How do you keep a copyrighted name?

I used to be an editor at Lexis-Nexis and, based on my experience reading thousands of court cases, I have to think that Marvel's lawyers were particularly incompetent to lose that lawsuit. (For various shades of gray to the word "lose", of course.) There is no question in my mind that Cryptic deliberately designed specific powers and costume pieces after Marvel characters. Even in the earliest days of this game, making an entire team of X-Men was absurdly easy. The Wolverine claws, the Cyclops visor, Iceman's... everything. Heck, even both of Marvel Girl's outfits, the black & yellow one and the green miniskirt one, complete with her telepathic powers.

What's interesting to me is that some recent minor Marvel characters are *clearly* designed using the CoH costume creator. I'd have to go back and find them, but there have been a couple times over the past year where I've read a comic and immediately recognized an outfit from the CC. Of course, since I've made so many hundreds of characters, I'm always on the lookout for new costume ideas.

Yeah, you misread that, FP. He said that Tolkien used an old word, therefore Blizzard could use it, too.

Original quote:

Your response:

Somehow you transposed "WoW" and "word". Mistakes happen. Not sure how you read it that way, but we've all had brain farts. What I *don't* understand is your continual insistence that your interpretation is correct. It's not.

Except none of the elements you listed are unique to those characters. Even Wolverine's claws appear in other (less notable) characters of other characters. (ok, I used to think the retractable claw part was a stretch, but some comic fan pointed out even THOSE in other characters. If they had something that was distinctively and uniquely belonging to one character (or many characters from one shop) this would have been an issue.)

So, it can be argued that while none of the indivudual pieces you see as "iconic" actually are, they can be assembled into an appearance that IS iconic. Cryptic/NC argued that the character creator was akin to Crayola being sued for pictures people made using their crayons, and if Marvel was hellbent on stopping the infringement, they should target the actual person putting it together.

That sounds *somewhat* weak because, let's face it-- they'd at LEAST still be facilitating infringement to some degree. It shouldn't get them off the hook. Except-- how do you prove someone is facilitating someone else's infringement without first proving that someone else WAS actually infringing? This was actually a big hangup for Marvel. You'd have to essentially include the original infringer in the suit. Imagine the bad press if Marvel had taken this route- suing fans for making homages to their favorite characters in CoH. It was NOT something they wanted to do. In fact, to give you an idea of Marvel's lawyers' competency, this IS one reason they had several negative rulings before the settlement. Rather than use screenshots of other player' infringements ingame as examples (and risk having to bring them in as parties) Marvel had its own investigators make the as-close-as-possible replicas of their characters in CoH. NCSoft pointed out that, since marvel authorized these agents, they weren't actually infringements- they were authorized reproductions. That evidence was dismissed.).

This wasn't the entirety of Marvel's argument (there were also claims that Statesman's likeness was too close to the Captain America trademark, for example) and NCSoft wasn't in a totally-safe position, but a sizable chunk of Marvel's complaint had proven to have issues in just the preliminaries. It was far from a clear and easy win for either party.

My point is that companies have lost similar suits with even fewer points of overlap with existing characters. Heck, even Berke Breathed lost to Disney because his Mortimer Mouse was too closely related to Mickey, and he could make a fair point that he was protected under the parody clause of fair use.

The technicalities Marvel lost on are irrelevant: Cryptic clearly designed many of the costumes and powersets to emulate existing characters. Marvel bungled their approach, but their underlying complaint was valid.

The only truly unique element of any Marvel character I can think of offhand is Captain America throwing his shield as an offensive weapon.

We didn't get that ability for game mechanic reasons, but I would be very surprised if Captain America being known for doing that hadn't been considered as well.

I did a Google search a while back and found exactly ONE character in ANY media that throws a shield frequently enough to be known for doing it: Captain America. My search didn't even turn up another character that had ever done it.

It's a safe bet that throwing a shield is very much a part of the trademark on Captain America, because as far as I can tell it is a trait that is completely unique to him.

Originally Posted by Dechs Kaison See, it's gems like these that make me check Claws' post history every once in a while to make sure I haven't missed anything good lately.

Probably #4.

Same reason Marvel and DC didn't go after each other for both having a character named Scarecrow in their rosters.

