Dead Rabbit Q & A

            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.

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[1] http://www.comichron.com/monthlycomicssales/2018/2018-10.html

[2] http://www.comichron.com/monthlycomicssales/2018/2018-11.html

Beating a Dead Rabbit

            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.

    

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[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

Halloween Costumes & Knockoffs - Part II

    Once again, it's my favorite time of year. While a good many people love the Christmas season, Halloween has always been my favorite holiday. I love the costumes, the candy, the decorations, and the scares. 

    Last year, I wrote a piece about Halloween costumes and knockoffs. If you want to re-read it for the legal whys behind knockoff costumes, you can find it here. Otherwise, I’m just going to dive in to some of my favorite knockoff superhero costumes I’ve run across this year. (Note: all links affiliate links)

Oh Captain, my Captain!




This black-clad assassin will make many widows.




This one makes my lawyer-sense tingle.




You have failed this knockoff. (From what I can tell, this is not officially licensed. If it is, I retract my previous statement.)



Are they even trying?




I really need to get the new game.

Book Review: The Amazing Adventures of Kavalier & Clay

            A review of a book released in 2000 isn’t exactly timely, but I think the book is important to cover here nonetheless. I recently finished reading Michael Chabon’s The Amazing Adventures of Kavalier & Clay (affiliate link), and it was fantastic. As a fan of comics, I was aware of the book when it was released, but somehow I didn’t get around to reading it until this year. Personally, I’m glad I waited.

            The book follows the exploits of two cousins, Sam Klayman (aka Clay) and Josef Kavalier, as they enter the comic book industry in New York City in 1939. As tensions rise in Europe leading up to World War II, they create a new character, The Escapist, that quickly rises in fame. The book follows the ups-and-downs of their careers and the twists-and-turns of their lives, and it’s a gripping, entertaining read.

            One of the aspects I enjoyed the most about the book was its near seamless blending of real world fact with fiction. Jerry Siegel, Joe Shuster, Stan Lee, and many other comic book greats inhabit the world of Kavalier & Clay, and the book draws many anecdotes from the era. The story arc of Kavalier & Clay and the ownership of their character draw many parallels to Siegel & Shuster and Superman. Additionally, one of the main turning points of the book involves the Superman lawsuits DC brought against Victor Fox (Wonder Man) and Fawcett (Captain Marvel). There is even a scene where Kavalier & Clay and a group of creators lock themselves in an apartment all weekend to create a 60-page comic book, echoing a similar tale involving Jerry Robinson, the co-creator of the Joker and Robin.

            As I said previously, I’m glad I waited 18 years before reading this book. Some of the nuances and references would have been lost on me had I read it when I was younger. Even so, it is an excellent book for anyone looking for a compelling story set during the golden age of comics.

Contracts and Social Media Policies

            In light of the online uproar over the small publisher Alterna’s recent decision to enforce a social media policy against the creators whose works it publishes, now seems like a good time to talk contracts. The social media policy in question required creators who have work published by Alterna to refrain from using blockchains or other automated means on Twitter to block users from communicating with the creators.

            In general, when a publisher wants to publish your creator-owned work, you will sign a publishing agreement. This agreement will set forth the terms that govern your relationship with the publisher, such as how many issues might be published, how and when you will receive money from sales of your work, and, hopefully, when and how the contract will be terminated. It is also important to remember, in most cases, publishers are not the employers of those whose books they publish. The relationship between the publisher and the creator is contractual, and the contract governs the relationship between the publisher and creator.

            As I’ve written before, it is important to read and understand your contracts. In particular, one thing I’ve seen trip up people before is a reference in the contract to other terms, conditions, or policies that are not actually presented to you. It is up to you to seek them out and review them, and if you sign the agreement, then you are agreeing to them, whether you’ve read them or not. It is not something I have seen often in the comics publishing world, but it is prevalent in other industries.

            If the terms the publisher is trying to enforce against you were not originally agreed upon in the contract, then they are not part of your agreement. You do not have to agree to them. The original contract should still control your relationship. If the publisher is attempting to introduce and enforce new terms or conditions at a later date, then it should be considered a new agreement, or at least a modification to the original agreement requiring both parties’ consent.

            Frankly, a publisher attempting to enforce a policy that was not previously known or agreed upon has put themselves in a difficult position. The only real threat the publisher has is to terminate the publishing agreement, if they are contractually able to do so. Otherwise, the only options are to continue operating under the terms of the previous agreement, which renders their new policy moot, or attempt to get you to agree to the new conditions, which you don’t have to do. If it’s not clear that they can terminate the agreement without your consent, then the publisher potentially could be in breach of the agreement by threatening this course of action or otherwise taking a course of action harmful to the creator. The final option, and the one it appears a number of creators are exercising in this case, is to mutually agree to end the agreement.

