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.
April 10th, 2008 at 12:21 pm
If you can trademark a property out the wahzoo to the point of making it unusable in the public domain, isn’t that effectively saying there is no public domain? What can you do with the property in such situations?
Has there been any kind of discussion of expiring trademarks when properties hit the public domain?
April 10th, 2008 at 12:46 pm
@Daniel: This is a hot topic right now. Legal experts and lobbyists are trying to work out an alternate approach, but given the influence of the trademark holders I wouldn’t expect a legislated rollback anytime soon. There are hints and possibilities as to a judicial rollback, but that too would take years to work through short of a direct on-point opinion from the Supreme Court.
The student essays I link in the Sell to Marvel post discuss the issue in regard to comics characters, though the suggested possibilities for open IP exploitation are in many ways wishful thinking by sympathetic law students. You might also be interested in the article linked below, which documents the concern on several fronts:
http://papers.ssrn.com/sol3/papers.cfm?abstract_id=972358
April 10th, 2008 at 2:37 pm
I never worried that Superman wouldn’t survive. I suspect that he, like Robin Hood and King Arthur and Sherlock Holmes and the characters who populate Fables, is going to thrive if and when he’s in the public domain.
I just can’t see DC without him. Though a DCU rebuilt to not have Supes could be interesting. And more than a few have already suggested that Captain Marvel is waiting in the wings.
April 10th, 2008 at 5:21 pm
Speaking of Captain Marvel, when will he enter the public domain? He was created pretty soon after Superman wasn’t he? Does CC Beck have any heirs?
April 10th, 2008 at 5:57 pm
Captain Marvel was a work-for-hire property, created by Bill Parker and C.C. Beck, with input from other Fawcett employees.
April 10th, 2008 at 8:48 pm
I think now, more than ever, all three sides need to hash out a settlement. Each side is going to own something the others need, and the estates are due compensation for the copyrights. Whether that means selling Superman back to WB lock, stock and barrel; a licensing arrangement; or a three-way joint ownership, I think settling now and getting it over with would be a clean, efficient way to put the matter to bed once and for all and to satisfy all parties.
April 11th, 2008 at 10:05 am
Greeneclipse, you are right on the money. This is almost like if Time Warner just wanted the Big Three (Superman, Batman and Wonder Woman) and sold off the entire DC universe. I hope all parties will come a justified agreement, because without Superman, DC, let all all comic book companies, are without a lynchpin character in the industry.
April 11th, 2008 at 10:05 am
I hope these two players come to a conclusion soon, because while they’re picking at each other, the Republican candidate is moving ahead into his campaign without –
Oh. Different situation.
Nevermind.
April 11th, 2008 at 10:15 am
I believe this will all work itself out. The Superman character has been a staple of the DCU for so many years. Beyond, that, it has been the symbol of American Pop Culture. Protecting the legacy is the important thing.
April 11th, 2008 at 10:21 am
I have a question and maybe it’s a dumb question, but isn’t DC’s argument that they have added so much to the concept of Superman that surely they own some or most if not all of it a dangerous argument for a publisher to make?
How does this not trickle down to older Creators like Perez, Wolfman, Byrne and Claremont not being able to say, well we created these titles or these characters for these books, etc.
I understand they were work for hire, but DC is essentially claiming that while the other two are recognized as co-creators, since we expanded on their idea it isn’t just their idea anymore. That argument could easily be used against them, “yes i was just work for hire, but since i created the “Title X” and had a large and expansive and successful run that they base cartoons and toys off of, I created a concept beyond what i was originally hired for and therefore the concept of “work-for-hire” should be technically ignored.”?
Like how is that argument that different from DC disregarding the idea that in Action Comics #1 the character Superman was created and while other things have happened since then. it is still Superman they’re happening to, who was created in Action Comics #1?
April 11th, 2008 at 10:32 am
I’ll keep this simple. Warner Brothers is going to appeal this decision and as we well know, this could be held up for a very LONG time. There WILL be a settlement involving lots of cash, the Superboy issue will be settled in the same way eventually and all will be right for WB and the world of Superman. So forget all this “what if” talk. It’s just that, talk.
April 11th, 2008 at 10:50 am
Rblythe is right, of course. The Siegels and Schusters want as much money as they can get, while DC and Time Warner want to pay as little as they have to.
You can bet that DC/Time Warner has people who everyday calculate legal fees and compare them to all of the short and long term settlement options.
I’m still curious how Superman profits are determined in a project like “Justice League”. Also, how does the decade or so that the Superman film project was in “development hell” get calculated in the profitability of “Superman Returns”.