Originally Posted by Dechs Kaison See, it's gems like these that make me check Claws' post history every once in a while to make sure I haven't missed anything good lately.

This is a common misapprehension (and the first one I've seen in one of Chase's posts in this thread, so that's good!). Trademarks do not need to be registered with the Patent and Trademark Office in order for the trademark to be protected, but registration is common and preferable to non-registration. Even in the present climate of IP nervousness that permeates the content-production world, many character names and similar designations are not registered trademarks. You can tell the difference between a registered trademark and a non-registered, or common law, trademark by the presence or absence of that "R" in a circle; the "R" stands for "registered."

Registration, however, is prima facie evidence of a mark's validity. Referring back to my Taco Bell example from my first post in this thread, imagine Taco Bell the restaurant sues Taco Bell the bellmaker for violating its "Taco Bell" trademark, but the trademark is not registered. In that case, the restaurant would have to present evidence in court that its mark was actually used and recognized to distinguish its restaurants before even reaching the issue of whether the bellmaker's use of the same name resulted in a likelihood of confusion. If the trademark were registered, that first step of presenting that evidence wouldn't be necessary.

Why, then, don't entities register every single potential trademark? First, as this thread has hopefully demonstrated already, a particular trademark is generally limited in scope. This can run into a lot of registrations if, say, Lucasfilm tried to register the name of every single one of its characters in ever possible medium of as a trademark. I should add that most content creators above a certain size tend to stick a "TM" (designating something as a non-registered trademark) after every distinctive name in their IP's. I'm not aware of any cases where someone tried to litigate the validity of such a trademark extensively, so the "TM" may ultimately establish more for the trademark asserter's peace of mind than for his actual, legal rights.

While I'm discussing registration, I should also mention registration of copyrights. When discussing a work, it's something of a misnomer to say it is "copyrightable." While geekdom likes to attack the more recent iterations of copyright protection (the ones with terms of "life plus X years"), one thing that they did for both large and small copyright holders was to make copyright protection inherent. Once a work is set in some fixed form, copyright protection attaches to it automatically, without any registration necessary. For these purposes, even a draft or a work in progress counts as "fixed," by the way; "unfixed" works are essentially just "ideas."

Registering a copyright with the Library of Congress (not the PTO) again provides prima facie evidence of the existence of the copyright. In some industries, such as publishing, it is accepted that works aren't registered upon creation by the author (early in the creative process) but upon publication by the publisher, in the author's name (late in the process); the inherent protection of copyright law is seen as sufficient. In fact, budding authors are often told NOT to register copyrights in their works because disreputable scam artists of various stripes may use the registration information to target them.

Sorry Ironik, I didn't transpose "WoW" and "word", and I already explained what I thought his post was implying. Oh and providing that explanation isn't insisting that it's "correct".

Now if you can't accept my explanation of what I thought his post implied, that's too bad for you.

Shoot, knew I overglossed something there.

Still, though, since it is NOT a registered trademark, in Cendre's case, it would have to be proven that the character not only existed, but the name/likeness was used prior to a date x to identify "goods or service originating from a specific source." Unlike copyright, which is inherent, for an unregistered trademark it isn't enough to say "it existed before point x." It has to exist and meet the criteria of what trademarks are intended for.

Granted, I've read articles of fashion designers claiming trademark a particular color or style that they claim is uniquely theirs, so this may be rather broad. I always took those cases as a "no, it probably won't hold up under judicial scrutiny, but do you want to spend the money to find out" but I am not a lawyer....

--

I agree; your analysis of the Cende facts was correct. As for your second point here (and the reason I posted again), one of my favorite cases about trademarks involved the John Deere tractor company's attempt to trademark that shade of green for farm implements. Another implement manufacturer had gone out of its way to duplicate that shade of green on their implements, probably (though of course they never said so) to imply a similarity or relationship with Deere. Deere obviously wanted to stop this.

The case made it all the way to the Supreme Court. John Deere lost on what I've always considered a bizarre argument by its opponent. One of the many exceptions to what can be covered by trademark is that "functional" aspects of something can't be trademarked. That is, you can't hold a trademark on round wheels because wheels must be round (or, okay, pendants, round-ish) in order to function as wheels. Deere's opponents argued that by matching the color of Deere's implements, their color had "aesthetic functionality." The Supreme Court bought this, stating that having implements that matched across manufactuers was obviously something that was important to the functioning of implements for farmers.

