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Who owns Superman? The Man of Steel fights trademark law

Who is Superman’s greatest threat? Evil genius Lex Luthor? General Zod from the Phantom Zone? The doppelganger Bizarro? Super-villain Brainiac? Kryptonite? Or is it intellectual property law? In 2013…

The character of Superman has had a storied intellectual property history, having spawned countless imitations and emulations in comic books, films and popular culture. Wikimedia Commons

Who is Superman’s greatest threat? Evil genius Lex Luthor? General Zod from the Phantom Zone? The doppelganger Bizarro? Super-villain Brainiac? Kryptonite? Or is it intellectual property law?

In 2013, DC Comics and Warner Brothers have sought to reboot the Superman movie franchise with the new film Man of Steel.

Man of Steel Trailer

The film is directed by Zac Synder and produced by Christopher Nolan, who successfully revived Batman with the Dark Knight trilogy. Snyder observes that Superman is a “cool mythological contradiction”. The director observes: “He’s incredibly familiar Americana and alien, exotic, bizarroland, but beautifully woven together.”

With the release of this marquee film, DC Comics and Warner Brothers have sought to protect intellectual property rights associated with Superman. This week, in the Federal Court of Australia, Justice Annabelle Bennett delivered a brilliant judgment in the case of DC Comics v Cheqout Pty Ltd. The decision demonstrated a mastery not only of intellectual property law, but also of philosophy and the history of superheroes. The case raises larger questions about trademark law, superhero franchises, and remix culture.

A ‘Superman workout’

The case concerned a fitness company making a trademark application for the “Superman workout” to IP Australia.

Michael Kirov, a delegate of the Registrar of Trade Marks allowed a fitness company, Cheqout Pty Ltd, to register the trade mark “Superman workout” in respect to the Class 41 services of “conducting exercise classes; fitness and exercise clinics, clubs and salons; health club services (exercise)”.

In rejecting DC Comics’ opposition, he said:

On any view of the Applicant’s conduct in the present matter, I do not believe the making of its application to register the plain English words “superman workout” as a trademark for the Services could reasonably be said to be of an unscrupulous, underhand or unconscientious character.

Promotional material for Cheqout’s ‘Superman workout’.

Beyond Good and Evil: From Mickey Mouse to Friedrich Nietzsche

DC Comics appealed to the Federal Court of Australia, claiming the trademark application was made in bad faith and would be likely to deceive or consumer consumers. DC Comics argued that its case was similar to the 1937 case of Radio Corporation Proprietary Limited v Disney, where the High Court of Australia considered the words “Mickey Mouse” and “Minnie Mouse” as trademarks.

Justice Bennett said:

DC Comics maintains that the public will be misled or confused by use of the word alone … there is no dispute, and no doubt, that Superman the superhero is well known and recognised, by look and by name, to the public at large.

She considered the definition of “Superman” as outlined by the Macquarie and Oxford dictionaries, and noted that “DC Comics does not assert that “superman” is a word invented by it” and “accepts that the word, in English, derives from “Ubermensch” as discussed by Friedrich Nietzsche”.

She observed that DC Comics have argued:

that the word “superman” and the expression “super man” have come to be associated with the character invented by Jerry Siegel and Joe Shuster in 1938 and well publicised since then (Superman).

The judge said that:

when the trademark is used without reference to any of the well-known indicia associated with the DC Comics superhero and as contained in the registered trade mark or other trade marks registered by DC Comics, there is no likelihood that use of the trade mark would be likely to deceive or cause confusion by reference to the Superman word mark, or the subject matter of DC Comics’ registered trade marks.

However, Justice Bennett was:

satisfied that DC Comics has established that Cheqout made the application for the Trade Mark in bad faith". This was evidenced “by the use … of the word Superman together with the BG Shield Device, in the context of male fitness and strength.

Justice Bennett ruled:

that at the date of application for the trade mark, Cheqout’s conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons.

The intellectual property avengers

DC Comics and Marvel have engaged in lucrative IP deals

Superheroes play an important role in the history of intellectual property law.

