A few weeks ago, I wrote a post
about a trademark infringement lawsuit involving the Dead Rabbit comic book
released by Image Comics. For more information, see the original post here, but
basically, a bar in New York named Dead Rabbit (“DRT”) made menus in comic book
form, planned to release a book utilizing the comics in 2018, and registered a
trademark shortly after Image announced a comic book series named Dead Rabbit
in February 2018. DRT then filed a lawsuit for trademark infringement against Image
and the comic book store Forbidden Planet.
Today, I’m going to do a little armchair
lawyering in the form of a Q&A.
Why did DRT sue a
comic book shop?
I believe there are a few reasons
why Forbidden Planet was sued. From the complaint, the most obvious reason is
that DRT, which is located in New York, wanted to make sure the lawsuit was
heard in New York. Image is a California company. By adding a defendant in New
York, the chance of the lawsuit being switched to a different court in a
different state is diminished.
Another possible reason Forbidden
Planet was included is to put pressure on Image to settle quickly. Retailers
and distributors don’t like being caught up in litigation over a product they
are selling but do not manufacture or control. By suing a retailer, there’s
more pressure on Image to make the case go away quickly.
Is there any risk to
Forbidden Planet?
Yes. Selling a product that
infringes a trademark constitutes infringement. Even though Forbidden Planet
was unaware the Dead Rabbit comic book infringed upon someone else’s trademark,
they could still be liable for the issues they sold.
Why did Image recall
the book?
The primary reason to recall the
book is to protect itself and retailers. As mentioned above, selling an item
that infringes someone’s trademark can make you liable, even if you didn’t make
it. Also, continuing to use a trademark after you’ve been made aware of it can
increase your liability to the trademark owner. It’s safer to pull the
allegedly infringing items until the problem has been resolved.
Will this case go to
trial?
Doubtful. From my perspective,
there’s not much reason to go to trial. Image has already recalled the book
from the marketplace, and it looks like they are agreeing to an injunction
against further publications bearing the Dead Rabbit name. The only remaining
issue would be monetary compensation, if any.
Due to the fact DRT filed the
trademark application after the comic book was announced, and its registration
was issued in September, there are bound to be questions about whether DRT can
actually enforce the federally-registered trademark against the comic book. A
particularly tricky issue will be determining when Image and Forbidden Planet
used the Dead Rabbit trademark in commerce. Is it when they began soliciting
orders, which was before the trademark was registered, or is it the on-sale
date in shops?
The likelihood of a court awarding DRT
its requested $2 million in damages also seems unlikely, especially considering
the issues surrounding the timing of DRT’s trademark registration. Unless DRT,
and its attorneys, are hoping to get legal fees awarded, the amount available
to recover doesn’t seem very high.
For instance, in orders sent to comic
book shops, issue 1 sold an estimated 19,031 copies[1] to
shops, and issue 2 sold an estimated 9,761 to shops[2].
If the shops sold every issue, which is unlikely, at $3.99 an issue, the total
sales would be $114,880.08—and not all of that money was pocketed by one
entity. Due to the somewhat convoluted flow of money through the comic book
distribution system (Consumer to Retailer to Distributor (Diamond) to Publisher),
the amount at issue in this case is likely to be less than the amount stated
above, unless it sold well through other retail channels. Regardless, while
it’s a decent amount of money, it’s a relatively small amount to get into a
high-stakes legal battle over.
[1] http://www.comichron.com/monthlycomicssales/2018/2018-10.html
[2] http://www.comichron.com/monthlycomicssales/2018/2018-11.html