Robot 6

Creator tangles with DC and Marvel over ‘super hero’ trademark

More than three decades after Marvel and DC Comics initially registered their joint trademark for “super hero,” a small-press publisher is disputing their claims to the mark.

In an interview with Crisp Comics, Ray Felix of Cup O’ Java Studio Comix recounts receiving a cease-and-desist letter in September 2010 after he registered a trademark for his comic series A World Without Superheroes. Following more a year and a half of exchanges between Felix and the companies’ attorneys, DC Comics and Marvel Characters Inc. in March 2012 filed a formal opposition with the Trademark Trial and Appeal Board, which decides certain cases involving trademarks.

Their original registration for “super hero” and “super heroes,” which received widespread attention when it was renewed in 2006, covers a range of products, from comic books and playing cards to pencil sharpeners and glue. However, Felix argues DC and Marvel have overstepped the bounds of their trademark.

“I had heard in 2006 that Marvel and DC had jointly renewed their trademark on the word Super Hero,” he tells Crisp Comics. “Even still, jointly trademarking a word does not entitle any company or individual rights over the word as DC/Marvel had proclaimed. In their eyes they own every and any variation of the word regardless of spelling, variation in a statement or sentence in the English language or foreign. Registration marks do not work that way. It’s illegal and impractical. Also, registration gives you legal rights to word usage for a literal element. Meaning a specific product which uses the actual word to sell a product(s). Trademarks/registered marks are never secure and can always be brought into opposition by any party which feels that it is infringing on their registration rights.”

As CBR’s Brian Cronin noted in his 2006 superhero trademark primer, it seems unlikely a minor modification of “super hero” or “super heroes” — a hyphen, for example — would pass legal muster. “The insertion of a hyphen would not be enough to separate the product from the word superhero,” he wrote. “Just like you would not be allowed to use a mark like Ree-bok Sneakers.”

But in his filings with the trademark board, Felix also argues the inclusion of “Cup O’ Java Studio Comix” in his logo prevents and confusion with the books published by Marvel or DC, while “A World Without Superheroes” “clearly indicates that the characters in my publication are NOT SuperHeroes nor demonstrate behavior which is super heroic.” In a Jan. 12 petition for a hearing extension (the last available record of the case), Felix stated “It is my deepest to negotiate terms” with the publishers that permit him to keep his trademark.

As some may recall, in 2004 small-press publisher GeekPunk changed the name of its series Super Hero Happy Hour to Hero Happy Hour following objections by DC and Marvel.

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Comments

37 Comments

It’s ridiculous that “superhero” should be considered a restricted trademark. Our whole system of intellectual property is increasingly stuffed with such junk claims, too, to the benefit of almost no one.

Per a line of dialogue from one of Marvel’s own comics (which I think I’m still graciously permitted to excerpt) expressed it, these corporate zombies would “probably prefer if fire and the wheel were patented, too.”

Regardless of whether the term should be a registered trademark, the fact is that it currently stands as one in the US. And when ‘superhero’ is the biggest word on your cover (which also features costumed characters similar to and likely derivative of DC or Marvel) you’re clearly using the word in an infringing manner.

Whether the characters in this series act like superheroes is immaterial–if maintenance of trademark was dependent on characters acting like superheroes, Marvel and DC would have lost it years ago.

“super hero” is trademarked? And it’s been upheld in court? Wow.

Aaron, if you know anything about how we handle intellectual property law in the United States, you’re presumably aware that the first part of the phrase “currently stands” is key.

Judged by litigation, “infringement” of intellectual property is ubiquitous and continuous in corporate America. There is no “settled” status for IP, certainly not in patents and probably not really in trademarks, either. Copyright, maybe, but in other categories it is a constant game of grabbing as much as you think you might have even a slim chance of defending, however outrageous, and then battling it in courts, mostly because that’s what everyone else is doing and if you only play “defense” rather than “offense” you’ll lose.

It’s still a stupid game, and little else.