            I harp on it a lot, but it is so important: make sure you understand your contracts and your legal rights. Instances like this, where a publisher introduces a new policy many of its creators may disagree with, are not common, but they do occur. By understanding the language in your contracts and your rights, then you can, hopefully, attempt to navigate the situation without too much damage to your work or your brand.

Book Review: Kirby: King of Comics

           Today marks the 101st birthday of Jack Kirby. Kirby, who passed away in 1994, was one of the most prolific comic book creators of his generation. With the popularity and endurance of the characters he created, his legacy reaches far into today’s comic book world. 

Originally published in 2008, Mark Evanier’s Kirby: King of Comics (Anniversary Edition) (affiliate link) received a revised version in 2017, which I recently finished reading. For those wanting to learn more about Kirby, it is a must read.

            The book tracks Kirby’s life from childhood, to his early jobs, through his career in comics, his death, and the legacy he left behind. It is well-written, easy-to-read, and features great Kirby art and anecdotes about the “King,” including an amusing anecdote about how he received that particular title.

            Of particular interest to me were the business and legal issues touched on by the book, particularly during his falling out with Marvel in the 1960s. As related in the book, Kirby was aware of the increasing value of his contributions to Marvel, and, at his wife’s suggestion, even stopped creating new characters for the company to exploit. He frequently tried to obtain a better deal for himself, but was put off or ignored.

When Marvel was sold to Perfect Film and Chemical Corporation, the company was intent on keeping Stan Lee, believing he was main catalyst of Marvel’s success, but it was unaware of and didn’t care about Kirby’s contributions. As Kirby and his lawyers pushed for a better deal, or any deal at that particular point, the new owners stopped responding. The lack of respect for his contributions and the absence of long-term commitments or recognition for his contributions were primary factors in Kirby’s move to DC comics.

            While tales of character ownership, contract disputes, and lawsuits pop-up in the book from time-to-time, the revised edition also includes a chapter on the Kirby family’s attempts to reclaim copyright ownership to some of characters Kirby created for Marvel. While it doesn’t get too far into the legal issues involved, it does track the thoughts and feelings of the family leading up to their filing the copyright termination notices necessary to reclaim ownership, the initial settlement talks, and Disney’s abrupt end to the settlement talks by filing a lawsuit to seek a declaration that the characters Kirby created were made as a work-for-hire. It succinctly tells how the Kirby family lost in the district court and the second circuit, with those courts agreeing that Kirby’s contributions were done as a work-for-hire, and it briefly discusses the attempt to get the case heard before the U.S. Supreme Court, which was rendered moot after Disney/Marvel and the Kirby estate finally settled the case.

            Two themes I took away from the book were Kirby’s desire to provide for his family, and his ability to see value in comics when others didn’t. His focus on providing for his family guided him through many of his career decisions, and it led him to seek new deals to properly reflect his contributions, which he didn’t always receive. When Marvel was sold in the ’60s, the book relates how Kirby felt the value placed on the company was too low, remarking that the character Ant-Man was worth more than what Marvel was sold for. As the book points out, Kirby recognized the potential value in the characters and stories. Time has shown the value of Kirby’s contributions to the world of comics and proved he was right.   

Kirby: King of Comics is a well-crafted biography written by a former assistant, and friend, to Jack Kirby and continues to be the definitive book on his life and legacy.

Update - Hasbro and DC's Bumblebee Trademark Lawsuit

           Last year, I wrote about Hasbro filing a trademark lawsuit against DC Comics. The dispute was about DC's Superhero Girls toys featuring the character Bumblebee, which Hasbro believed infringed on its Bumblebee trademark protecting its Transformers character. I’ve continued to follow the case, and as of August 14, 2018, less than one year after the lawsuit was filed, it appears the parties have settled the case.

            DC’s counsel, James D. Weinberger of the law firm Fross Zelnick Lehrman & Zissu, P.C., filed with the court a letter to request dismissal and stating the parties have reached a settlement in principle. Details of the settlement are not given.

            As I mentioned in my original post, it was unlikely this case would actually see trial or reach a decision on its merits. Since the settlement appears to be confidential, only the parties’ actions going forward will give us clues as to what was agreed upon. I look forward to patrolling the toy aisles to see if there are any apparent changes to the packaging or branding of DC’s Bumblebee toys in the near future. 

Why Creators Don't Want to Hear Your Idea

            In the wake of San Diego Comic-Con, I’ve been seeing creators on social media reminding their fans to not pitch them their ideas for stories. Why is this? Because they, and their employers, don’t want to be sued.

            While copyright infringement is probably the first thing you’d think of, those types of lawsuits have proven difficult for plaintiffs to win. In order to win a copyright infringement lawsuit, you must have a valid copyright in a work fixed in a tangible medium, and the complained-of work must be substantially similar to the plaintiff's. Those two elements usually trip up a would-be copyright lawsuit, particularly because the plaintiff’s “work” is not eligible for copyright protection because it’s merely an idea.

