Saturday, June 4, 2011

THOUGHTS ON DC REBOOT PART 1 (of 3): A Blast from the Past: The SUPERMAN Copyright Case as it stood in 2000

Entertainment

This may be the most over-analyzed move by a comic book company...
EVER!
So, I may as well contribute my thoughts as well.
As I referenced in an earlier blog this past week has been quite an exciting and interesting week in terms of the world of comic books, but most especially in terms of leading comic publisher DC Comics. I have quite a few observations and thoughts that I want to put out in the web-isphere for consideration, so I have decided to break it up into 3 parts.

PART 1 is this blog which will contain a legal research article I wrote back in 2000 when the Siegel Estate's lawsuit against DC Comics to recover partial ownership of the Superman copyright was just beginning. I will insert commentary throughout as necessary to clarify or point out things of interest in retrospect.

PART 2 will provide documentation of some key developments up through the 2009 Summary Judgment in the Siegel Estate's favor and my thoughts on how that decision has driven nearly every corporate and creative decision as it relates to the Superman copyright and trademark (and the DC Universe of characters by extension).

PART 3 will move on from the legal and corporate shenanigans and focus on a fan's perspective and thoughts concerning the announced reboot of the entire DC Universe line of comics and flooding the market with 52 first issues of new ongoing series.

This article was written with an intention at the time of possibly shopping it around for publication. I never got around to doing that and it has just sat on my backup harddrive all these years. So, I'm digging it out of mothballs and sharing it here, warts and all. But some points to mention going in are that in the intervening years between when I wrote this legal analysis and today, the Joe Simon vs. Marvel case was settled for an undisclosed amount and Mart Nodell, creator of Green Lantern for DC Comics likewise filed suit and it was settled promptly. A suit was filed, and is still weaving its way through the courts between the heirs of artist Jack Kirby against Marvel to gain partial copyright ownership and due compensation for the slew of characters Kirby either created outright or co-created with Stan Lee.

So without further ado, I present...




SUPERMAN by artist George Pérez
Up, Up and Away . . .

An Examination of the Issues Surrounding the Termination of Transfer of Copyright Custody Battle Over the Character of "Superman"

___________________________________________________

"Under the terms of our contract you are entitled to a percentage of net profits accruing from the exploitation of Superman in channels other than magazines."[1]

Introduction

In what would likely be a great shock to the public, the story of Superman does not actually begin with the familiar image of an exploding planet Krypton followed by the subsequent image of a small rocket containing Krypton's sole survivor, an infant male, crashing on Earth in Smallville, Kansas. In fact, the story of Superman began in 1933 when two Cleveland teenage boys, Jerome (Jerry) Siegel and Joseph (Joe) Shuster created what they thought was a "surefire, super action hit" comic strip intended for newspaper syndication.[2] However, the features syndicates did not share the youths’ enthusiasm and their publishing attempts were rebuffed.[3] Eventually, they tried selling various comic strips, including Superman, to the new medium of "comic books," which were little more than bound reprints of newspaper comic strips and an occasional original strip. Their first attempt was returned to them; the package was unopened.[4]

Talent and persistence paid off, though, and they were soon publishing a number of original comic strips in comic books published by Detective Comics, Inc.[5] It was not until 1938, four years after his creation, that Siegel and Shuster finally sold those original Superman strips. The strips were subsequently published, along with new Superman material produced by the two, in the first issue of a new comic book entitled Action Comics.[6] Concurrently, Siegel and Shuster legally transferred, for $130, the Superman copyright to DC Comics, and the foundation was laid for the current battle over the copyrights to the second most recognizable fictional character in the world.[7]

Transfer and Renewal of Copyright

1. Was there a valid transferof copyright?

On March 1, 1938, Detective Comics prepared a written release that was executed by Siegel and Shuster and accepted by Detective Comics, Inc. This release sold and transferred to Detective:

