News
broke last week that Image Comics is recalling a recently released comic book,
Dead Rabbit, from the market. A bar in New York, also called Dead Rabbit, filed
a trademark infringement lawsuit against Image and the retailer Forbidden
Planet NYC seeking $2,000,000 in damages and to cease publication of the book,
amongst other things. Apparently, the bar is known for producing menus in comic
book form and releasing versions the public can buy. They recently received a
trademark registration covering Dead Rabbit comic books.
As
readers of my blog will recall, I recommend doing clearance searches on the
title of your book before publishing it. Clearance searches are done to prevent
situations like this from happening—even though they rarely occur.
I don’t know if
the creative team, Gerry Duggan and John McCrea, did a clearance search for
Dead Rabbit, but even if they did, it would have been easy to miss this one.
Image Comics announced its Dead Rabbit comic book at Image Expo on February 21,
2018.[1]
The group owning the Dead Rabbit bar didn’t file a trademark application to
cover comic books until February 23, 2018.
Whenever someone
conducts a trademark clearance search, the first place they look is the U.S.
Patent and Trademark Office’s trademark database. Even if McCrea and Duggan did
so before announcing their book, a conflict would not have been readily
apparent. The only way for them to discover a potential conflict would have
been through general web searches, and I can imagine it would be easy to overlook
a bar named Dead Rabbit as a potential conflict for a comic book without some
serious investigating.
Image Comics began
soliciting orders for Dead Rabbit in July,[2]
and the first issue was released on October 3. The bar’s trademark registration
was not issued until September 4, 2018. The attorneys representing the bar did
not reach out to Image until October 22, and they filed a lawsuit on November
8, one day after the second issue of the comic book was released.
I don’t know why
they waited so long after filing the application, and receiving the
registration, before contacting Image. One theory would be that by waiting
until they have the actual registration issued, they would be in a stronger
position to get Image to stop distributing the book. Even though they didn’t
have a registered trademark when the Image book was announced, they still have
rights to the Dead Rabbit name if they were using it in commerce first. Another
theory would be that they waited until Image’s book was published, which would
potentially increase liability for any infringing party and put more pressure
on the defendants.
From my
perspective, this whole lawsuit is a bit of a mess, and, frankly, unnecessary.
Maybe I’m too trusting, but had someone reached out to Image or the creators
sooner, this situation probably could have been avoided. I’m pretty sure Image
and the creators would have changed the title if someone had said, “Hey, we
release comics under the Dead Rabbit name.” From my perspective, as someone who
has been on both sides of these disputes, it is far easier and cheaper to just
change a name than to try and fight a trademark dispute. Instead, by waiting so
long, it has created a massive headache for the parties involved, which the
cynic in me believes was probably the point.
One final note
that I haven’t seen addressed yet. The creative team is not a current party to
the lawsuit. They are mentioned in the complaint, but Image and Forbidden
Planet are the defendants. At this point, it looks like Image’s attorneys are
taking point on negotiating the lawsuit, but this doesn’t mean Duggan and McCrea
are off the hook. Many publishing contracts, especially creator-owned ones,
include an indemnification provision stating the creators will cover all the
costs and legal fees the publisher might incur by publishing their book if it
infringes someone else’s rights. If this provision was in Duggan and McCrea’s
contract, then Image could seek to recoup their legal fees from the creators.
Definitely a scary prospect for the creative team.
[1] http://www.comicon.com/2018/02/21/announcements-at-image-expo-2018/
[2] https://www.newsarama.com/41067-image-comics-october-2018-solicitations.html