A while ago, I posted an article I
wrote about ways content owners might be able to protect public domain works.
One of the scenarios I mentioned in my article, using trademark rights as a way
to protect the work, was actually used against a comic book publisher a few
years ago.
In
2010, Dynamite Entertainment launched a few new comic books adapting Edgar Rice
Burroughs stories that had passed into the public domain in the United States. The
titles of the comics were Lord of the
Jungle, featuring Tarzan stories, and Warlord
of Mars, featuring John Carter stories.
The
Edgar Rice Burroughs estate, ERB, Inc., filed a lawsuit in 2012. One of the
issues ERB asserted was that Dynamite’s titles for the new comics violated
ERB’s trademark rights by selling comics bearing titles confusingly similar to
those used by ERB. Even though the Dynamite comics did not mention the main
characters’ names in the title, the titles Dynamite chose had been used as
subtitles in the past. ERB also claimed Dynamite’s publication of the books diluted
or damaged its brands, partially due to some risqué covers associated with the
books, and Dynamite’s publication of the books would harm the comic book licensing
deals it currently had in place with another publisher.
Unfortunately,
from a legal observer perspective, the case did not get very far. After a few
initial filings, the parties settled the case. Interestingly, as part of the
settlement, Dynamite ended up acquiring the license to publish Tarzan and John
Carter comics that had previously been with another publisher.
Even
though we did not get a ruling that might have given us a better understanding
of the interplay between public domain works and trademark law, I still find it
an interesting case. It shows the importance of securing trademark rights to ongoing
titles, and a possible way for content owners to retain some control over works
that might fall into the public domain.
Barring
another extension of the copyright term, a number of early, high-profile comic
books should fall into the public domain over the next 15-20 years, such as the
first appearances of Superman, Batman, Captain Marvel/Shazam, and Captain
America. As tempting as it might be to reprint or create derivative works based
on these stories, anyone attempting to do so should consider if there any
trademark risks in doing so. Particularly, if the character is still being published.