"[S]uch work and strip (Superman), all good will attached thereto and exclusive rights to the use of the characters and story, continuity and title of strip contained therein, to you (Detective) and your assigns to have and hold forever and to be your exclusive property . . .. [sic] The intent hereof is to give you exclusive right to use and acknowledge that you own said characters or story and the use thereof exclusively . . .." [8] [sic]
According to 17 U.S.C. sec. 201, a copyright vests initially in the author or authors of the work, unless that work is a work made for hire or a contribution to a collective work.[9] Copyright ownership may be transferred in whole or in part by any means of conveyance or by operation of law.[10] However, a transfer of exclusive rights is not valid unless the transfer is in writing, signed by the owners of the rights conveyed.[11] Clearly, the release, supra, constitutes a conveyance in writing, signed by the owners of Superman. However, was the transfer actually unnecessary in that Superman was actually a "work made for hire?"

2. Was Superman actually a work made for hire?

A work made for hire is defined as "a work prepared by an employee within the scope of his or her employment."[12] Current law applies a multi-factor test [The Reid Test] to determine if a work was produced for hire or was produced by an independent contractor.[13] All relevant factors are weighed with no single factor determinative.[14] More recently, the Second Circuit noted that there are five factors which would be relevant in nearly all cases: (1) the right to control the manner and means of production; (2) requisite skill; (3) provision of employee benefits; (4) tax treatment of the hired party; and (5) whether the hired party may be assigned additional projects.[15]

Accordingly, if the question of whether Siegel and Shuster’s Superman creation was a work made for hire were examined under current law, the courts would most certainly rule that it was not. Consider, though, would it be so clear under the law prior to the Copyright Act of 1976?

The District Court for the Southern District of New York in 1973, on this exact issue, held that Superman was a "work for hire" within the meaning of the Copyright Act of 1909.[16] However, the Court of Appeals soundly rejected that part of the ruling.[17] The Court of Appeals disagreed with the lower court’s reliance upon the state court’s finding that Siegel and Shuster’s revisions of the previous Superman material, at the request of their employer, Detective Comics, was tantamount to a conclusion that Superman was a work for hire.[18] The court rightly explained that the work made for hire doctrine is applicable only when the "motivating factor in producing the work was the employer who induced the creation."[19] Superman, however, "had been spawned by [Siegel and Shuster] four years before the relationship between his authors and the defendants existed."[20]

3. Was there a valid renewal of copyright?

The right of renewal is found in the Copyright Act of 1909 and reenacted, with modifications, in the Copyright Act of 1976 (modified again in 1998).[21] The purpose of renewal of copyright is to provide the authors of the work at issue a second opportunity to obtain remuneration for their work.[22] The Congressional debates leading up to the Copyright Act of 1909 reveal just such an understanding:

"It not infrequently happens that an author sells his copyright outright to a publisher for a comparatively small sum . . . If the work proves to be a great success and lives beyond the term of twenty-eight years . . . it should be the exclusive right of the author to take the renewal term, and the law should be framed [to protect that right]."[23]
Congress thus intended the Copyright Act to create a legal presumption that favors the author. The Act presumes that the author quite often finds himself in a poor bargaining position, usually an individual bargaining with a large corporation, when he first transfers his copyright. The Act allows him a future opportunity to "renegotiate the term of the grant once the value of the work has been tested."[24] As David Nimmer explains:
[I]n the absence of language which expressly grants rights in "renewals of copyright" or "extensions of copyright" the courts are hesitant to conclude that a transfer of copyright (even if it includes a grant of "all right, title and interest") is intended to include a transfer with respect to the renewal expectancy.[25]

The issue of whether Siegel and Shuster intended to convey copyright renewal rights with the original transfer of copyright was ultimately decided in 1974.[26] In that case, Siegel and Shuster unsuccessfully sought to establish that they, and not DC Comics, owned the copyright renewal rights to the Superman strip.[27] In 1948, Siegel and Shuster initially lost a declaratory judgment action with respect to their rights in Superman.[28] The 1974 case affirmed the 1948 court’s decree that the copyright renewal rights were vested not in Siegel and Shuster but in National Periodical Publications (DC Comics).[29] The decree, which enjoined Siegel and Shuster from publishing Superman independently, contained no limiting language and "settled for once and for all that [National Periodical/DC Comics] had all right and title to Superman for all time."[30] Accordingly, a renewal of copyright exercised by National Periodical Publications in 1966 was valid.