This should be an interesting proceeding, if it isn’t settled. Trademark protection is not invincible. The exclusive right to a trademark is to protect the source-identification function, i.e. you know a car with the blue-oval comes from Ford. If you own a trademark, but allow it to become generic (i.e. the word no longer identifies the supplier of the good, but the good itself) you can lose the mark. For example, Xerox came close to losing their mark because everyone talked about “xeroxing” things instead of making a copy on the Xerox machine. You can argue that “superhero” no longer identifies a product coming only from DC or Marvel. Consumers expect superheroes to come from any comics publisher. Thus, the word “superhero” doesn’t have a source-identification function specific to Marvel or DC. It is a generic word for a type of literary character, a protagonist with superhuman powers or extraordinary skills.

I thought it was just “Super-Hero” with capital S and H, and a hyphen that was trademarked. (Of course including any plural form of that particular spelling).

I’m surprise super hero is trademarked.

Call of Duty isn’t, but Call of Duty Black Ops etc is.

Anyone remember the the flack caused by NASCAR’s Richard Childress Racing after the death of Dale Earnhardt over the number “3″? Anyone remember that BS? They sent cease and desist notices to everyone from ESPN to EFFIN Sesame Street to stop using the number. They didn’t win, per se… They wound up having to register the number in the particular typeface as a logo.

It’s always been my opinion that the term “super hero”, “superhero” or any other variation is a simple generic term to describe any number of heroic costumed characters, regardless of publisher. Much like the way the words “comic book” or “comics” are used to define the type of publications that these characters appear within.

“With Great Power, comes Great Responsibility” (and not just to one’s shareholders)

I was born a Marvel/DC fan and I will die a Marvel/DC fan…but this guy is right, Marvel and DC can’t trademark a word describing a genre. The men and women working at both companies preach over and over how they have a love of comics and the medium as a whole…so why do you stomp on the little guy? Marvel and DC will always be around they won’t go away, give these other creators a chance to tell their stories.

Back in the day of UseNET Newsgroups, I was the proponent for the creation of rec.games.frp.super-heroes for the discussion of Super-Hero RPGs. The complexes people had over the proper wording of super-heroes (vs. superheroes) was so ridiculous, it was astonishing. The hyphenated version was used to distinguish it from the trademark, but the UseNET moderators were still hesitant, even then. At one or two kept pushing for rec.games.frp.supers instead, with others arguing it would make people think it was a group specific to GURPS Supers, the only super-hero RPG that used just the word “Supers” at that time.

Me? I just wanted a place to talk about super-heroic themed RPGs without having to sift through 300 posts about D&D.

The entire process gave me a complex where now I can only write super-heroes hyphenated.

DC and Marvel didn’t lift a finger when Dell was using the word Super Hero in the 1960′s
http://sacomics.blogspot.com/2010/12/superheroes-4.html

You can’t trademark or copyright something in public domain. I really hope he wins :)

Aaron,

You write:

“Regardless of whether the term should be a registered trademark, the fact is that it currently stands as one in the US. And when ‘superhero’ is the biggest word on your cover (which also features costumed characters similar to and likely derivative of DC or Marvel) you’re clearly using the word in an infringing manner.”

This is a tautology. You conclude that the word is used in an infringing manner based on its registration notwithstanding the fact that the registration may itself by invalid. Registration does NOT mean lawful registration, at least as far as the substance is concerned. Indeed, last year, the Supreme Court ruled a number of human gene patents unlawful notwithstanding the fact that the U.S. Patent and Trademark Office has been awarding patents on human genes for 30 years.

I concur with other posters — a ton of supposedly proprietary intellectual properties are not, in fact, proprietary, and are “enforced” through the threat of litigation.

I can’t believe that the term didn’t pass into generic status in the 2006 renewal; I’m lazy and don’t want to look up the case…does anyone have a quick answer to the USPTO rationale on that?

This guy is a tiny indie publisher… what is his print run? Is he even making ANY profit? LEAVE THE GUY ALONE— he poses no threat what so ever to either of the big two!

IF anything this case allows him the media exposure he always wished for– I say good job Ray Felix of Cup O’ Java Studio Comix !!
Push the envelope even more with each issue!

Damn da man!

What about the Image Comics title Invincible putting the words ‘Probably the best superhero comic in the universe’ (see issue 41 for an example) across the top of the cover and later changing it to ‘The best superhero comic in the universe’ (see issue 100, published this month)?