            Since copyright infringement is hard to win, plaintiffs have turned to suing under an implied-in-fact contract, or more generally, an idea theft lawsuit. Basically, the plaintiff claims they described and/or showed their work to the defendant with the expectation that if the work was used, they’d be compensated for it. Instead of basing the claim in copyright law, it is now based in contract law, and by using the plaintiff’s idea without compensation, the defendant breached the implied contract. These lawsuits have been easier for plaintiffs to get deeper into court proceedings than copyright infringement lawsuits, but they have not met with great success. More often than not, especially in Hollywood ones, the plaintiff eventually loses.

            Even so, studios and companies would prefer to not fight these lawsuits, and it’s just easiest to not accept unsolicited pitches. It’s the main reason most comic book publishers with established properties do not hear unsolicited pitches for their comics, and it’s a policy they encourage their creators to follow as well.

            While your story idea might be a good, or even a great one, the risk for a creator is too high for them to hear it.

Do Dr. Seuss and Fair Use (Comic)Mix?

            I’ve been following the Dr. Seuss versus ComicMix case for a while. While the case is still ongoing, the ComicMix website recently posted a plea for help. ComicMix is starting to run out of money, and they are now seeking donations to continue defending the lawsuit.

           ComicMix chose to publish a mash-up book using intellectual property it does not own, and involving an area of copyright and trademark law that is still not well-defined, and it now finds itself involved in a lawsuit that could help define the legal boundaries of fair use, mash-ups, and even fan art, for everyone else.

            ComicMix’s plight is not atypical and brings up two points I’d like to discuss. First, fair use is a defense against copyright infringement claims. Second, defending your rights in the American legal system can be expensive and when you’re litigating a dispute in an area of law that is still being developed, your chances of winning are uncertain.

            As I’ve mentioned before, fair use is a strong defense to a copyright infringement claim. However, in order to avail oneself of it, you are probably going to be sued. Even though some courts have found the copyright statute to require copyright owners to consider whether fair use applies before filing an infringement lawsuit (see for example Lenz v. Universal Music Corp., 801 F.3d1126 (9th Cir. 2015), there have not been any cases, of which I’m aware, where the copyright owner has faced any adverse consequences for initiating a lawsuit.

            Even in the Lenz case, the court gives copyright owners leeway by stating they must have a “subjective good faith belief that the use was not authorized by law[,]” i.e., fair use. Basically, in my opinion, if an intellectual property owner believes you are infringing on their work, you are probably going to get sued if you don’t capitulate to their requests.

            No matter how great you think the chances are you will win your case, litigation is time-consuming and attorney’s fees can add up quickly. For the most part in the American legal system, each party pays their own fees. While there are some statutes that allow for a winning party to recover their attorney’s fees from the other party, it is not very common.

            One of the unfortunate side effects of the system is that it is safer and cheaper to not fight than to litigate a dispute, even if you believe you are in the right. I do applaud those people and companies that choose to fight. Without people willing to litigate cases, the boundaries of the law would not be explored and defined. Even when someone fights and loses, often society gains because the judicial decisions help shape and guide the decisions of others facing similar dilemmas.

            If you are interested in donating to assist ComicMix, the link is here.    

           

Tarzan, John Carter, Trademarks, and the Public Domain

            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.    

Why Reversion Rights Matter

            During the panel I hosted at C2E2 and another one I listened to, the concept of reversion came up multiple times. Since I believe reversion rights are an important concept for creators to understand and to ask for, I’ll talk a little more in-depth about it today.

            Reversion rights are when the rights you have granted to someone, e.g., the right to adapt your comic book into a film or TV show, automatically return to you. Typically, this occurs because of conditions set forth in your contract, such as a failure to raise enough capital within a set amount of time, failure to produce and distribute the movie/TV show within a set number of years, or it can even be a continuing progression of achievements that must be met in order for the other party to retain the rights to your work. If you do not have reversion rights, or termination rights, in your contract, you might not be able to reclaim the rights you have transferred.

            Reversion and termination are similar, but are structured differently. As I said before, reversion occurs if certain conditions aren’t met in the contract, and it’s typically supposed to occur without any action on your part. If the other party doesn’t meet the requirements, the rights come back to you on a certain date. It can also apply to all of the rights granted in the contract or only to some. Depending on the deal, a reversion could be the effective termination of the agreement, or the deal may continue with some of the rights returning. Termination provisions, while often dealing with similar subject matter, usually require an action on your part—a notification to terminate—in order for the contract to be terminated, and once a contract is terminated, the relationship is over.

            Reversion rights are important because it places an obligation on the party licensing the rights to your work to actually do something with those rights. Otherwise, they will lose the rights they’ve acquired. Reversion gives creators an easy way to regain unexploited or underutilized rights to your work and, hopefully, license them to someone else. You get more opportunities to see your work adapted into other media and more chances to make additional money.  