Siegel's Heirs’ Termination of Transfer of Copyright
1. Was there a valid termination oftransfer of copyright?

Under the Copyright Act of 1909, a copyright vested for twenty-eight years with a right of renewal for another twenty-eight years.[31] If that right of renewal was not exercised, then the copyright became public domain. Therefore, fifty-six years from the date of the initial copyright was the maximum amount of time in which a copyright holder was protected. The Copyright Act of 1976 changed the second term from twenty-eight to forty-seven years so that the life of the copyright was seventy-five years instead of fifty-six.[32] The Sonny Bono Act further extended protection to any copyright still in its renewal term, as of October 27, 1998, to a term of ninety-five years from the date the copyright was originally secured.[33] However, the Copyright Act of 1976, even as amended by the Sonny Bono Act, does not affect the Superman copyright battle insofar as it concerns terminations of transfer of copyright. The statute protects authors who had transferred copyrights prior to the Copyright Act of 1976 because they would have done so with the understanding that the rights would expire after fifty-six years. Upon the date in which the fifty-six years would have expired, the statute entitles the authors to file for a termination of transfer of copyright. However, the filing must be within a five-year period accruing from the original expiration date, as long as a two-year notice is given to the current copyright holder.[34] This is what recently occurred with the heirs of Jerry Siegel (the Siegels).[35]

In 1994, the original Superman copyright would have expired under the Copyright Act of 1909 and the clock began to run on the Siegels’ termination rights.[36] The Siegels had three years, then, in which to file a notice of termination of transfer. The notice was served, stating the effective date of the termination, and complying in form, content, and manner of service, with the prescribed requirements of the Register of Copyrights, on April 3, 1997.[37] Consequently, their actions constituted a valid termination of transfer of copyright. On April 16, 1999, fifty percent of the copyright in Superman reverted to the Siegels. They are now entitled to half the royalties associated with Superman and all derivative works from that date forward until the character becomes public domain in 2033.[38]

2. What Effect, If Any, of the Derivative Works Exception?

The notice of termination of transfer of copyright filed by the Siegels with the Copyright Office seeks to apply the termination to:
[E]ach and every work (in any medium whatsoever, whenever created) that includes or embodies any character, story element, or indicia reasonably associated with SUPERMAN or the SUPERMAN stories, such as without limitation, Superman, Clark Kent, Lois Lane, Perry White, Jimmy Olsen, Superboy, Supergirl, Lana Lang, Lex Luthor, Mr. MXYZTPLK (also known as Mr. MXYZPTLK), Ma and Pa Kent, Steel, the planet Krypton, Kryptonite, Metropolis, Smallville, or the Daily Planet.[39]

The documents then attempt to list (numbering over 500 pages) every Superman-related work ever created, from those early stories written by Jerry Siegel himself to such derivative works as the rock band R.E.M.’s song entitled "Superman."[40] According to the Derivative Works Exception, "A derivative work prepared under authority of the grant before its termination may continue to be utilized under the terms of the grant after its termination, but this privilege does not extend to the preparation after the termination of other derivative works based upon the copyrighted work covered by the terminated grant."[41]

What this exception would appear to do is protect DC Comics, and its parent company, Time-Warner, from any claim by the Siegels that they would be due royalties relating to any Superman-related derivative works created before the termination of transfer of copyright. In effect, the Siegel’s will be limited to those Superman-related copyrights found in the first issue of Action Comics and any future derivative works based directly on those copyrights.

