I recently ran across an older trademark
case that’s worth mentioning. The case is Marvel
Comics v. Defiant.[1]
The
case pitted Marvel Comics against a new comic book company founded by former
Marvel Editor-in-Chief Jim Shooter. Shooter’s new comic book company, Defiant,
was going to launch a new comic book called Plasm.
Marvel objected to the title of the new book because they had a Marvel UK comic
titled Plasmer. Marvel’s lawyers told
Defiant they needed to change the title of the book. They also said that if
Defiant provided a list of titles, Marvel would approve one.[2]
Defiant provided a list, but they never received a reply from Marvel. So, they
went ahead and published the comic with one of the names on the list, Warriors of Plasm.[3]
Marvel
sued Defiant in an attempt to halt publication of the book by seeking a
preliminary injunction. Marvel had filed for a trademark application for Plasmer in the U.K., and its U.S.
trademark registration was still pending. Both parties filed arguments in an
attempt to have the case dismissed early. Defiant argued the case should be
dismissed because Marvel did not have trademark rights in the word Plasmer. The
court did an intriguing analysis of what type of pre-sale use can help
establish trademark priority, and, using a standard appropriate for evaluating
a motion to dismiss, it ultimately concluded Marvel had established enough
rights to avoid a motion to dismiss the case.[4]
The court also found it inappropriate to grant Marvel’s declaratory judgment
due to the pending nature of their trademark application, which would impact
Defiant’s liability, and the upcoming trial.[5]
Eventually, the court denied Marvel’s preliminary injunction finding there was
“little likelihood of confusion between the two.”[6] The
case was dismissed shortly thereafter.
The aftermath of
the litigation, however, was pronounced. According to Shooter, even though they
won, the litigation cost them $300,000.[7]
Defiant also lost out on a million dollar toy deal with Mattel because they
could not afford to indemnify Mattel against future lawsuits, which Mattel now
required because of the Plasmer lawsuit.[8] As
a new company, Defiant had limited resources, and the lawsuit took a toll.[9]
After only starting publishing in 1992, Defiant closed down in 1995.
Marvel’s U.S.
trademark application for Plasmer was
never issued.
[1] Marvel Comics Limited v. Defiant, a division
of Enlightened Entertainment Ltd., 837 F.Supp. 546 (1993).
[2] https://www.cbr.com/jim-shooter-interview-part-2/
[3] https://www.cbr.com/jim-shooter-interview-part-2/
[4] Marvel Comics Limited v. Defiant, a division
of Enlightened Entertainment Ltd., 837 F.Supp. 546, 549 (1993).
[5] Marvel Comics Limited v. Defiant, a division
of Enlightened Entertainment Ltd., 837 F.Supp. 546, 550 (1993).
[6] The
Comics Journal, No. 163, Pg. 14(Nov. 1993).
[7] https://www.cbr.com/jim-shooter-interview-part-2/
[8] https://www.cbr.com/jim-shooter-interview-part-2/
[9] https://www.cbr.com/jim-shooter-interview-part-2/;
The Comics Journal, No. 163, Pg. 14(Nov. 1993).
