protection. You can’t copyright them, nor can you trademark them. So, for example, trademarking a Batarang would be difficult because the shape of the device is arguably functional. Another example would be the arc reactor in the Iron Man suits. Images of that have been used as logos for the films in the real world, but in the Marvel Universe, trying to use an image of the arc reactor as a logo is going to be subject to challenge on § 1052(e)(5) grounds unless the image is sufficiently stylized. The same probably goes for Thor’s hammer: it’s an obviously functional thing, so using it as a logo is going to be a tough sell unless you stylize it pretty heavily.

  But what about something like Captain America’s shield? Although the shie
ld itself is functional, the image on it isn’t functional at all, just a painted logo. Tough paint, to be sure, but ultimately just that: not essential to the functioning of the shield. So the logo on Captain America’s shield is probably trademarkable, but the shield itself is probably not. Captain America could go after anyone for using his logo on anything. As an historical side note, Marvel swapped Captain America’s original triangular shield for the round one allegedly due to the complaint of a rival publisher that it looked too much like its own character, an example of real world law affecting comic book stories.

  And while we’re on the subject of Captain America, what about § 1052(b)? That prohibits trademarking anything that “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.” This shouldn’t be a problem for Captain America because his logo is far enough removed from any official government insignia to be okay while remaining decidedly patriotic. Some versions of Captain Britain’s costume might not be so clear cut, however.

  The Minor Pitfalls

  Other than those exceptions, there are three pitfalls to watch out for here. First, trademarks cannot be generic terms for the marked good or service (e.g., you can’t trademark “Soft Drink brand carbonated beverages”). Second, if the mark is merely descriptive of the good or service, then you can’t trademark it unless you can show that the mark has acquired “secondary meaning,” that is, consumers now associate the mark with a particular source of goods or services rather than considering it a mere description. For example, the marks “Holiday Inn,” “All Bran,” and “General Motors” are all basically descriptive of the products they deliver, but they have acquired such a strong association with a single product or company that they are still entitled to protection. Third, the mark must be used in commerce or the applicant must have a good faith intention to use it in commerce (and they have to carry through with that intention at some point). That means a superhero or villain can’t just register the mark defensively as a way to prevent others from using it. Some kind of merchandising has to be going on and “Superman brand superhero services” may not be enough, unless Superman is actively marketing his services.

  In most cases, though, these aren’t going to be significant issues for superheroes and supervillains. Their names and logos tend to be arbitrary or fanciful rather than generic or merely descriptive (this shouldn’t be surprising, since most of them are also trademarks in the real world). And they’re probably all happy to slap their name and logo on merchandise, even if they’d prefer the proceeds go to charity.

  The Big Catch

  Unlike rights of privacy and publicity and copyright, trademarks carry with them a unique burden. A trademark owner must both continually use the mark in commerce and enforce his or her rights to exclusivity (i.e., must “police the mark”) or risk losing it. This is because the real purpose of trademark is to protect the buying public by ensuring that a good or service bearing a mark only comes from the owner of the mark. If there are multiple, unrelated sources using the mark (or if nobody is using the mark), then there is no public benefit. Without enforcement, a trademark loses its strength, and it may eventually become a generic term or even be considered abandoned outright. Speaking in the closely related trade dress context, the Sixth Circuit held:

  Although it appears unlikely that failure to prosecute, by itself, can establish that trade dress has been abandoned, it is possible that, in extreme circumstances, failure to prosecute may cause trade dress rights to be extinguished by causing a mark to lose its significance as an indication of source. 50

  Beyond the general threat of loss of protection, failure to sue individual infringers in a timely fashion can give rise to a defense of laches if the trademark owner does eventually decide to sue. 51

  1. More specifically they protect new, useful, and nonobvious processes, machines, articles of manufacture, compositions of matter, and improvements thereof. 35 U.S.C. §§ 101, 103.

  2. U.S. CONST. art. I, § 8, cl. 8. Perhaps counterintuitively, patents apply to the “useful Arts” (“art” is used here in the sense of “artifice” or “artificial”). Splitting the parallel sentence makes this clearer: “To promote the Progress of useful Arts, by securing for limited Times to Inventors the exclusive Right to their respective Discoveries.”

  3. “This Constitution, and the Laws of the United States which shall be made in Pursuance thereof…shall be the supreme Law of the Land;…any Thing in the Constitution or Laws of any state to the Contrary notwithstanding.” U.S. CONST. art. VI, cl. 2.

  4. See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141 (1989) (holding a state law prohibiting the copying of boat hull designs preempted).

