DeCarlo and Archie Comics - Part 2

Editor’s Note: This is the second part of a blog post discussing the lawsuits between Dan DeCarlo and Archie Comics. The first part can be found here.

The final lawsuit involving Dan DeCarlo and Archie Comics[1] was another action brought by Archie Comics seeking declaratory judgment and injunctive relief against DeCarlo’s estate, who passed away in December 2001. In the lawsuit, DeCarlo’s estate tries again to argue ownership claims for the Josie and Sabrina characters and also adds the character Cheryl Blossom and her family. The court reaffirmed the previous decision that DeCarlo was equitably estopped from contesting Archie Comics ownership of the Josie and the Pussycats characters. As for Sabrina, the court found there to be a presumption that Sabrina was a work for hire, and if it wasn’t, DeCarlo’s signing of the 1988 and 1996 agreements, in which he assigned all rights he might have in previous works to Archie Comics, conclusively grants ownership of Sabrina to Archie Comics. The court also found the agreements signed in 1988 and 1996 also transferred any rights DeCarlo may have had in the Cheryl Blossom characters. Furthermore, the court also ruled that the copyright assignment termination notices the estate sent to Archie Comics in an attempt to reclaim ownership of the character are null and void because (i) the Sabrina work was a work-made-for-hire, and (ii) the statutory time period for filing the termination notices in regards to Josie or Cheryl Blossom had not occurred. In a footnote the court states, “Whether defendant or DeCarlo's heirs may be entitled to invoke Section 203 with respect to any of DeCarlo's Josie or Cheryl Blossom works is a question which, in the case of the 1988 assignment, can occur no earlier than 2013. The Court declines to rule on that issue at this time.”[2]   

Speaking bluntly, these cases are a bit of a mess, but it’s easy to pass judgment in hindsight. In interviews, DeCarlo stated that he contacted a Cartoonist’s Association attorney in 1970 because he was upset about how Archie Comics handled the Josie cartoon—not telling him about it until the day before it was to air.[3] The attorney he spoke with told him he had a good case, but he would probably be blackballed in the industry if he pursued it; so, he didn’t.[4] In the 2000 case, DeCarlo’s attorney sought to primarily argue state law breach of contract claims. After the arguments failed in the Josie case, instead of focusing on copyright law, they attempted to retry many of the same state law and contract claims, which I imagine didn’t endear them to the court. I can only speculate that they chose this approach because they didn’t like their chances under copyright law. Even though it appeared the court in the last case gave the estate an opening to seek termination of copyright assignments, thus far I have not seen any indication the estate has done so, and based on the outcome for the Shuster family, it might not be successful.

  While DeCarlo was a valuable contributor to the characters inhabiting the Archie universe, his attempts to gain control over the characters failed. As is so often the case when a creator asserts claims against his former employer, the relationship ended poorly. After the first lawsuit was filed, Archie Comics immediately fired him after having worked for Archie Comics for  over 40 years, stating they “found that they and their employees could not stomach having [DeCarlo], in his words, “sneaking” around Archie Comics’ offices.”[5] We’ve seen it before in other cases I’ve discussed. When a company feels like its ownership of its intellectual property is being challenged, it will lash out. It’s an understandable reaction, but incredibly disappointing to see. As a fan, you would prefer to believe these companies would take care of the creators who’ve contributed so much to the company’s legacy (and profits), but that is seldom the case.

The takeaway for creators: (i) know your employment status and if the work is a work-for-hire, (ii) make sure you understand what you are giving away when you sign agreements, (iii) don’t wait too long to take action if you think someone is infringing on your rights, and (iv) if you sue someone, the relationship will likely end.

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[1] Archie Comic Publications, Inc. v. DeCarlo, 258 F.Supp.2d 315 (SDNY 2003)

[2] Archie, 258 F.Supp.2d at 334 n.121.

[3] The Comics Journal, No. 229, page 43 (2000).

[4] http://www.donosdump.com/Jozine/LifeOfJosie/Life08a.html

[5] https://www.peterdavid.net/2014/03/31/archie-and-the-lawyer-guys-part-2/; http://www.donosdump.com/Jozine/LifeOfJosie/Life08.html

DeCarlo and Archie Comics - Part 1

            I never read Archie Comics when I was younger. My gateway into comic books was through Superman, the X-Men, and the launch of Image Comics. Recently, partly owing to my family’s obsession with Riverdale, I’ve started reading Archie comics—both new and old. As such, I was unaware of much of the history and circumstances concerning the creation of Archie characters and had overlooked the litigation between Dan DeCarlo and Archie Comics in the early 2000s.

            DeCarlo worked for 40 years as an artist at Archie Comics, helped create and define the classic, iconic look of many of the characters, and helped create the characters Josie and the Pussycats, Sabrina the Teenage Witch, and Cheryl Blossom.[1] In the late 1990s and early 2000s, as Archie exploited some of these properties in TV and movies, DeCarlo filed a lawsuit asserting his right to ownership.

            The first lawsuit, DeCarlo v. Archie Comic Publications, Inc.,[2] sought to assert DeCarlo’s rights to Josie and the Pussycats. In this suit, DeCarlo claimed that he was solely responsible for creating the characters, and he granted Archie Comics the right to use the characters in comic books and strips, which they subsequently breached by licensing the characters outside of comic books and comic strips and asserting ownership. His attorneys initially filed the lawsuit in state court alleging various breach of contract claims and other contract and state-based claims, but it was transferred to federal court because the main elements of the lawsuit arose under copyright law.

The court found that DeCarlo had waited too long to pursue some of the claims, i.e., the statute of limitations had run out, and his failure to do so in a timely manner had caused harm to Archie Comics because it relied upon his lack of ownership claims to its detriment, which is known as equitable estoppel. DeCarlo had actual knowledge of Archie licensing the works outside of comics and asserting ownership claims in the ’60s and ’70s. Additionally, DeCarlo signed agreements in 1988 and 1996 that seemingly assigned all rights he may have had in his previous works to Archie Comics. As such, the lawsuit was dismissed.

The second lawsuit, Archie Comic Publications, Inc. v. DeCarlo, 141 F.Supp.2d 428 (SDNY 2001), dealt primarily with DeCarlo’s claims to creating Sabrina the Teenage Witch. In this case, it was Archie Comics filling a lawsuit seeking a declaratory judgment against DeCarlo and his claims to ownership regarding Sabrina. Similar to the case involving Josie and the Pussycats, DeCarlo’s attorneys attempted to assert many state law claims and added a trademark claim against Archie Comics. The court found the Copyright Act pre-empted the state law claims. DeCarlo’s counterclaim of false designation of origin and reverse passing off arose because Archie Comics did not credit him as a creator on the TV and cartoon show and instead used the phrase “Based on Characters Appearing in Archie Comics.” The court ruled there was no confusion, and the statements at issue were not misleading.     

Next time: Part 2 discussing the final case involving Archie Comics and Dan DeCarlo.  

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[1] http://articles.latimes.com/2001/dec/25/local/me-17888

[2] 127 F.Supp.2d 497 (SDNY 2001).