Interestingly enough, the only recognizable copyrights from that first issue of Action Comics are Superman, Clark Kent and Lois Lane.[42] The planet Krypton was unnamed.[43] The newspaper was called the Daily Star.[44] The editor of the newspaper is an unnamed uncopyrightable generic "editor" character.[45] Clark Kent’s parents are unnamed.[46] The city of Metropolis is unnamed.[47] Thus, the planet Krypton, Kryptonite, Ma (Martha) and Pa (Jonathan) Kent, the Daily Planet and the city of Metropolis would all be recognized derivative works falling within the derivative works exception. As such, DC Comics wholly owns them because they were derivative works legitimately created as bona fide works made for hire.

Truly, there is some emotional satisfaction in hearing that huge royalties may begin to be paid to the family of this man who, in his youth, practically gave away all of his rights in an enormously profitable character that would soon become the second most familiar fictional character in the world.

However, that satisfaction is tempered by the realization that the derivative works exception prevents them from collecting on over sixty-years worth of innumerable derivative works.

Moreover, if the Siegels begin licensing the Superman character as originally created by Siegel and Shuster, such newly created derivative works would bear little resemblance to the modern recognized incarnation of Superman. The Superman who appears in the first issue of Action Comics wears the familiar (albeit somewhat less sophisticated) costume and does not have the ability to fly. He can "leap 1/8th of a mile [and] hurdle a twenty-story building" but not fly over them.[48]

The foregoing illuminates the fact that a termination of transfer of copyright would certainly mean something different to a surviving creator than it would to the surviving family of a deceased creator. Consider the recent filing, on December 6, 1999, of a termination of transfer of copyright by Joe Simon, the sole surviving creator of the original Captain America character, to take effect December 7, 2001.[49] In the Siegels’ case, they are clearly seeking some sort of financial compensation. In Simon’s case, he is seeking the opportunity, as a creative artist, to retrieve something he feels was lost -- a new chance to direct the future of the character more in line with his own personal vision rather than the bottom-line vision of a corporate entity like Marvel Enterprises, Inc.[50] Simon asserts his intent: "I’m looking forward to getting the Captain back after all these years."[51] Clearly the reward to an artist to regain some sort of control over something created some sixty years earlier is not easily quantifiable.

The Superman character owned by DC Comics has a rich sixty-plus year history of derivative works that have expanded upon that original foundation. Arguably, the entire genre of superheroes is derivative of that first appearance of Superman and DC Comics has a tremendous stake in retaining the progenitor of their entire stable of licensed characters. So, is there a remedy available to DC Comics other than a lump sum pay-out or half royalties until at least 2033? Consider the potential remedy based on Trademark law.

3. Is Superman a Valid Trademark?

A trademark can be a word, a symbol, or a device used as a brand for a product or service.[52] So, the essence of a trademark right is in the use of the mark.[53] The Lanham Act established and courts have recognized a broad rule of trademark protection where the mark or name is original, arbitrary, strange, and fanciful.[54] The ultimate issue in a trademark infringement action is whether the infringing party’s use of the mark, name or symbols results in a confusion as to the source or origin of the goods or services involved.[55] Clearly, the unique costume and look of Superman, with the stylized "S" chest shield and primary colors would be construed as a valid trademark owned by DC Comics. Consequently, any new Superman material licensed by the Siegels could be seen as willful and unfair competition intended to "dilute" the distinctive quality of the Superman trademark owned and still properly used by DC Comics.[56] DC Comics has an established history dating back to 1939 of vigorously defending their copyrights and trademark rights which are wrapped up in Superman and related derivative works.[57] It is a virtual assurity, therefore, that the full force of their legal department would be called in upon the first appearance of any competing Superman works licensed by the Siegels.