April 11th, 2008 at 11:05 am
Jeff,
Just wanted to say thanks for these great articles. I work for a Federal Judge in the 1st Circuit at the District level (although, I am not a lawyer) and copyright law is some of the most complex case-law to deal with (besides Superfund cases!)
It is a pleasure to be able to read a clear and informed analysis of one of the most interesting and important decisions that concerns the hobby that we all love.
Any way that this case turns and eventually ends up, I just hope that it improves conditions for creators by clearing the field for fair and concise contracts/agreements, while letting publishers still put out the best of what their creators have to offer. As hard as this case may end up being for some of the parties involved, it should create a more level playing field for the future.
April 11th, 2008 at 11:09 am
I’m sure I got just about everything wrong in [url=http://shanghalla67.blogspot.com/2008/04/super-conundrum.html]this blog post[/url], but I am still wondering this: If the Siegel estate can successfully argue rights to DC’s trademarks derived from their copyright, does that jeopardize the joint Marvel/DC mark on the word “super-hero?” After all, Jerry and Joe created the template from which all costumed, super-heroes are derived.
Also, I’m not so sure the Siegel, if there were to license Superman, would be barred from using anything other than the powers shown in Action #1. After all, isn’t is a rule of holding trademarks and copyrights that one must defend them? DC has allowed a great number of Superman knockoffs to appear without complaint, including Supreme, Hyperion, Ultraman and even Super-Goof.
April 11th, 2008 at 11:10 am
@Cory: The difference lies in the way federal law treats works for hire. The original creator of a work made for hire is not, from the standpoint of the law, the actual creator. The material is legally a work of corporate authorship–it’s as if DC Comics took human form and wrote and drew the story itself.
Where things get tricky is when a company brings in freelancer who adds things to the character but does not sign the freelancer to a contract that states their work is work-for-hire or otherwise assigned wholly to the company. That’s what happened in the Neil Gaiman/Todd McFarlane case, which grew out of Gaiman’s adding original characters–Medieval Spawn, Angela, Cogliostro–to the Spawn series.
April 11th, 2008 at 11:16 am
“If the Siegel estate can successfully argue rights to DC’s trademarks derived from their copyright, does that jeopardize the joint Marvel/DC mark on the word “super-hero?” After all, Jerry and Joe created the template from which all costumed, super-heroes are derived.”
DC and Marvel jointly own the trademark to the word “super-hero” (in its use in comics, magazines, certain merchandise, etc.), not to the rather vague concept of a super-hero.
April 11th, 2008 at 11:33 am
I am a little confused about the heirs selling their rights back to DC. Is that not what has already happened in the past, at least in part during two seperate lawsuits…or is it now because of a change in the law? What is to keep from a new law being enacted in the future to create this scenario all over again? If I was an heir I would of course take the position of the Siegels and attempt to get what I would probably feel was my just desserts so to speak. On the other hand, if i owned said mega corporation, the constant threat of creative blackmail would of course make me fight this to the bitter end as well. In the end, it will be in the best interests of all parties involved to keep Superman first and foremost in the public interests so that he remains the cultural and profitable icon that he has become!
Love the articles and continue to follow this with great interest!
April 11th, 2008 at 11:43 am
It is a relief that DC still have Superman, and hope DC will have Superboy for new stories someday.
April 11th, 2008 at 12:29 pm
My head just exploded. Again.
April 11th, 2008 at 1:45 pm
This topic touches something that has bothered me for some time now. With all that trademark stuff is it even POSSIBLE for a comercially-viable concept to fall into public domain?
I don’t like it AT ALL, because that means that the big corps aren’t just stealing from a couple of desperate teenagers. They are stealing from all of us!
Best,
Hunter (Pedro Bouça)
April 11th, 2008 at 2:48 pm
Here’s one thing many people are forgetting: Never before in history has characters become “financially viable” beyond initial printing. With Disney and other cartoon properties-we now have an industry that can be sustained by characters.
In olden days ost characters were created and written by the same author. Usually there only was a series when a character was polular enough (Tom Sawyer had a few sequels not counting Huckleberry Finn) When they died, new stories about those characters were created until they passed into public domain.
Now with the merchandising rights, as well as DVD, Movies, book, video game, ect. a company can make loads of money and for as long as there is an intrest in the character
April 11th, 2008 at 5:50 pm
With all that trademark stuff is it even POSSIBLE for a comercially-viable concept to fall into public domain?