  5. 35 U.S.C. § 102(a)(1). This section was changed by the recently enacted America Invents Act (“AIA”). Historically, there was a one-year grace period during which an invention could be used in public without barring the inventor from filing for a patent. The AIA allows a grace period only if the public disclosure was made by the inventor or someone who obtained the invention from the inventor. 35 U.S.C. § 102(b)(1)(A). Arguably, Bruce obtained the invention from the inventor, but that still only buys Wayne Enterprises a year, and taking advantage of the grace period would effectively require admitting that Bruce Wayne and Batman are the same person.

  6. Or if he uses it more than a year before the application date, per the previous footnote.

  7. 35 U.S.C. § 122(b)(1)(A).

  8. Egbert v. Lippman, 104 U.S. 333, 336 (1881) (holding that a hidden corset worn in public by a single person was a public use).

  9. City of Elizabeth v. Pavement Co., 97 U.S. 126, 134 (1877).

  10. Id.

  11. Indeed, this is precisely what happened in the Gotham Central storyline “Motive”: a neighborhood teen wound up getting hold of a Batarang left behind when Batman fought a villain in a high school.

  12. 35 U.S.C. § 122(b)(2)(ii); 35 U.S.C. § 181; MPEP 120.

  13. This is also how Parker got his powers in the Ultimate Spider-Man Universe. In the mainstream continuity, it was a radioactive spider, as depicted in Stan Lee, Steve Ditko et al., Spider-Man!, in AMAZING FANTASY (VOL. 1) 15 (Marvel Comics August 1962). We’re looking at the genetically modified version here because of the way patent law works with biological entities.

  14. In re Seagate Tech., LLC, 497 F.3d 1360, 1368 (Fed. Cir. 2007) (“patent infringement is a strict liability offense”); Hilton Davis Co. v. Warner-Jenkinson Co., Inc., 62 F.3d 1512, 1523 (Fed. Cir. 1995) (en banc) (“Accidental or ‘innocent’ infringement is still infringement”), rev’d on other grounds, 520 U.S. 17 (1997).

  15. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., No. 2010-1406 (Fed. Cir. July 29, 2011). Note that this case is likely to be reheard by the Federal Circuit or taken up by the Supreme Court, as it is seemingly contradicted by the AIA.

  16. Pub. L. No. 112-29 (Sept. 16, 2011).

  17. 447 U.S. 303 (1980).

  18. U.S. Pat. Appl. No. 12/842,269.

  19. 35 U.S.C. § 112.

  20. Planned Parenthood of Southeastern Pa. v. Casey, 505 U.S. 833, 851 (1992).

  21. See, e.g., Robinson v. California, 370 U.S. 660 (1962) (holding unconstitutional a law criminalizing being addicted to narcotics).

  22. 17 U.S.C. § 102(a).

  23. Although registration is not required in order for copyright protection to exist, registration does have several benefits, including proof of ownership and the date of creation. Registration is also required before a copyright owner can sue for copyright infringement. 17 U.S.C. § 411(a).

  24. Talia herself can’t claim a copyright in the album because she was not the author.

  25. The full title is the Berne Convention for the Protection of Literary and Artistic Works. Although it has been around since 1886, the United States only became a party to the Convention in 1989.

  26. See, e.g., Mazer v. Stein, 347 U.S. 201,
218 (1954). As the Court explained, “[A] copyrighted directory is not infringed by a similar directory which is the product of independent work. The copyright protects originality rather than novelty or invention—conferring only the sole right of multiplying copies. Absent copying there can be no infringement of copyright.”

  27. See Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F. Supp. 177 (S.D.N.Y. 1976). In that case Bright Tunes alleged that former Beatle George Harrison copied the melody of The Chiffons’ “He’s So Fine” when he wrote “My Sweet Lord.” Harrison claimed the defense of independent creation, but the judge held that, while Harrison did not deliberately copy “He’s So Fine,” he did copy it subconsciously.

  28. 17 U.S.C. § 506, which provides for significant fines and even prison sentences.

  29. In reality, the Copyright Office (not Commission) is located in the Library of Congress’s James Madison Building in Washington, DC, and doesn’t have branch offices.

  30. See, e.g., Christopher M. Holman, Copyright for Engineered DNA: An Idea Whose Time Has Come?, 113 W. VA. L. REV. 699, 704–05 (2011); James G. Silva, Copyright Protection of Biotechnology Works: Into the Dustbin of History?, 2000 B.C. INTELL. PROP. & TECH. F. 12801 (2000); Irving Kayton, Copyright in Living Genetically Engineered Works, 50 GEO. WASH. L. REV. 191 (1982).

  31. Diamond v. Chakrabarty, 447 U.S. 303 (1980).

  32. 7 U.S.C. § 2402 (extending plant variety protection to new, distinct, uniform, and stable sexually reproduced or tuber propagated plant varieties other than fungi or bacteria).

  33. Specifically the rights to reproduce the work, prepare derivative works, distribute the work, and display the work publicly. 17 U.S.C. § 106.