Is it because the ‘big 2′ are threatened by the publishing giant that Cup O’ Java is, whereas Image is just 2 guys in their basement? Seriously, Cup O’ Jave should thank the ‘big 2′ for all the free publicity while fighting their erroneous claims. The terms ‘superhero’, ‘super hero’, ‘super-hero’ have been used in movies, cartoons, comics books, novels, etc many times without Marvel & DC raising a fuss.

The ‘big 2′ are being rather small about this.

I should trademark the words ‘yes’ and ‘no’, see if I can’t help grind civilization to a standstill.

I agree that it has bee so long and used world wide,that superhero in any form can not be held up for trade mark. That is like stingray for bicycles we know that the one and only is Schwinn.But all looking that way were called that or stingray clones,those who really knew their stuff called their bike what it really was an Apollo, Murray,Huffy and what ever the model name of the bike was.All stingray style bicycles are now know as muscel bikes, go figure.Oh things were said no its not a stingray its etc.But samething most to make it easy say stingray style bike if its a clone.But super abilites are super,Batman,Green Hornet so many others are not superbeings but have gone on to push themselfs to make their abilites way better than normal so super is there and they are a hero so they are superhero’s.Now how about as said let the little guy get a part of the pie and DC and Marvel fight over something the matters?Oh say hunger in the world,stopping war,medical help.I mean nothinnnnnnng that matters much.Please this makes you guy’s look so petty,a fan of you both but come on.

Pass me a Kleenex.

There was an RPG game called “Heroes Unlimited” that had a notice in the indicia that says “Superhero(s) is a registered trademark held jointly by D.C. Comics, Inc. and Marvel Comics Group, Inc. Its use in this texrt is solely as a descriptive term and is in no way meant to infringe upon said trademark.”

I wonder how, if at all, that applies to this case.

Hey, I want some attention! Maybe I’ll kick a bee’s nest and people can discuss it!…

Just saw a Hallmark commercial with a kid dressed in all black with a cape and mask.

He uses the word superhero.

Getting sued?

Stupid statute

So, I saw a movie on the shelf at Wal-Mart called “All Superheroes Must Die.” No trademark attribution for “superheroes.”

A quick Amazon search reveals:

Superheroes (Movie)

Super Hero ABC (Children’s Picture Book)

Diary of a Teenage Superhero (Novel)

Superhero (Novel)

Superhero (Novel)

The Superhero Starter Kit (Book plus stickers plus a red cape)

12 Super Hero Rubber Duck Party Favors

Superheroes (Fiction anthology, line broken on the cover)

Country of Superheroes (Novel)

Superheroes (Album)

Superheroes (Anthology including work by Roger Zelazny and Alan Dean Foster)

Jesus My SuperHero (Album)

Superheroes (2010 Film)

Little Adventures Super Hero Cape

All Superheroes Must Die (2013 Film)

Charlie’s Superhero Underpants (Picture Book)

Superhero (Brian McKnight Album)

Superhero Marc (Children’s Photo Picture Book)

Death of a Superhero (2012 Film)

Zoom: Academy for Superheroes (2006 Film)

I’m not even including the parodies such as Superhero Movie or the critical books such as Psychology of Superheroes. All in the first 10 pages of an Amazon search. Either DC and Marvel’s lawyers aren’t able to use a simple Amazon search (despite DC going Kindle exclusive with eBooks) or they’re diligently defending the trademark. And haven’t been for well excess of 6 years.

And Marvel DID sue Zoom for being too much like X-Men. No complaint about the use of the word “Superheroes.” They took active recommendations from Marvel for script changes to avoid infringement and that didn’t include any request to change the title.

If Cronin is right that the hyphen doesn’t matter, it would have to err on the side of invalidating the trademark. Defending a trademark isn’t a choice. At the very least, it would have to be licensed and the trademark would have to be asserted on the licensed packaging.

If Felix has any kind of competent representation, they should point all of this out.

I’m looking at the Zoom DVD case right now and there is no trademark attribution for the word “Superheroes.”

However, if people really wanted to make a point, they should probably file a Trademark Opposition within 30 days of DC and Marvel’s next filing in an attempt to get the government to reject their renewal.