Conclusion

Superman has brought great joy to many children and adults throughout his over half a century existence. However, as an intellectual property, he has been perpetually plagued by copyright challenges. Kryptonite could kill him but only the Siegels’ termination of transfer of copyright could potentially siphon off half the future royalties tied up in his existence. Which do you think is more terrifying to the corporation licensing the character? Will the Time-Warner conglomerate sit quietly back and let that happen? That is highly unlikely. It can be safely assumed that negotiations between the parties are currently underway behind the scenes -- the outcome . . . unknown. One thing is sure, just as Joe Simon has already instigated an action to reclaim his Captain America character from the Marvel Entertainment Group, the Siegels have forever changed the status quo for creators of similar graphic literary characters.[58] Their action, however successful, has publicized the creator’s protections codified in the Copyright Act of 1976, rightly empowering these creators to take steps toward fair remuneration for their original works. The Siegels have opened the door. Who will be the next to step through?
__________________________________

[1] Quote from a letter, dated June 27, 1941, written to Jerry Siegel, co-creator of the character of Superman, from Jack Liebowitz, then-publisher of National Periodical Publications (later DC Comics). 1975 Siegal Interview Surfaces! DC to Siegel and Shuster in 1941: "You are Entitled to a Percentage of Profits from Superman"!, The Comic Book Electronic Mag., Sept. 24, 1999, at 232.1. (email journal downloaded Sept. 24, 1999) (web version available) .

[2] Siegel v. National Periodical Publications, Inc., 508 F.2d 909, 911 (2d Cir. 1974). In the opinion, Judge Milligan summarizes the creation of Superman as follows:
In 1933, plaintiff Jerome Siegel conceived the idea of Superman as a person of unprecedented physical prowess dedicated to acts of derring-do in the public interest. In the same year, together with plaintiff Joseph Shuster, he created a Superman comic strip which consisted of several weeks’ worth of material, some of which was completely "inked in" and ready for publication, and some of which consisted of mere black-and-white pencil drawings. The new strip was not published at this time, although plaintiffs continued to collaborate on other strips that were then in publication.

Id. See Ron Goulart, The Events Leading to "Superman," Comic’s Buyer’s Guide, Mar. 18, 1988, at 40.

[3]See Goulart, supra note 2.

[4]Id.

[5]Among these other strips were characters such as Slam Bradley, a tough, noirish sleuth, and Dr. Occult, who has the distinction of being the first "horror" themed comic book feature. Id. at 40-42. Other characters included Henri Duval, a swashbuckling French swordsman; Calling All Cars, a police feature starring a squad-car cop named Sandy Kean; Federal Men, a G-Man serial starring an agent named Steve Carson. Id.

[6]Siegel, 508 F.2d at 911. Action Comics, Jun. 1938, at 1-13. In satisfaction of the Copyright Act of 1909 requirements that a copyright notice contain the year-date, a symbol or word indicating copyright, and the copyright owner’s name, a valid copyright notice was run on the inside front cover: "Entire contents copyright 1938 by Detective Comics, Inc." Id. at inside cover. 17 U.S.C. sec. 19 (1909 Act).

[7]Siegel, 508 F.2d at 911. See Matt Brady, Carving Up Superman: It’s a Super-Custody Battle!, Mania Mag., at 1 (Aug. 31, 1999) < comics features supermanrights.html>www.anotheruniverse.com> (now defunct – author retains hard-copies on-file).

[8]Siegel, 508 F.2d at 911.

[9]17 U.S.C. sec. 201(a) & (b).

[10]17 U.S.C. sec. 201(d)(1).

[11]17 U.S.C. sec. 204(a).

[12]17 U.S.C. sec. 101(1).

[13]Community for Creative Non-Violence v. Reid, 490 U.S. 730 (1989).

[14]Id. at 752.

[15]Aymes v. Bonelli, 980 F.2d 857, 861 (2d Cir. 1992).

