In the most recent episode of the Shazamcast! (about the 44:30 mark) Carl Shinyama proposed that Marvel and DC hold joint ownership of the name Captain Marvel. I’m hoping to post Carl’s notes from the episode soon but, in the meantime, I thought it would be helpful to review the precedent for Carl’s idea: the joint ownership by the Big 2 of the trademark of term super hero.
The best thing I’ve seen as an introduction comes from Brian Cronin, a comic fan and lawyer in New York City called The Superhero Trademark FAQ, published initially on his blog and then updated for CBR. It is worth reading in its entirety and I highly recommend you do so. There is, however, a core section I’m going to excerpt:
Q: What does it mean that Marvel and DC have a trademark on the word “Superhero”?
A: It means that companies cannot enter certain areas of commerce with the word/phrase “superhero” as part of their product name.
Q: What products does this apply to?
A: Publications, but basically comic books and magazines. Also, cardboard stand-up figures, playing cards, paper iron-on transfers, erasers, pencil sharpeners, pencils, notebooks, stamp albums, and costumes
Q: Does this affect our ability to use the word superhero?
A: Only if you want to make a product that fits into those categories and sell it. So, if you want to sell (you can make it for your own personal pleasure) a comic book called “Star Spangled Superhero Stories,” you would not be able to. But if you want to refer to your characters as superheroes within the comic, you can do so. This is what allows DC to refer to their character Captain Marvel as Captain Marvel within the comic, but they cannot use the name Captain Marvel in advertising or as the name of the comic, because Marvel holds a registered trademark of that name.
Q: When did Marvel and DC do this?
A: 1979. They recently re-filed the trademark.
Another interesting aspect: from time to time you see lawsuits filed by smaller entities, not all of them comic creators or publishers, challenging this trademark – see for example the cases of Ray Felix, SUPERHERO DONUTS, SuperHeroCleaners, and a whole slew of companies in the UK. It often appears to be a case of the Big Bad Corporation holding down the little man.
However, according to Cronin, defending every violation of the trademark is required to maintain that trademark:
Q: Can’t Marvel and DC just let some minor companies get away with the use? Does it really matter?
A: One of the problems with trademarks is that companies have to defend the use of the term, or else risk the term being considered generic, and thereby losing the trademark protection. So, if Marvel and DC began letting companies call their comics “Superhero ____,” they would risk a court ruling that the term was no longer associated with only Marvel and DC, and then the term would be declared “generic,” and would no longer be protectable, which was the case for such famous words as cellophane and kerosene, both once product names, but ultimately became known as generic words that any company could use (The most famous example of a company who vigorously defends their trademark is Xerox, who love to insist that you “use a Xerox copy machine to make a copy, not make a xerox!”). Other companies who constantly have to make this distinction include Roller Blade brand in-line skates and Band-Aid brand bandages.
Interesting stuff that also reminds us comics, as an industry, require certain legal protections and opportunity to earn profit in order to keep the stories and characters we love in regular publication.
Look soon for specifics on how the trademark issue comes in to play in the attempt to get modern Captain Marvel stories where the character is named Captain Marvel rather than using the name of the wizard who grants his powers.
Finally: have you listened to the episode or the previous episodes of the Shazamcast!? If not, you can find them HERE. Have you listened to them already? A quick review on iTunes would be greatly appreciated!