Wizard World Pitchfest

When the partnership was announced between Sony Pictures and Wizard World to hold pitch sessions at conventions, it was a little light on details. Now, we know how the two companies will handle the pitch sessions.

In advance of Wizard World Portland, Sony and Wizard World have revealed how to participate in their pitch process. Instead of pitching to Sony, the pitch process is with Columbia Pictures, a Sony subsidiary. To participate in the 2018 Portland Pitchfest, you must attend Wizard World Portland as an attendee, exhibitor, or artist, submit your idea for a movie through the online portal, and be selected to pitch your idea at the show. You also must agree to two privacy policies and a Submission/Pitch Release.

I skimmed over the Submission/Pitch Release, and there is a lot of the typical information you’d expect in it. Just because Columbia is hearing your pitch it isn’t obligated to buy your idea, compensate you for your idea if they don’t use it, or produce your pitch. If they like your pitch, you agree to negotiate with them. Also, I didn’t see anything obligating you to pay Wizard World. So, any money Wizard World receives should be coming directly from Columbia.

Columbia also lists a number of ways they won’t compensate you if it ends producing something similar to your idea. If your pitch “(a) is substantially similar to or contains significant elements of a concept Company already had under consideration or in development at the time of my submission or presentation, or (b) is not unique, novel, original, or concrete so as to be entitled to intellectual property protection under the law, or (c) has been made public by anyone at the time of my submission or presentation, or (d) is in the public domain or otherwise would be freely usable by a third person as a member of the general public, or (e) is not protected by federal copyright law, or (f) was not fixed in a tangible means of expression or (g) was, is or may be obtained by Company from other sources, including without limitation, Company's own employees or associates or those of third parties independently of my creation, whether before or after the date of my submission and/or presentation[,]” then Columbia will not be obligated to compensate you for your pitch. 

The agreement also includes some other unfavorable language to those pitching to Columbia. For instance, if you have to sue Columbia, by agreeing to the release you agree to binding arbitration instead of court, and the arbitration will take place in Los Angeles. Additionally, any damages you might get from Columbia are limited to fair market value of the script – at the time of original negotiation. Furthermore, you agree you cannot seek an injunction against Columbia preventing release of any TV show/film/media/etc. produced using your idea during the course of litigation, which can be a major bargaining chip. Also, if you lose in a lawsuit/arbitration, you will pay all of Columbia’s fees. Another interesting piece of language in the release puts the burden on you to prove Columbia didn’t independently develop the idea, had access to it, copied it, and otherwise establish all elements of Columbia’s liability. You also agree that your submission doesn’t presume Columbia took or copied your pitch or otherwise had access to your pitch, other than the person hearing it. 

What steps can you take to protect your idea if you are interested in participating in the pitch process at Wizard World? Based on the language giving Columbia broad exemptions, and as a best practice in general, you want your pitch to be as original as possible, as fully developed as possible, and committed to writing, paper, or other media in some way.

I still believe this to be a worthwhile effort for Columbia to find some different ideas outside of the typical Hollywood landscape. By requiring submissions in advance, they can determine if there are any ideas they are actually interested in hearing before committing resources to attend a Wizard World convention, which can limit their financial burden. Even though the release seems ridiculous and broad, Columbia needs it to manage its risk. Idea theft lawsuits are common in Hollywood, and it’s the main reason most companies don’t accept unsolicited pitches.

If you choose to participate, good luck, have fun, do your best, and don’t forget to negotiate. 

Authorizing Fan Art

Note: When I’m discussing fan art, I am using the term broadly to include any fan-made work, including art, film, books, or music.

I’ve written about fan art issues a few times, including an initial piece on the legality of fan art and one about case law/status. It’s a topic I revisit for a few reasons. First, while it is seemingly a black or white—legal or not—issue, it exists in a gray area of the law. Second, with the continued rise of fan cultures and the internet, it’s a topic that won’t be going away anytime soon. And, finally, it places owners of famous intellectual property in a difficult position of trying to protect their rights while also not alienating fans. Today’s post is going to explore some programs implemented by intellectual property owners attempting to address that last topic.

            Fan art can be a blessing and a curse for intellectual property (IP) owners. For instance, it’s exciting and healthy for your brand if fans generate art featuring it. It shows the brand is popular, and your fans are engaged. However, it can be a problem when the fan art negatively impacts the original IP, either through competing directly with the original IP or through tarnishing the brand’s image. How can IP owners navigate the area between shutting down all fan art to protect themselves and encouraging fan engagement? One of the options IP owners are exploring is allowing fans to create fan art, but giving them conditions to follow.