[16]Siegel v. National Periodical Publication, Inc., 364 F.Supp. 1032, 1036 (S.D.N.Y. 1973) (hereinafter National.)
We find that Superman is a "work for hire" within the meaning of the Copyright Act, 17 U.S.C. sec. 26. In Picture Music, Inc. v. Bourne, 314 F.Supp. 640, 650-651 (S.D.N.Y.1970), Judge Pollack ably described the elements of an employment for hire: "The existence of an arrangement going beyond an assignor-assignee relationship," the payment of wages or other remuneration, the "right of the employer to direct and supervise the manner in which the work is performed," and the "existence of an express contract for hire, expecially one calling for an author to devote his exclusive artistic services to his employer." These elements were indisputably present in the relationship between plaintiffs and Detective. The Westchester Court found that on December 4, 1937, plaintiffs entered into a written contract of employment with Detective with reference to two comic features known as "Slam Bradley" and "The Spy" (Finding of Fact 15) which provided that plaintiffs would "give their exclusive services as artists" in producing these features and that "any new and additional features which Employees produce for use in a comic magazine are to be first submitted to Employer, who reserves the right to accept or reject same within a period of Sixty days" (Finding of Fact 15) . . . The court further found that the release executed by plaintiffs on March 1, 1938, represented the exercise by Detective of the option granted to it by the employment agreement of December 4, 1937 (Finding of Fact 29). These findings, particularly when viewed in conjunction with the correspondence between the parties during 1937-38, establish that Detective as employer supervised and directed the work of plaintiffs in connection with Superman.
Id.

[17]Siegel, 508 F.2d at 914. "[T]here was no conclusion of law in the state court that the comic strip was a work for hire so as to create the presumption that the employer was the author. That issue was not litigated at all in the state court." Id.

[18]Siegel, 508 F.2d at 914.

[19]Id. (quoting Picture Music, Inc. v. Bourne, Inc., 457 F.2d 1213, 1216 (2d Cir. 1972), cert. denied, 409 U.S. 997 (1972) (emphasis added).

[20]Id. (emphasis added).

In the case before us Superman and his miraculous powers were completely developed long before the employment relationship was instituted. The record indicates that the revisions directed by the defendants were simply to accommodate Superman to a magazine format [rather than a newspaper comic strip]. We do not consider this sufficient to create the presemption [sic] that the strip was a work for hire.
Id.

[21]17 U.S.C. sec. 25 (1909) (renewal term set at 28 years); 17 U.S.C. sec. 304(a) (1976) (extended renewal term set at 47 years); Sonny Bono Copyright Term Extension Act and Firness in Music Licensing Act of 1998, Pub. L. No. 105-298, 112 Stat. 2827 (codified as amended at 17 U.S.C. sec. 304) (substituting 67 years for 47 years).

[22]Stewart v. Abend, 495 U.S. 207, 217 (1990).

[23]H.R. Rep. No. 60-2222, 2d Sess., at 14 (1909).

[24]Corcovado Music Corp. v. Hollis Music, Inc., 981 F.2d 679, 683 (1993).

[25]David Nimmer, 2 Nimmer on Copyright sec. 9.06[A] at 9-71 to 9-72.

[26]Siegel, 508 F.2d at 909-914.

[27]Id. at 914.

[28]Id. at 912-13.

[29]Id. at 913. "While it is true that the term ‘renewal copyright rights’ was not mentioned in the state court judgment, we are persuaded that the state court action finally determined that Detective, predecessor in interest to National, owned all rights to Superman without limitation." Id. The court was quick to point out that it is settled that "general words of assignment can include renewal rights if the parties had so intended." Id. (citing Venus Music Corp. v. Mills Music, Inc., 261 F.2d 577 (2d Cir. 1958).

[30]Id. at 913. The 1938 agreement explicitly conveyed the "exclusive right to the use of the characters and story, continuity and title of (the) strip" to DC Comics and their assigns "to have and hold forever" and Siegel and Shuster agreed not to use any of the Superman characters or "sell any like strip or story . . . at any time hereafter to any other person, firm or corporation." Id.

[31]17 U.S.C. secs. 24-25 (1909).

[32]17 U.S.C. sec. 304(a) (1976).

[33]17 U.S.C. sec. 304(b) (1999).

[34]17 U.S.C. sec. 304(c)(3)(4).

[35]17 U.S.C. sec. 304(c) grants that upon the death of Jerry Siegel (in 1996), his termination interest is owned, and may be exercised by his widow and his daughter with each owning one-half of his interest. Superman’s co-creator, Joseph Shuster died, without a surviving widow or surviving children, in 1993, so DC Comics retains the half it received from him.