So they trademarked Super Hero in a Super Hero industry. That’s like trademarking “Tires” in the tire industry. Thats like if Goodyear to told Bridgestone Tires they couldn’t use the word tires.

Is that like having a copyright on “green vegetables”?

volkswagen tried copyrighting “VW” a few years back.

this would effectively have given them 2 letters of the alphabet.

Naturally,it was thrown out.
only the VW device on the front of the cars is copyrighted.

but gtrying to copyright a whole phrase that has gone into common use of the english language….well….only in the US of A folks :(

Remember how at the end of The Karate Kid it states that Karate Kid is a trademark owned by DC Comics and it’s used with permission?

Why not just grant him permission to use the superheroes trademark?

All the more power to him. Of all the stupid things DC and Marvel have done, their trademarking of a common word is their greatest offense by far. I hope Ray wins.

Fact is, like it or not, the term is trademarked by Marvel and DC. Guess what? If they say you can’t use the word, then you can’t. I love all of the David vs Goliath sympathy. The word is not public domain. Sorry, little guy is in the wrong here. It may not seem right, but its legal. And saying the word superhero, or having the word appear inside of a comic is fine. Having the word plastered on the cover in order to sell your book, is not.

William McGeveran

February 5, 2013 at 5:03 am

I am a law professor who studies and teaches trademark law. Based on this account Felix has some strong arguments. In particular it looks to me like the trademark nay be “generic” and thus subject to cancellation. If you’re out there, look me up and I will see if I can help.

Yeah, this is funky.

I’ll add to the pile of titles with “superhero” in the title that could fall into this traemark infringement category: SUPERHERO GIRL (Faith Erin Hicks). Granted, I like Hicks’ work, but why is she not sued?

But Chris’ comment at the top of the thread is what keeps me interested. What about source-identification function? If the term “superhero” specifically referred to comics created by DC or MARVEL, then the trademark should stand… but it obviously doesn’t, not anymore at least.

The deciding factor of DC/Marvel taking me to court is that I own a published registered mark for “Cup O java Studio Comix A World Without SuperHeroes”, under the USPTO. Those other companies do not. They can’t sue you for using the word if it isn’t registered. They do intimidate companies from attempting to use it. which in fact they did “warn” and “intimidate” me from using it. I was bullied softly not to register the mark and told not to publish or continue using my comic title. Fact: DC/ Marvel can’t do anything about it unless you attempt to use the ®. Which is official. Using ™ doesn’t necessarily mean that the company actually trademarked their title. It only means that its protected under the laws of trademark because they use the™, which you can use legally without actually registering it. ™protects your title under US laws of trademark regardless if the title is filed. Whereas the ® mark is only used for an actual published mark.
I encourage every comic creator to use the public domain word “Super Hero”. It’s illegally registered and the government needs revoke it. We as comic creators need to stop DC/ Marvel from continuing to marginalize the indie creator by preventing the word “Super Hero” from being used. They’ve got Diamond Distributors in their pocket and they’ve created several roadblocks for Indy publishers from getting exposure by high distribution quotas. That is a Monopoly, which is illegal. It’s up to us, the artists, writers and small press publishers to stop them. We are the next generation for comics in this digital golden age. These companies know it. They can see the writing on the wall. One day, “Superman” will be irrelevant as “Popeye”, “Batman” will be as compelling as “Beetle Baily” and “Wonder Woman” will be nothing more than a fashion friendly, “Betty Boop”. They’re are mythos is fading and will be no more than nostalgia by the end of the 21st Century.

Class dismissed.
Ray Felix

Also, as much as I love comics, at age 38 , even I can see that the future is in animation and video games. Consumers want to interact in the adventures of heroes and not necessarily read them. Downloadable web comics will incorporate these video game and animation features within two years or less.

This won’t hold up in court. They may have registered this 30 years ago but they haven’t enforced their hold on the mark. Now that Disney is involved, the suits have begun to try to re-establish their hold on the mark, but it’s too watered down and the fact that this a regular used phrase in the common parlance, the two bullies & the bigger bully behind it (Disney) are going to lose.

Stand tall.

Hart D. Fisher
owner/operator/American Horrors

When I come back to comics publishing, this is EXACTLY the kind of bullying I will fight and put down.

All hail the Crimson King!

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