            AsI wrote about previously, CBS/Paramount, the owners of Star Trek, ran into a problem when a group raised over $1,000,000 on Kickstarter to fund production of a “fan film.” CBS/Paramount sued to stop production of this film, even though they had never stopped production of a fan film or TV series previously. There was an outcry from the fandom, and even the director of the next major Star Trek film, Justin Lin, expressed his displeasure with the tactic. This is what prompted CBS/Paramount to issue official guidelines for fan films, which I wrote about here. If fans follow the rules, then they won’t receive a nasty letter or lawsuit from CBS/Paramount.

            More recently, Marvel announced a service allowing fans to create their own comics. However, it was mocked when it was announced because of the terms imposed. Among the lengthy conditions, comics the users create aren’t supposed to include:

· Content that could frighten or upset young children or the parents of young children

· Sexually explicit images (pornography, etc.)

· Suggestive or revealing images (bare midriffs, legs, etc.)

· Sensationalism (killer bees, gossip, aliens, scandal, etc.)

· Potentially slanderous or libelous content

· Obscenity, bad or offensive language, proxies for bad or offensive language (X@#%!), body parts, or noises related to bodily functions

· Politics (lobbyists, PAC sites, political campaigns, alternative lifestyle advocacies)

· Death

· Discrimination based on race, sex, religion, nationality, disability, sexual orientation, or age

· Illegal activities or any materials that infringe or assist others to infringe upon any copyright, trademark, or any other intellectual property rights

· Misleading language

· Images or content that is in any way unlawful, harmful, threatening, defamatory, obscene, or harassing

· Unauthorized or unapproved use of Marvel creative assets (such as talent, logos, characters, movie logos, theme park imagery, color scheme, font[s])

· A copy or parody of current or past Marvel advertising creative (from any media form)

· Other controversial topics (social issues, etc.)

· Implied affiliation or favored status with Marvel

· Double entendres

· Amusement parks (other than Disney amusement parks)

· Movie studios (other than studios affiliated with Marvel)

· Animated movies (other than Marvel or Disney movies)

· Guns (firearms, bullets, etc.)

Obviously, the above list, which only includes some of the restrictions in the terms of use, puts some serious limitations on what is authorized, and it’s clear Marvel wants to limit material that is embarrassing, confusing, or risky to the company. Personally, I am impressed by this list. It’s hard to come up with every possible scenario that could embarrass Marvel/Disney, but whoever came up with this list has come close.

            Amazon also offers a program for aspiring fan writers. It’s called Amazon Worlds, and it allows fans to write new stories set in fictional universes, such as  Gossip Girl, The Vampire Diaries, G.I. Joe, and many of the Valiant Entertainment comic book titles. Amazon worked out a deal with the original IP owners to publish this fan fiction, and the IP owner and the fan split the royalties, with the fan receiving between 20-35% of net revenue from e-books. I doubt anyone will get rich off of this, but it is one of the only places I know where a fan can publish a work set in an established, fictional universe and make money off of it without specter of a lawsuit, or at least a cease-and-desist letter, lurking. Again, the IP owners place restrictions on what can be done. For example, here are the guidelines for Valiant’s X-O Manowar:

1.       Pornography: We don't accept pornography or offensive depictions of graphic sexual acts.

2.       Offensive Content: We don't accept offensive content, including but not limited to racial slurs, excessively graphic or violent material, or excessive use of foul language.

3.       Illegal and Infringing Content: We take violations of laws and proprietary rights very seriously. It is the authors' responsibility to ensure that their content doesn't violate laws or copyright, trademark, privacy, publicity, or other rights.

4.       Poor Customer Experience: We don't accept books that provide a poor customer experience. Examples include poorly formatted books and books with misleading titles, cover art, or product descriptions. We reserve the right to determine whether content provides a poor customer experience.

5.       Excessive Use of Brands: We don't accept the excessive use of brand names or the inclusion of brand names for paid advertising or promotion.

6.       Crossover: No crossovers from other Worlds are permitted, meaning your work may not include elements of any copyright-protected book, movie, or other property outside of the elements of this World.

7.       The entries must present the protagonist(s), supporting character(s), and antagonist(s) in-character.

8.       No use of profane language or offensive racial, cultural, or sexual slurs.

9.       No extreme or persistent violence, including but not limited to descriptions of blood, gore, and/or bodily fluids.

10.    No erotica, including frequent, prominent, or graphic descriptions of sexual acts.

11.    No references to acquiring, using, or being under the influence of illegal drugs.

12.    No wanton disregard for scientific and historical accuracy.

13.    Aric does not act primitive or of lesser intellect despite being new to the social customs and technological advancements of the 21st Century. Aric is an intelligent, thinking man who can understand modern ideas in the context of his era of origin.

14.    Despite being a man from another time, Aric does not torture his enemies, nor does he engage in violence against children.

Many of the restrictions set forth here are similar to the others we’ve seen. IP owners are primarily worried about a fan creating a work that tarnishes or devalues their brand or exposes them to liability, and some also have concerns about fans profiting from their fan-made works.