[36]17 U.S.C. sec. 304(3). "Termination of the grant may be effected at any time during a period of five years beginning at the end of fifty-six years from the date copyright was originally secured, or beginning on January 1, 1978, whichever is later." Id.

[37]17 U.S.C. sec. 304(c)(4)(A)(B). See attached Notice of Termination of Transfer Covering Extended Renewal Term (hereinafter Notice of Termination) (downloaded Aug. 31, 1999) (hereinafter Notice of Termination). [Rather than "attached" as originally intended, I have included this document in gif images at the bottom of the footnotes for this blog]

[38]17 U.S.C. sec. 203(b). "Upon the effective date of termination, all rights . . . covered by the terminated grants revert to the author . . . and other persons owning termination interests." Id. See Lois wins rights to her Superman, BSX-DYEXP, Sept. 2, 1999. Arthur Levine, attorney for Jerry Siegel’s heirs, Joanne (his widow) and Laura (his daughter), is quoted saying "Mr. Siegel’s widow and daughter had the right to claim back the copyright and that is what they have done . . . All I can say is that it means we now have a position where both DC Comics and the Siegel family can licence [sic] Superman products, the only condition being that they give the other side 50 per cent of the profits." Id.

[39]See Notice of Termination, supra at 37.

[40]Brady, supra at 5. R.E.M., Superman, on Life's Rich Pageant (International Records Syndicate 1986).

[41]17 U.S.C. sec. 304 (c)(6)(A).

[42]Action Comics, supra note 6 at 1, 4 & 6 (respectively).

[43]Id. at 1.

[44]Id. at 4.

[45]Id. at 5.

[46]Id. at 1.

[47]Id. at 10.

[48]Id. at 1.

[49] Daniel Taub, Marvel’s Ownership of Captain America Challenged by Creator, Bloomberg News, Dec. 6, 1999.

[50] Id.

[51] Id.

[52] Craig Joyce et al., Copyright Law sec. 1.02, at 8 (4th ed. 1998). See 35 U.S.C. sec. 1127.

[53]Joyce, supra note 49.

[54]Federal Lanham Act, secs. 2, 45, as amended, 15 U.S.C.A. sec. 1052. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). Surely, the name "Superman" is easily recognized as being either "strange" or "fanciful" if not clearly "original."

[55]See D C Comics, Inc. v. Powers, 201 U.S.P.Q. 99, 104 (S.D.N.Y. 1978). Use of "Daily Planet" as the name of a newspaper is likely to be confused with rights associated with Superman and competes unfairly.

In June of 1938, plaintiff's predecessors created the fictional character called Superman -- the "man of steel who, with powers and abilities beyond those of mortal men, fights a never ending battle for truth, justice and the American way." The Daily Planet serves a dual function in relation to the Superman character. Primarily, it is the name of the fictitious Metropolis newspaper which employs Superman's alter ego, together with the other central characters in the Superman story. The Daily Planet is also the title of a promotional news column appearing from time-to-time within Superman comic books.
Id. at 101.

[56]See Federal Lanham Act sec. 43.

[57]Detective Comics, Inc. v. Bruns Publications, Inc., 28 F. Supp. 399 (S.D.N.Y. 1939), aff’d, 111 F.2d 432 (2d Cir. 1940) (defendant’s creation Wonderman constituted unfair use of the plaintiff’s copyrighted images and text); National Comics Publications, Inc. v. Fawcett Publications, Inc., 191 F.2d 594 (2d Cir. 1951) (lower court found the characters of Captain Marvel and Billy Batson to be unfair competition with Superman and Clark Kent, the Second Circuit found that claim baseless); Warner Bros., Inc. v. American Broadcasting Cos., 720 F.2d 231 (2d Cir. 1983) (Greatest American Hero television show is determined to infringe on the Superman character).

[58]Taub, supra note 43.

------------------------------------------------------------------------------------------------------














No comments:

Post a Comment

Thank you for your feedback! I always appreciate it.