A Legal Marvel: The Stark Difference Between Copyrights and Trademarks

Theatrical release poster

Since Iron Man was released to rave reviews in 2008, Marvel has created the most successful film franchise in history and has amassed a global empire while simultaneously re-energizing the comic book genre. As you might expect, many overly ambitious citizens have attempted to take a cut of Marvel’s profit by any means necessary, leading to some interesting lawsuits against the comic book mogul in the past few years.

In 2015 for instance, Ben and Ray Lai of Horizon Comics sued Marvel for copyright infringement on the grounds that Iron Man’s advanced super suit, as depicted in the company’s films, was plagiarized from Horizon’s character, Radix, a comic book figure who also wears a highly advanced suit of body armor. Although the indie comic company’s character was only created in 2001, the Lai brothers claimed that the original Iron Man wore a simple spandex suit when he debuted in 1963 and didn’t sport his new suit until 2008, when the movie franchise began. Luckily for Marvel, the Lai brothers’ allegations were considered questionable, and their case was quickly dismissed. The case does, however, raise an interesting question; what facts can substantiate a lawsuit based on a fictional character?

Fictional characters may be protected by both copyright and trademark law. In the intellectual property world, it is common knowledge that ideas themselves are not copyrightable. Instead it’s the expression of ideas in new and unique ways that earn a creator a limited-duration monopoly. In order for a fictional character to rise above classification as an idea or mere stock character, which isn’t entitled to copyright protection, the imagined figure must be sufficiently developed and contain distinctive characteristics. Using Iron Man as an example, Tony Stark is dramatized as a billionaire philanthropist playboy who is incredibly intelligent and annoyingly witty. Alone, none of these traits would make Iron Man a distinctive fictional character. But together, they constitute Tony Stark, a complex figure who has been entertaining audiences across multiple media forms for decades and is therefore entitled to the protection of copyright law.

Copyrights and trademarks protect different aspects of a figure’s likeness. While copyrights safeguard an owner’s exclusive right to use, copy, and exploit a fictional character, trademarks can lock down a figure’s name, physical appearance, and catchphrases when incorporated into or used in association with goods and services. Once again returning to the Tony Stark example, whenever one purchases a licensed product that sports Iron man’s likeness, the consumer should be able to trust that Marvel (now owned by Disney) proudly endorses the product, and that the product meets the comic company’s standard of high quality.

In addition to protecting different facets of intellectual property, trademarks and copyrights are governed by different systems of law with their own distinct rules, further distinguishing the two complex types of protection. For example, in terms of duration, copyrightable works created after January 1, 1978 are protected for the life of the last living author plus 70 years (or 120 years when the creator is a company). On the contrary, trademarks remain valid indefinitely, assuming that the mark at issue is still in use, and that the public continues to recognize the mark as a source indicator. Although the character of Tony Stark will eventually enter the public domain and be exploitable by the masses on the copyright side, for instance, Marvel could, in theory, benefit off of (and foreclose others’ rights to use) Iron Man in connection with merchandising forever.

When used together, copyrights and trademarks can be used to protect influential fictional figures from abuse by potential infringers while encouraging future creatives to come up with new, innovative, and fanciful characters. On the other hand, media companies’ motivation to keep tight control of their most popular characters keeps other from using them to tell new or unusual stories. That is, of course, unless the parody or fair use defenses apply . . . but that’s a story for another blog.

Matt Wagner is a law clerk at Berenzweig Leonard, LLP who is currently studying Music Business and Songwriting at Belmont University.

Does Fictional Hacking Software Used by Catwoman in The Dark Knight Rises Infringe on a Real-Life Trademark?

The U.S. Court of Appeals for the 7th Circuit recently heard the appeal of a trademark infringement suit arising out of Christopher Nolan’s 2012 blockbuster film The Dark Knight Rises, the latest installment of films featuring Gotham City’s Caped Crusader known as Batman along with other characters from the DC Comics universe. One such character, Catwoman, is portrayed in The Dark Knight Rises as attempting to use sophisticated hacking software to erase evidence of her criminal past from every computer and database throughout the world. While the software depicted in the movie, referred to as “the clean slate,” is entirely fictional, one e-security company brought a trademark infringement suit against Warner Bros. Entertainment, Inc., alleging that sales of its real-life desktop restoration product called “Clean Slate” declined after audiences witnessed Catwoman using “the clean slate” for an improper purpose.

The case was dismissed by the District Court for the Northern District of Indiana, which was affirmed by the 7th Circuit on appeal. In trademark infringement suits, courts consider the likelihood of consumer confusion; that is, whether the improper use of a trademark would cause the reasonable consumer to believe that both the legitimate and infringing uses of the mark originated from the same producer. While the plaintiff did register “Clean Slate” as a trademark, the court in this case found that even “unusually gullible hypothetical consumers” could not reasonably believe that Warner Bros. was actually licensing a “diabolical hacking tool” in connection with The Dark Knight Rises. Additionally, the court noted that Warner Bros. doesn’t even manufacture or sell software, making it very unlikely that a consumer in this instance would identify real and fictional goods of the same name as having originated from the same source.

While the use of the fictional “clean slate” software may not have been sufficient to prevent the sly and wily Selina Kyle from assuming the Catwoman persona, it was more than enough to draw a trademark infringement suit directed at Warner Bros. Entertainment in what is just the most recent example of sophisticated parties bringing intellectual property issues to the forefront of entertainment law. Holy trademark, Batman!

Frank Gulino is an award-winning composer and attorney with Berenzweig Leonard, LLP. He can be reached at FGulino@BerenzweigLaw.com.