A number of fans are concerned about the impact of the Siegel decision on the future of Superman, and understandably so. Since the lawsuit became news a few years ago, properties implicated in the Siegel claims–Superboy and the Earth-2 Superman–have been killed. Moveover, the Siegels’ lead attorney asserts that the Siegel and Shuster heirs will take over the franchise in 2013, with some fans adding that this means the end of DC’s trademark rights in 2018.
How can Superman survive?
As I’ve hinted throughout this series, there are actually a number of reasons why DC is not likely to lose Superman, even after the Action #1 material enters the public domain in 2033. So some of us can sleep better at night, here’s an overview of why the death of Superman has been greatly exaggerated.
Original material: DC has added so many new features to the initial Superman material that it is arguably at least a co-owner of the character as written today. Even assuming that the Siegel and Shuster heirs gain 100% of the U.S. copyright in Action #1 in 2013, they won’t own or control the entire franchise.
DC’s established trademarks: Even if we concede (which DC won’t) that the Siegels’ copyrighted material gives them a financial interest in DC’s trademarks, the Superman marks are so well established as a source indicator for DC that the likelihood of a judge awarding them wholesale to the Siegels is nil. Trademark rights are also the primary reason why the public domain does not mean doomsday from DC’s perspective–its lawyers will most likely argue that any attempt to exploit the public domain Superman material infringes or dilutes its trademarks. As noted earlier, it’s a strategy that has worked quite well for others–e.g., the owners of the Peter Rabbit, Edgar Rice Burroughs and Disney marks–as a means to squelching attempts to exploit material otherwise in the public domain.
The 2018 myth: DC will not be losing its trademark rights in 2018. From what I can see, that particular comics urban legend arose from a misreading of the requirement that a trademark holder must certify that the mark remains in active use. During the mark’s initial term–a period long over for most if not all Superman marks–that filing must be made after the first five years. From this, it appears, some have concluded that if the Siegel and Shuster heirs refuse to license any Superman material for five years from 2013, the trademarks will lapse to the heirs.
This is incorrect. As noted above, the amount of new material makes it likely that DC has an ownership interest in the present Superman, which means they could continue to publish new Superman material without a license. Moreover, even if a court were to declare that DC isn’t at least a co-owner of the character, DC has a clear legal right–which the Siegels themselves concede–to sell any derivative material prepared before April 16, 1999 without paying the Siegels a dime. DC will likewise have a right to sell material created from April 16, 1999 to 2013, albeit owing the Siegels a percentage of the profits. This means, in the absolute worst case scenario, that DC can keep the trademarks alive simply by marketing inventory until the Siegel and Shuster interests expire in 2033.
Success on appeal: Because the legal technicalities are so arcane, I’ve held off on discussing what I believe to be the Achilles’ heel of the Siegel Superman opinion: the discussion of the technicalities of the termination filings. A commenter yesterday pointed to some key issues that DC is likely to raise on appeal; because this isn’t a law journal I’ll hold off on saying more about the procedural problems here, except to call attention to the celebrated passage concerning the house ads. It is, as I’ve said myself, a clever example of how legal thinking can slice and dice to get to an equitable result, but it’s also a line of reasoning that a higher court could easily dismantle. To get an idea how, compare the court’s narrow and literal interpretations in that section to the broader approach to derivative works implicit elsewhere–such as Superboy, which we’ll examine next.