© Copyright 1994, 1997, William E. Maguire. All Rights Reserved.
As published in NEW MATTER, the Official Publication of the State Bar of California Intellectual Property Section, Vol. 19, No. 4, Winter 1994.
PRIME®, ULTRAVERSE® and the "P" logo are © 1994 Malibu Comics Entertainment, Inc., a subsidiary of Marvel Entertainment Group, Inc. All Rights Reserved. Art by Brian Hitch. Used with permission.
PRIME, while having the distinction of being the world's strongest super human(within the ULTRAVERSE), is powerless by himself against infringers. PRIMEis smart, in spite of his tender age of thirteen years, because he knewhe needed trademark and copyright protection (which is also fortunate forthis author because it got him a real job). In this article, PRIME has agreedto disclose and discuss several strategies for protection against potentialinfringers.
Even before PRIME has an identity of his own,it must be determined whether his name is available. The first step in thisregard is to perform a screen search with an on-line service, e.g., TRADEMARKSCANor COMPU-MARK ON-LINE. In the case of PRIME, who has his own titled comicbook series, a search of the federal register for PRIME in InternationalClass #16 (hereinafter, Class) would be necessary. In addition, becausePRIME is a titled character, other merchandisable classes should also bescreened, including but not limited to, Classes #9, 24, 25, and 28 (moreinformation on these latter classes will be discussed below). If the screensearch reveals no obvious conflicts, then the next step would be to ordera full search from any one of several trademark research companies, e.g.,CORSEARCH, and THOMSON & THOMSON. This full search can search severalclasses. If the full search indicates that the mark searched still appearsto be clear of any potential conflicts, then it is reasonable to move tothe next step.
The time is now at hand to prepare trademark applications. Because PRIME will first be marketed in the United States, it is best to seek registration with the Patent and Trademark Office of the Federal Government (hereinafter, Trademark Office). Since PRIME is primarily and foremost acomic book character with his own titled comic book series, the first trademarkapplication will be in Class #16 for comic books, trading cards, posters,printed milk caps, and other printed matter. The other classes to consider(and a listing of some of the goods to be considered) are as follows:
The next decision to be made after selectingthe appropriate classes in which to file is the type of mark to be appliedfor, i.e., typed and/or stylized format. The typed format, for the drawingpage to be included with the application, provides the broadest protectionas the registration which issues allows one to use the mark in any styleor font. The stylized drawing is in logo format and the user is limitedto protection in this design format only. PRIME has protection in the broadercategory as he is registered in typed format.
Other applications as referenced above werealso prepared for PRIME since the potential for merchandising this characteris considerable. Therefore, intent-to-use applications (ITU) were preparedin Classes #9, 16, 24, 25, and 28. The ITU method was chosen because atthe time the plans were drawn up to exploit the character PRIME there wasno use in commerce to support a use based trademark application. In thecase of PRIME, within several months after the preparation of the ITU applicationin Class #16, the first issue of PRIME was shipped and sold in interstatecommerce. Soon thereafter, a Statement of Use was filed with the TrademarkOffice with a Certificate of Registration issued several months later. Oncethe registration issued PRIME was also able to use the official trademarknotice after his name, namely, PRIME®. Prior to registration only thesymbol should be used.
Had PRIME been infringed prior to the dateof his federal registration, then PRIME could have sought recovery in FederalCourt under § 43 (a) of the Lanham Act (15 U.S.C. § 1125 (a))which prohibits acts of false designation of origin. In addition, thereare state law theories available in state court for dilution, state or commonlaw trademark infringement, as well as idea misappropriation in some jurisdictions.
Another strategy for protecting the comic bookcharacter PRIME is copyright law. Under the U.S. Copyright Statute (17 U.S.C.§ 101 et seq.), works of visual art are protectible from the momentof their inception on any tangible medium. This means that the visual orgraphic depiction of PRIME is protectible, even without registration withthe Copyright Office in Washington, D.C. In the case of PRIME, however, the decision was made to register each issue of PRIME by preparing FORM VA forcomic books (for both the art and the text), in addition to separately registeringPRIME posters and trading cards. It should be noted that copyright doesnot protect the title or the name, PRIME, but rather in this particularcase the art and/or text.
Enforceability will depend upon the extentto which a company invests in and follows through on the above strategies.Trademark would seem to be the most prevalent and important strategy inconnection with the comic book industry. Copyright protection and registrationis also important, yet the issue of substantial similarity has not seenas much play in this arena. In fact, there are several notable artists whofrequently pay"tribute" to other artists by copying their styleand poses.
Such instances usually go unresolved with litigationbeing the only way to determine actual infringement. In any case, such commonfeatures as rippling muscles, body suits, capes and hair styles are notin and of themselves protectible under copyright law.
Recognizing that a comic book character hastremendous ancillary potential in terms of merchandising is paramount. Thecomic book itself is just the beginning of what fruit such a character maybear. This being the case, a trademark and copyright lawyer must be readyto advise his/her client as to what steps are necessary to protect thesecharacters. While not intended to be all inclusive, and with PRIME retainingseveral strategies up his bodysuited sleeves, this article has attemptedto demystify several strategies for protecting comic book characters.
CAVEAT: The reader is advised to check this hotlink of changes in the U.S.Patent and Trademark Office with respect to certain goods and services,esp.with respect to Class #9, 28, and 42 as they apply to computer software,video games, and internet web sites.
** William E. Maguire was Senior Counsel for MalibuComics Entertainment, Inc., a subsidiary of Marvel Entertainment Group,Inc., from 1992 - 1995, where he concentrated on the company's trademarks,copyrights and licensing. Currently, he is in private practice in Westwood,California, where he represents clients in the entertainment, publishing,sporting goods, toy, cosmetics and apparel industries. The author wouldlike to thank Gary Gittelsohn, Esq., Senior Executive Vice President, LegalAffairs, Marvel Entertainment Group, Inc., for his editorial comments andsuggestions. Thanks also to Jim Chadwick, formerly Art Director, MalibuComics, for the artwork provided and currently dba SUDDENLY CHADWICK! inMalibu, California. © 1994, 1996 William E. Maguire. All Rights Reserved.Phone (310) 470-2929 * Fax (310) 474-4710 * E-Mail firstname.lastname@example.org
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