There has been ferocious legal debate between DC Comics and the estate of Jerry Siegel over the ownership of the rights to Superman and even Superboy.

In her book, Contested Culture, Jane Gaines devotes a whole chapter to “Superman, Television, and the Protective Strength of the Trademark”. She wrote that the “Superman text is the cultural turf over which an important conflict between copyright and trademark has waged”. Her argument is that DC Comics have relied upon a multiplicity of forms of intellectual property to protect Superman and other members of the Justice League, such as Batman, Wonder Woman, and The Green Lantern.

DC Comics' rival Marvel have also relied upon a variety of intellectual property rights - including copyright law, trade mark law, personality rights, and character merchandising. Nicole Sudhindra comments: “Marvel’s robust IP assets have without a doubt enabled it to reap enormous benefits from its licensing activities.”

DC Comics and Marvel have even licensed their works to the Danish toy manufacturer, Lego.

Fan fiction, remix culture, and cosplay

There has been a concern that the excessive protection of intellectual property rights of superheroes could have an adverse impact upon creativity, remix culture, and fan fiction.

In his novel, The Amazing Adventures of Kavalier and Clay, Michael Chabon charts the birth of superhero comics in the United States, and explores the mythologies of superheroes.

Intellectual property and superheroes is complicated. Superman has spawned a host of imitations and emulations in comic books, graphic novels, and films - everything from Dr Manhattan in The Watchmen to Mr Incredible in Pixar’s The Incredibles. Over-protection of Superman under intellectual property could repress and suppress such creativity and innovation.

Superman has also been the subject of endless appropriation, reappropriation, and remixing in popular culture — see R.E.M.’s song, I Am Superman. The iconography of Superman has been the subject of mash-ups in fan fiction, art, music, fashion, and film.

There has been a concern about the impact of intellectual property rights holders seeking to censor critical work. Famously, the Argentine-Chilean writer Ariel Dorfman complained about Disney relying upon copyright law to try to censor his work, How to Read Donald Duck: Imperialist Ideology in the Disney Comic.

In the United States, the Organization of Transformative Works has been formed to help support and defend fan fiction from over-reaching intellectual property claims. The group “believes that fanworks are creative and transformative, core fair uses, and will therefore be proactive in protecting and defending fanworks from commercial exploitation and legal challenge”.

Under such a view, the Man of Steel is not merely a commercial franchise — Superman belongs to us all. Even the Justice League should embrace justice in intellectual property law.

Join the conversation

12 Comments sorted by

  1. Matthew Rimmer

    ARC Future Fellow and Associate Professor in Intellectual Property at Australian National University

    Worth highlighting that Justice Bennett's decision in respect of bad faith focused upon the use of the shield device: "I am satisfied that DC Comics has established that Cheqout made the application for the Trade Mark in bad faith. This is evidenced by the use, soon after the application, of the word Superman together with the BG Shield Device, in the context of male fitness and strength. I note also that the red, white and blue colours traditionally used in conjunction with the Superman character were used by Cheqout together with the BG Shield Device. The design of the BG Shield Device closely resembles the insignia closely associated with the DC Comics character and the DC Comics registered trade marks. I am satisfied that at the date of application for the Trade Mark, Cheqout’s conduct fell short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons."

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  2. Glen Takkenberg

    logged in via Twitter

    As I understand the case, this ruling only means that Cheqout could not have a monopoly on the term "Superman Workout" as a trademark relating to fitness products and services.
    Does this mean they can continue to use the term Superman Workout without it being a registered trademark?

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    1. Matthew Rimmer

      ARC Future Fellow and Associate Professor in Intellectual Property at Australian National University

      In reply to Glen Takkenberg

      The judgment by Justice Bennett is a nuanced one, Cheqout got into trouble in terms of bad faith because of the shield and livery of Superman - in addition to the term itself.

      Given that the Superman is a well-known mark, DC Comics can potentially bring action in respect of trademark infringement, even for unrelated goods and services: http://www.austlii.edu.au/au/legis/cth/consol_act/tma1995121/s120.html
      The key question would be whether a company uses a sign that is substantially identical with, or deceptively similar to, the Superman trade mark.