            Fan art can be fun to create, and it can help aspiring writers and artists develop and refine their skills. If you want to create legal, authorized fan art, check to see if the brand you love has issued guidelines allowing fans to create content. You might be surprised, and if they’re generous, you might be able to make a little money. If the brand you want to use hasn’t issued guidelines, proceed carefully. Following the guidelines set forth by other brands might keep you out of trouble, but there is still risk whenever you create and distribute a work featuring intellectual property you don’t own.   

Lessons Learned from Self-Publishing

            It’s been one year since I released my book Comics Startup 101: Key Legal and Business Tips for Comic Book Creators. Since it’s my first book, and I went the self-publishing route, I thought my readers would like to hear some of the things I learned.

            I decided to self-publish my book for a few reasons. First, I wanted to keep the price low and be able to control it. It was important to me that my book be affordable so creators could buy it without putting a dent in their income. Additionally, I wanted to get out into the public quickly. I knew it would take a long time to submit to publishers, wait for them to respond, and then go through their editing process. It wasn’t something I wanted to do for this book.

            I chose Amazon’s CreateSpace program because books published through it are listed Amazon and any online bookseller who chooses to opt-in to their product offerings. It also was easy to make it available digitally on Kindle, and there were no initial print run demands. The book is only printed when ordered, and I have no obligations to order a set amount.

            How has my book performed? The sales have been in line with my modest expectations. I knew I wasn’t going to get rich of this book. It’s a short book that appeals to a narrow audience. I’ve sold 36 physical copies through Amazon and extended channels and 12 Kindle copies. I know, those aren’t eye-popping numbers, but I’m pretty happy with them. I’ve also sold an additional 10 copies in-person.

            However, there are far more copies of my book circulating among the public than what I’ve sold. I have given away a number of copies at conventions, for reviews, for gifts, and for strategic purposes. The number of free copies I’ve distributed totals 71. It’s not a surprising number. People love free books, and I’m happy to get mine  in the hands of as many people as possible. Obviously, I’d prefer they pay, but under certain circumstances, distributing free copies makes sense.

            So, what have I learned? Self-publishing is hard. You are responsible for the book from start to finish. The likelihood of someone discovering your book by accident and buying it is slim. Here are four takeaways I’ve learned.

1. Edit, edit, and edit some more.

Please, make sure to edit your book. Obviously, you’ll be responsible for doing some of the editing, but hire an editor, or find an editor willing to help you out (Hi, wife!), to edit your book. It will make it better. Looking over it once isn’t enough. Read your book so many times you’re sick of it. I’m pretty sure my wife and I read through my book at least 10 times, and each time, we’d find something else to fix or change.

2. Make it look good.

Make your book look as attractive as possible. Design a compelling cover. Make sure the interior looks great. The more professional your book looks, the more likely someone will be to buy it. Some publishers will offer basics for formatting your book, and some offer “add-on” services for a fee. Make sure you choose what works best for you and your budget.

3. Promote, promote, promote

Sadly, your great looking book won’t promote itself. You are going to be responsible for getting the word out and promoting it. Talk about it online before it’s released. Submit copies to be reviewed. Find outlets where you can talk about and promote your book. For me, I saw a noticeable sales bump every time I went on a podcast or gave a panel at a convention. You will be your best salesperson. So, make sure to get out there and promote it.

4. Profit?

Keep your expectations of profit in check. It’s possible to make good money by self-publishing, but it will probably take a while to turn a profit. You are going to be spending a lot of time, energy, and money on making and promoting your book. Make sure you understand how much money you will make on each book, and how you will get paid. If you’re self-publishing, evaluate a number of publishers and choose the one that’s right for you.

Some people look down on self-publishing. I don’t. I think there are number of valid reasons to do it, and honestly, some authors make a killing doing self-published work. If you choose to go the self-published route, keep in mind the things I discussed above.

If you’re interested in checking out my book, here’s the link (affiliate):

Wizard World & Sony

     Wizard World and Sony Pictures announced the other day they are partnering up to locate new properties for film development at Wizard World conventions. According to the reports, Wizard might be getting a cut of potential deals. Most people in the industry were taken by surprise, and some even mocked the deal—can’t Sony just buy a ticket to the conventions and talk to people themselves?

Here are my initial thoughts on the deal:

1. Who’s doing the work?

Is Sony sending someone to all of these conventions? My gut tells me no. If they’re smart, Sony would’ve structured the deal so as to make Wizard do all the work. Let Wizard host the pitches, sort through the materials, and present to Sony what they think is best. In reality, this puts Wizard in a scout role, with Wizard only getting a cut if Sony chooses to sign a deal with any of the creators Wizard presents to them.

2. Size

For some creators, this could be a good thing. San Diego Comic-Con and the other conventions in and around Los Angeles. aren’t getting smaller. It’s easy for your property to get overlooked. At the smaller Wizard World shows, newer creators might be able to be seen and heard.