When I tell this story to farmers, I have to stop there, because they always start laughing and can't stop.

I've never seen an "aesthetic functionality" argument anywhere else, let alone seen one succeed, but then, I am not an IP lawyer.

Careful not to slip into the "satire vs parody" issue there. Parody is considered "fair use." Satire is not. While volumes can be written trying to specify the difference between the two, the simplest (over)generalization I can think of is this:

Parody pokes fun at the original subject matter. It is protected fair use.
Satire targets larger social issues. It is not.
Often the two overlap.

Mortimer Mouse would often lambast political figures and ridicule social issues. Berkeley Breathed also created Mortimer's backstory to stress the parody of the character and the Disney conglomerate, so he tried to blend "parody" and "satire" together.

Disney threatened to sue, then acknowledged that it may be fair use, but "they would be watching." If Mortimer's content strayed from the "parody" too much, then they'd pounce.

I never heard of an actual suit for this. A quick google search just turns up the threats and bluster. I was a big Breathed fan and I always assumed Mortimer's departure was more of "not worth the risk" of a lawsuit than an actual "lost a lawsuit." This is how much of this muscling gets around-- not because of an actual wrong, but because of the COST that defending your actions will bring you. I never dug into it far. Do you have a reference? I'd love the read.

Not anywhere near as clearcut as your thinking is.

I'll concede that Marvel's complaint was not invalid... meaning that there were enough questions of law that this wasn't a frivolous lawsuit with no merit, but it was hardly a guaranteed win. Generally, though, that's enough to file a lawsuit and get the other party to settle, and in many IP cases, that's good enough.

Why? because (gross oversimplification here) it was legitimate enough that it wouldn't risk the judge ordering them to pay the other side's legal fees. (note, the criteria for what justifies rewarding "attorney's fees" and what doesn't requires its own forum, not just forum post. Just accept that "sometimes its x, sometimes its not" and that lawyers are careful not to tread into those riskier cases where their client can get stuck with both sides' bills). You can be "valid enough" to not get stuck with legal fees but still not have a very good chance of winning. It's good enough to force the other side to look at the legal fees they'll soon be forking out and possibly make some concessions, though.

That's also probably why Disney tried pressure and intimidation before going against Breathed (still can't find an actual suit filing). Had the case been a "clear parody" they'd not only risk losing, but possibly risk paying both sides' lawyers in the loss. If the case was less textbook-clear, they could still end up losing, but not having to pay the other party's costs, and the risk of those excessive costs may be enough to get the other side to agree to some concessions....

Beautiful.
That just made my day in some weird and twisted way, thanks.

Create them before Issue 21, and park them in Outbreak.

What? That's what I did.

--NT

The thing is, though, a good lawyer can argue the point that Mortimer was parody and nothing more. Larger issues of satire aside, if the character is *designed* as a parody -- and it pretty clearly was -- it doesn't matter a whit what *else* he's used for. Lots of people saw it as parody, so it basically comes down to who's arguing the case and the judge's leaning.

As Chase illustrates (thus saving me the trouble of looking at my old case law notes) with the John Deere suit about the color green, similar cases have been won and lost on far sketchier and tenuous arguments. Law doesn't always have to make sense, it just has to be convincing to the judge or jury on the day.

Radiolab did a piece on Marvel arguing which of their characters were "dolls" and which were "toys". Which is, of course, a completely ridiculous argument to the layman, since these characters are all dolls, but the terms "doll" and "toy" mean very specific and different things: a doll is a human, while a toy is not. It was vitally important for Marvel to distinguish between the two because it would save them tons of money each year. Anyone who is a fan of comic books in general and the X-Men in particular will enjoy this, I think. (Plus they talk about the larger issues of mutation and what is human.) And relevant to this discussion, characters such as Beast have far more human attributes than not, which means he's more doll than toy. But which side do you come down on? Human or monster? Doll or toy?

Check out the podcast to hear the incredibly interesting story.

You're right in that there doesn't seem to have been a lawsuit, just the threat of one. This actually happened while I was at Lexis-Nexis so we talked about it at lunch, so I'm probably conflating the two occurrences. My bad.

The first few pages of this PDF sum it up pretty well. This is a pretty good read about cartoons and fair use.