      In addition, DC Comics could bring action under passing off, and misleading and deceptive conduct.

      So, Cheqout would need to consider such issues if they wanted to use the term Superman Workout (and especially the related imagery of the shield).

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    2. Glen Takkenberg

      logged in via Twitter

      In reply to Matthew Rimmer

      From my lay reading, the judge seemed to be of the opinion that while the logo and name were deliberately trying to evoke the imagery of the DC Comics Superman, they weren't sufficiently similar that one would be confused between Cheqout and DC Comics.
      The citations about Tennis Warehouse Australia I think highlights the difference here, nobody would think that Cheqout's "Superman Workout" was an officially licensed DC Comics workout in the same sense as Tennis Warehouse's deliberate confusion…

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  3. Matthew Rimmer

    ARC Future Fellow and Associate Professor in Intellectual Property at Australian National University

    Another interesting case involving intellectual property and superheroes is Fortres Grand Corporation vs Warner Brothers (2013): http://www.scribd.com/doc/142132259/Cleans-Late The case concerned the use of the term 'a Clean Slate' in the film, Dark Knight Rises. The judge explains:

    'Warner Bros. produced the latest Batman film – The Dark Knight Rises – and it includesa handful of references to a fictional software program called “clean slate.” The Plaintiff, Fortres Grand Corporation, manufactures…

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    1. Matthew Rimmer

      ARC Future Fellow and Associate Professor in Intellectual Property at Australian National University

      In reply to Matthew Rimmer

      Eriq Gardner comments on the case: "Warner Bros. 'clean slate' software only exists in the fictional world of Gotham; it does not exist in reality. This may seem to be a small point, but it has big ramifications for the consumer confusion analysis, which become apparent once you realize the argument that Fortres Grand has not made – and cannot make."

      Judge Simon also accepts Warner Bros.' point that there can be no confusion of the source of origin because of the business it is in. The studio argued, "“Plaintiff is not in the motion picture business, and it would be absurd to think that customers buy tickets to The Dark Knight Rises or purchase the DVD/Blu-ray because of a perceived association of the Film with Fortres Grand’s products.”

      And oh yeah, Warner Bros. also wins on the First Amendment. Free speech reigns in Gotham.

      http://www.hollywoodreporter.com/thr-esq/warner-bros-wins-lawsuit-fictional-524779

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  4. Bill Grantham

    Lawyer

    I didn't find the decision very persuasive. Looking at the actual use of the mark in the very helpful illustrations provided, it would be hard to argue that any consumer confusion would be likely at all, i.e., that ordinary people reading the ad would reasonably conclude that DC had somehow endorsed the Superman Workout. Based on the alleged objectionable use, that argument seems to me to be so tenuous as to place us in "moron in a hurry" territory (Morning Star Cooperative Society v Express Newspapers…

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    1. Matthew Rimmer

      ARC Future Fellow and Associate Professor in Intellectual Property at Australian National University

      In reply to Bill Grantham

      Thanks for your comment, Bill Grantham. Good to get an alternative perspective on the case. My question to you would be: If you were representing Cheqout, would it be worth appealing? What questions of law would you raise to the Full Court of the Federal Court of Australia or even the High Court of Australia?

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  5. Matthew Rimmer

    ARC Future Fellow and Associate Professor in Intellectual Property at Australian National University

    Michael Chabon on the history of comic books: "In 1939, the American comic book, like the beavers and cockroaches of prehistory, was larger and, in its cumbersome way, more splendid than its modern descendant... As with all mongrel art forms and pidgin languages, there was, in the beginning, a necessary, highly fertile period of genetic and grammatical confusion. Men who had been reading newspaper comic strips and pulp magazines for most of their lives, many of them young and inexperienced with the pencil, the ink brush, and the cruel time constraints of piecework, struggled to see beyond the spatial requirements of the newspaper strip, on the one hand, and the sheer overheated wordiness of the pulp on the other".

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