3. Location

Somewhat related to the size of the conventions, for some aspiring creators, it’s a lot easier to make it to a Wizard World show. There are a lot of them in cities both large and small across the country, and many are within easy driving for many people. As mentioned in the press release, it might be easier to find some hidden gems.

4. Cost

If Sony has structured the deal as I envisioned it above, then there’s little risk to them. Make Wizard do the work, and pay them a finder’s fee if they find something good. Also, it’s probably cheaper for many aspiring creators to go to a Wizard World show than to travel out to Comic-Con, WonderCon, or New York Comic Con.

5. Contracts

There are obvious benefits to this deal for Wizard and Sony, but creators need to pay attention. Particularly, pay attention to what you’re signing. Will Wizard be incorporating anything relating to this in the Artist Alley or Exhibitor forms? I doubt it; such agreements should be treated separately. But, it’s best to be overly cautious. If you go to a pitch meeting and are offered a deal, be wary of signing anything without reviewing it and/or having an attorney review it. You shouldn’t feel pressured or put on the spot to sign a deal. As I’ve said elsewhere, pay attention to the details – Who gets money? Who gets rights to what, and for how long? Are there timetables to make things happen? Do you get your rights back if nothing happens? These are just a few of the questions to keep in mind.

     Overall, the partnership between Wizard World and Sony is surprising, and I will be following the details of it closely. Hopefully, it might lead to some breaks for lucky and talented up-and-coming creators. 

Practical Tips for Protecting Public Domain Characters

Editor’s Note: The following post is adapted from an article that appeared in the Entertainment & Sports Lawyer. You can find the original article here.

So, you own the rights to a character that is about to fall into the public domain under Copyright law. When this happens, you will lose control over the character and anyone is free to come along and create new works using your character. Is there anything you can do to protect and retain control over your character?

A LITTLE BACKGROUND
Currently, U.S. copyright law protects original works of authorship created on or after January 1, 1978 (i) for the life of the author plus 70 years, or (ii) 95 years from first publication or 120 years from the date of creation, whichever is shorter, for works made for hire, anonymous and pseudonymous works.[1] Once a work’s term of protection has ended, the work enters the public domain and is available for anyone to use.[2]

Looking solely to copyright law, it does not appear that there is anything you can do to extend the copyright protection for a character other than to have the character continually evolve over the years. However, “a copyright affords protection only for original works of authorship and, consequently, copyrights in derivative works secure protection only for the incremental additions of originality contributed by the authors of the derivative works.”[3]

WILL SHERLOCK HOLMES SOLVE THE CASE?
In 2014, the Seventh Circuit court of appeals addressed the issue of whether a continually evolving literary character should fall into the public domain only after all works containing the character have entered the public domain, or if parts of the character can pass into the public domain whenever the original publications reach the end of their protected terms.

The case in question was Klinger v. Doyle Estate, Ltd.,[4] and it dealt with the character of Sherlock Holmes. Klinger co-edited an anthology of Sherlock Holmes stories written by modern authors, but he did not obtain a license from the Doyle estate to do so because he believed the works to be in the public domain.[5] The record in the case established that all but ten of the Sherlock Holmes stories had passed into the public domain.[6] However, his publisher at the time paid a licensing fee to the Doyle estate after being contacted.[7] Klinger and his co-editor then created another anthology for a different publisher.[8] Due to the Doyle estate’s demand of a licensing fee and threats to block publication of the book, Klinger’s publisher refused to publish the anthology unless Klinger obtained a license.[9] Klinger sued for a declaratory judgment that the Sherlock Holmes stories were no longer protected by copyright and that the few stories that were under copyright lacked “sufficient originality to be copyrightable.”[10] The Doyle estate argued that complex characters like Sherlock Holmes and Dr. Watson whose complexities are revealed across many stories should remain protected until the final story protected by copyright falls into the public domain.[11]  The court, however, ruled that only “original elements added in the later stories” should remain protected by copyright law.[12]

HOW CAN YOU PROTECT YOUR PUBLIC DOMAIN CHARACTER?
In light of the recent Sherlock Holmes case and other cases finding similar results,[13] what options are available to protect a character about to fall into the public domain? Realistically, there are not a lot of options. Your character has been protected for decades, and soon it will belong to the public. As the court in Klinger pointed out, extending copyright protection further shrinks the public domain making it more difficult to create new work,[14] and perpetual copyright protection would violate the Constitution, which authorized “copyright protection only for ‘limited Times.’”[15]  

However, there are two methods by which you may retain some control over your character, or, at a minimum, limit the ability of others to capitalize on the character. The two methods are through any trademark rights you may have gained in the character and through continued, official exploitation of the character.