I don’t like it AT ALL, because that means that the big corps aren’t just stealing from a couple of desperate teenagers. They are stealing from all of us!
Nonsense. DC stole nothing from “two teenagers” – they sold it of their own free will. This whole procedure is happening because of recent changes to copyright law.
Considering that the “big evil corporation”s are the one that invest in building brand names and trademarks, they should be entitled to the rewards of said investment. Hence them not stealing from you – since you didn’t do anything of merit.
Jesus, so many of you sound like socialists…
April 11th, 2008 at 6:29 pm
Jeff, is it possible that if or when Superman becomes public domain, DC could go right ahead and copyright and trademark THEIR version of him? I ask because Thor (as are gods of all mythologies) is public domain, yet no company other than Marvel can publish an interpretation identical to Marvel’s, since that one is copyrighted and trademarked.
Could DC reimagine Superman from the ground up, keeping specific key elements, while changing others so that he’s ‘different’ enough?
April 11th, 2008 at 7:14 pm
This whole situation is so insane.
DC has added more than enough original material to Superman to be in the very least a co-owner. Taking away their full rights to the character would be criminal.
April 11th, 2008 at 8:29 pm
“Taking away their full rights to the character would be criminal.”
Copyright law is designed – is Constitutionally required – to take away exclusive rights after a while.
April 11th, 2008 at 9:28 pm
Hey, they signed a contract, so that makes it OK. Well, not always. Back in the 60s, the court negated a contract that the artist Antonio Vargas had signed with David Smart, publisher of “Esquire” on the grounds that the terms were such that they amounted to slavery, and you couldn’t enslave someone in America even if they signed a contract.
In much the same way, the contract that Siegel and Shuster signed with DC amounted to theft. Some rich middle aged businessman finagled a couple of talented young teens into signing a contract that let DC steal the rights to their creation. So it was legal. It’s still theft. I’m glad some people have the moral scruples to see that.
April 11th, 2008 at 10:15 pm
i hope to live so long to see more copyrightfree comics
April 11th, 2008 at 11:43 pm
Duder:
Geez, you sound like a Republican
I kid, I kid. But there are legitimate concerns in this issue as to how long corporations (as compared to individuals) can benefit off of something, particularly something with notable cultural value. This is the sort of issue that gets simplified (down to corporation versus citizen) and then debated back and forth ad nauseum in modern society. No easy answers, methinks.
April 12th, 2008 at 2:23 am
I think it’s beyond stupid that the Siegel’s think they have claim on Superboy. So if Lois and Clark ever have a kid naturally (I think that’s been discussed to be impossible) would the Siegel’s try to claim it? Superboy AKA Conner Kent isn’t Clark Kent. He’s a hybrid. Pretty much to quote Infinite Crisis novel: Conner’s got two daddies.
April 12th, 2008 at 2:47 am
“I think it’s beyond stupid that the Siegel’s think they have claim on Superboy.”
Not only do they think that, the court has already ruled that it is true. So what’s so stupid about thinking the truth? It would seem to be preferable to not thinking the truth.
April 12th, 2008 at 10:40 pm
Dana says: “I think it’s beyond stupid that the Siegel’s think they have claim on Superboy.”
Er, why, exactly?
Siegel created Superboy. DC rejected his initial pitch and then started publishing Superboy stories while he was serving overseas. The courts acknowledged Superboy was rightfully Siegel’s property. He sold the rights to DC, and then his family revoked the transfer, as allowed by modern copyright and trademark law.
Why is it ridiculous for the Siegels to think they have a claim on Superboy when US copyright and trademark law give them PRECISELY that claim?
You can say that the law itself is wrong (I feel it’s wrong only because requiring 56 years to pass before transfer can be revoked is absurd, and furthermore, with all respect to Siegel and Shuster and acknowledgement that they were taken advantage of, I don’t believe copyrights should outlive their creators), but you can’t fault the Siegels for it. All they’ve done is what they’re entitled to under US law.
“So if Lois and Clark ever have a kid naturally (I think that’s been discussed to be impossible) would the Siegel’s try to claim it?”
Only if DC called him Superboy.
“Superboy AKA Conner Kent isn’t Clark Kent. He’s a hybrid. Pretty much to quote Infinite Crisis novel: Conner’s got two daddies.”
The Siegels own no copyright on Conner Kent. They do, however, own the trademark to the name “Superboy”. DC has already stated that they could have chosen to keep Conner alive under another name (see also: Superboy-Prime becomes Superman-Prime).
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