Marvel owning Superman–before the Siegel copyright decision, you would have assumed this could only be a dream, a hoax, or an imaginary story. Now it might actually happen. As we saw in my last post, under the law of jointly owned copyrights it is at least theoretically possible for the Siegels to sell their Superman rights to another publisher, since the law allows each co-owner to assign or license copyrighted property.
Yet the Siegels’ copyright interest in Action #1 does not give them an unfettered right to do whatever they want with the whole franchise. For example, in the previous post we noted that the judge left unresolved the question of how much of the current Superman universe derives from the material that the Siegels share. New characters are one problem–Lex Luthor, Zod and Bizarro are just a few of DC’s copyrighted story elements not found in the Siegel material.
However, this is not the greatest obstacle to what would be the sale of the century. As DC’s own lawyers have argued, trademark law arguably protects the distinguishing elements of the Superman properties in ways that can effectively prevent the distribution of competing Superman material. The Siegels, of course, disagree.
This is a cutting-edge intellectual property dispute. How the court will–or should–rule is uncertain. So instead of simply answering questions, let’s take a look at each side’s arguments and decide for ourselves what we think the Siegels should be allowed to do.
DC: Over the past few years, a series of law journal articles have appeared explaining how trademark law can keep creators or heirs from exploiting any copyright interest they might regain in a case like the Siegels’. This isn’t a coincidence. The essays that sparked the trend were written–surprise!–by lawyers for DC and Time Warner.
These articles address a legal strategy that has been used by a variety of trademark owners–such as Disney and the Edgars Rice Burroughs estate–to prevent others from selling material that is subject to termination rights or has entered the public domain. The key to this strategy lies in the difference between copyright and trademark. While copyright serves to protect an original work of authorship, trademark serves to identify and distinguish a brand. Trademark rights provide legal protection separate from any copyright interest–indeed, they can continue even after a copyrighted work enters the public domain.
This arguably places strict limits on what the Siegels can do with their copyright interest. The Siegels could try, for example, to publish their own copy of Action Comics #1, but marketing any material protected as a registered trademark puts them at risk of a lawsuit from DC. Since DC has trademarked the core elements of the Superman universe in every medium you can imagine, there is not much in the Siegel material to which DC could not raise plausible claims of trademark infringement and unfair competition.
Similarly, the Siegels could try to sell their copyright to Marvel, but once again, DC would claim that any attempt to sell new or even reprinted Superman material infringes on its trademarks. From DC’s perspective, Superman, Clark Kent and Lois Lane do not merely tell a story; they also provide information about the product itself.
The Siegels: To see how the Siegels hope to flip DC’s trademark argument to their own advantage, let’s go back to the web page in the last link above. In the case at issue DC’s lawyers demonstrated the strength of their trademark by describing how the distinguishing elements of its current marks can be traced all the way back to when the character first appeared in 1938.
That is, back to the very Superman material in which the Siegels own half the copyright.
This is what I was referring to earlier when I noted that the court did not resolve the issue of mixed trademark and copyright. According to the Siegels, the inclusion of their copyrighted material into DC’s Superman trademarks gives them a partial interest in the trademarks themselves. This would mean they have a right to 50% of all post-termination profits from exploiting trademarks that incorporate the Siegels’ Superman material or material derived from it. Likewise, if the judge recognizes their interest in the Superman marks, that raises the possibility that they could be allowed to exploit their Superman properties however they choose–such as selling their interest to another publisher.
Will the Siegels sell Superman to Marvel? The possibility that Marvel could publish its own Superman book is rather intriguing. Even DC couldn’t resist the temptation to let Stan Lee re-imagine the character. Still, it’s not likely that Marvel or any other publisher will end up with its own version of the character, and there are a few reasons why.
One is the derivative rights issue mentioned at the start of this post. The copyright problem goes further than previously unmentioned characters. Is the Superman of Earth-1 the same character as the Superman of Action Comics #1? What about the Superman of Earth-2? After all, the Siegel Superman could not fly, and there is nothing in Action Comics #1 to suggest that he lives in an alternate universe, let alone has the power to fly. We can expect DC to argue that, much like Medieval Spawn or the Supremes in the Supremacy, each Superman since the first is sufficiently original as to be its own separate copyrighted character or least to contain distinct new copyrighted features. Even if the Siegels were to sell Superman to Marvel, the resulting character is not likely to mirror the Superman we see in DC’s current continuity.
Trademark law makes purchasing the Siegels’ Superman interest even more of a risky investment. As the articles written by its lawyers indicates, we can expect DC to take an aggressive position in regard to any attempt to leverage Superman material in the marketplace. The resulting legal action would be expensive and time-consuming, lasting conceivably upwards of a decade until all the appeals were exhausted. There is also a substantial likelihood that Marvel would either lose or end up making some kind of concession in a settlement. Any number of lawyers and corporate executives would argue that this risk makes the Siegel material a bad bargain at any price.
A third and not insignificant factor is self-interest. Marvel has termination rights issues of its own, as this case involving Joe Simon and Captain America illustrates. Were Marvel to try to tweak DC buy purchasing the Siegel rights–even just to sell a reprint–it could prompt DC to go after Marvel’s own vulnerable signature characters. Just as baseball owners resisted free agency back in the 1970s, we can imagine that no one at either DC or Marvel is eager to create an open market for their most profitable company properties.
For these and other reasons the chief value of the Siegels’ victory would seem to be as leverage in a settlement negotiation.
Can’t the Siegels and Shusters reclaim the Superman trademark? That argument has been made, and we’ll be addressing it (and a few other things) in my next post.