The first method is to register all applicable trademark rights for your character. While this will not prevent others from using a character in the public domain, it should limit their ability to advertise and exploit the character. If your character’s name doubles as the title of a continuing publication, such as a comic book, then newcomers might be prevented from using the character’s name in the title of a competing publication. If you exploit your character on merchandise, then you should be able to prevent others from doing the same with the character. Personally, I do not believe using trademark rights to totally protect your character is possible. However, there have been instances where a character’s image fell into the public domain and trademark law protected it from exploitation,[16]  but overall, many feel that expanding trademark rights to wholly protect characters that have entered the public domain goes against the public policy goals of granting limited copyright protection.[17] In light of this, and this author’s beliefs on the matter, trademark rights to a character should only be allowed to prevent exploitation in areas unrelated to the character’s original medium that has entered the public domain. For example, if the Doyle estate has a valid trademark on Sherlock Holmes hats, then while a newcomer could exploit Sherlock Holmes in literature and other possible narrative mediums, the newcomer could be prevented from creating Sherlock Holmes branded hats. 

The second method is not exactly law related, but business oriented. One way to protect against unwanted exploitation of public domain characters is to establish a licensing regime to exploit your character. If your character is popular enough, you should be able to retain some control over the exploitation of it by establishing stories, books, movies, etc. that would fall into an official canon for the character. By designating specific works that will be officially recognized as continuing to tell the story of the character, you will be able to distinguish the official works from unofficial, derivative works. This method of creation and exploitation should encourage fans of the character to seek out and consume works that build upon and expand the official world of the character.

Ian Fleming Publications Ltd. appears to be doing a great job of doing what I described above. Ian Fleming passed away in 1964. The rights to many of his literary creations, including James Bond, now belong to Ian Fleming Publications Ltd. This entity continues to work with authors to create new James Bond stories in various media, including new books[18] and even new graphic novels.[19] In 2016, the company partnered with IDW and hired noted comic book writer Warren Ellis to create an “‘Official Continuation’ of the Bond of the book.”[20] By commissioning and approving new works that enhance and expand the stories of James Bond, Ian Fleming Publications Ltd. has set up a clear system to exploit new works and protect the character of James Bond when Fleming’s original Bond novels finally fall into the public domain.

In my opinion the Doyle Estate took too long before implementing this approach to make it effective. Over the years, new stories were released, including some by Arthur Conan Doyle’s son, but none were officially recognized as continuing Holmes and Watson’s adventures. In 2016, the Estate did authorize a writer to release a new Sherlock Holmes book in 2011.[21] It was the first book officially endorsed by the Arthur Conan Doyle family in 80 years.[22]

Even though you do not want to hear that others might soon be able to exploit the character you have rights to, it is going to happen. Your character and stories will fall into the public domain. However, if you take actions beforehand, you may be able to exert some control over the fate of your character before others start using it.

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[1] Circular 15a, Duration of Copyright, 1, U.S. Copyright Office,  http://www.copyright.gov/circs/circ15a.pdf (last visited May 24, 2016)..

[2] Kurtz, Leslie A., The Methuselah Factor: When Characters Outlive Their Copyrights,  11 U. Miami Ent. & Sports L. Rev. 437, 446 (1994).

[3] Silverman v. CBS Inc., 870 F.2d 40, 49 (2^nd Cir. 1989).

[4] Klinger v. Doyle Estate, Ltd., 755 F.3d 496 (7^th Cir. 2014).

[5] Id. at 497.

[6] Id.

[7] Id.

[8] Id.

[9] Id. at 498.

[10] Id.

[11] Id.

[12] Id. at 501.

[13] See Klinger, 755 F.3d at 500-01; See also Kurtz, The Methuselah Factor, at 447.

[14] Klinger, 755 F.3d at 501.

[15] Id. at 503.

[16] See Frederick Warne & Co., Inc. v. Book Sales, Inc., 481 F.Supp. 1191 (S.D.N.Y. 1979).

[17] Kurtz, 11 U. Miami Ent. & Sports L. Rev. at 450-51.

[18] About Us, http://www.ianfleming.com/about-ian-fleming-publications/ (last visited June 15, 2016).

[19]Vargr hits shelves – James Bond Comic Issues #1 Out Now, Nov. 4, 2015, http://www.ianfleming.com/vargr-hits-shelves-james-bond-comic-issue-1-out-now/ (last visited June 15, 2016).

[20] Bailey, Benjamin. Warren Ellis Talks Bringing Ian Fleming’s James Bond to 2016, Nerdist.com, http://nerdist.com/warren-ellis-talks-bringing-ian-flemings-james-bond-to-2016/ (last vistited July 13, 2016).

[21] A New Sherlock Holmes Story: The House of Silk b Anthony Horowitz, http://www.conandoyleestate.com/index.php/house-of-silk-anthony-horowitz/ (last visited July 7, 2016).

[22] A New Sherlock Holmes Story: The House of Silk b Anthony Horowitz, http://www.conandoyleestate.com/index.php/house-of-silk-anthony-horowitz/ (last visited July 7, 2016).