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Disney Files Lawsuits to Defend Rights in Marvel Characters

This month, the Walt Disney Company filed several federal lawsuits in New York and California to fend off a series of copyright termination notices served by five writers and illustrators claiming rights to Marvel characters and stories. Disney, which has owned Marvel Entertainment since 2009, is seeking to preserve its complete rights in well-known superhero characters including Iron Man, Thor, Spiderman, Doctor Strange, Ant Man, Black Widow, Hawkeye, Captain Marvel, and Falcon. With these beloved characters, the Marvel franchise has created some of the highest-grossing action movies of all time. Avengers: Endgame, for example, generated $2.79 billion at the box office worldwide.

The five writers and illustrators, all but one of whom is deceased, worked with Marvel in the ‘50s, ‘60s, and ‘70s and now attempt to “reclaim” rights in characters they allege to have helped create. To do so, they point to copyright law and argue that authors or their heirs may regain ownership of a work after a certain number of years. Some of the termination notices would reportedly take effect as soon as 2023, including one for Spiderman. Nonetheless, Disney takes the position that the work done by these writers and illustrators were works made for hire, rendering all rights Disney’s. Counsel for Disney also added that its lawsuits were filed “to confirm that the termination notices are invalid and of no legal effect.”

Third Circuit Holds That Trademark Infringement Cases are not Precluded by TTAB Proceedings

The Third Circuit Court of Appeals recently issued an opinion regarding a dispute over the rights to the “EBONYS” trademark in relation to a Philadelphia soul band.  Procedurally, the dispute arose in 2013, when David Beasley (“Beasley”) brought a petition to cancel a former bandmate’s (William Howard) trademark registration based upon fraud, which was subsequently dismissed.  Later, in 2017, Beasley filed another petition asserting that Howard’s trademark was likely to cause confusion with Beasley’s purported rights and interests in his alleged “EBONYS” mark; however, the Board dismissed that petition as well. 

Beasley then used Howard for trademark infringement in federal court, asking the Court to cancel Howard’s registration and ownership of the subject mark, and for damages as a result of the alleged infringement.  The district court dismissed that case, holding that the Board had dealt with the same allegations, claims, and theories, and therefore was precluded.  On appeal, Beasley asserted, and the Third Circuit agreed, with the proposition of law that claim preclusion was inapplicable because the Board’s review and rulings were confined to trademark registration ownership issues, and not whether infringement and resulting damages was present.  In its September 17th opinion, the Third Circuit held that “[b]ecause the TTAB has no jurisdiction to consider whether an infringer’s use of a mark damages a petitioner seeking cancellation, and in turn cannot award any remedy beyond cancellation,” Beasley’s claim is “not one that could have been brought in a TTAB cancellation proceeding.”  Accordingly, the Third Circuit found that Beasley’s trademark infringement case should proceed, and therefore remanded the case back to the district court for further proceedings. 

Artist “Liberates” Tiffany & Co.’s Blue by Selling Acrylic Paint in the Brand’s Trademarked Color

Recently, British artist Stuart Semple made headlines when he created a 150 ml tube of “super flat matte high-grade shade” acrylic paint called “TIFF” and sold it for $28 on his e-commerce site.[1] The buzz around this pre-order project centers on the fact that the tube oozes a particular robin’s egg blue hue, No. 1837 in Pantone’s Color Matching System, which is synonymous with the jewelry brand, Tiffany & Co. In doing so, Semple endeavors to “liberate” the signature shade and make “this once unattainable color” available to “all artists to use in their creations.”[2] However, through this project, Semple also highlights the bounds of protection that colors have as trademarks under U.S. trademark law.

In the seminal case Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995), the Supreme Court held that the Lanham Act permits the registration of a trademark that consists, purely and simply, of a color. Though, not just any color can be trademarked, nor can any trademarked color enjoy widespread protection. As explained in the Qualitex decision, a color mark consist of one or two colors that are used on a particular object and act as a symbol with which consumers identify a particular brand. Examples of popular color marks include Post-Its’ canary yellow adhesive stationary notes or Christian Louboutin’s bright red contrasting outsoles. Likewise, Tiffany & Co. maintains multi-class trademark registration for its blue shade, but only for its use on its boxes, drawstring jewelry pouches, shopping bags, retail services, jewelry featuring the color, and the like. As such, Tiffany &Co.’s trademark registration is specifically and narrowly tailored to the actual and consistent uses the brand makes of the color. Tiffany & Co. does not, in turn, have a monopoly on the color, which would otherwise hinder artists’ ability to use it. Accordingly, if artists incorporate Tiffany & Co.’s blue in their works, it is not necessarily “ILLEGAL” as Semple claims.[3] While it is true that Tiffany & Co. and other brands that have registered color marks do enjoy protections, these protects are limited to specific good and/or services.