Public domain works with trademarked characters

Factual Questions
1

The thread on how to copyright a cartoon character (answer: you don’t; you trademark it) reminded me of a question I’ve been meaning to post for a long time.

The old Fleischer Studio Superman cartoons (which I love) have almost all fallen into the public domain in the US, due to failure to renew the copyrights in (I think) the '70s. The name “Superman,” the image of Superman, the “S” logo, and just about anything else you can think of associated with Superman (and no doubt all the other major characters) are still held as trademarks by DC Comics.

The Fleischer shorts have been distributed on DVDs for a low price, so presumably, trademark law doesn’t prevent the commercial distribution of the shorts or labeling them with the name and likeness of Superman. Is this correct?

Copyright also prevents derivative works, but this doesn’t apply to the shorts. What about trademark? Presumably, the Fleischer shorts could be shown abridged. Could they be edited in a way that changes the story? Could I record new dialog for them, and distribute the results commercially? Could I write and produce a play based on the shorts? Could I put images from the shorts on t-shirts and sell them? What are the boundaries?

2

My opinion is that if the copyright on the films has lapsed, you have the legal right to post, sell, copy, or distribute the films.

However, the Superman trademark continues in force, so any changes you make - other than excerpting them - would constitute violation of the trademark.

Similarly, images from the films would be trademark protected, so no t-shirts.

I’m not sure about the play. It would depend on situations like how the people who took old episodes of the Brady Bunch and made them into live performances handled it. If they got permission to use the old scripts, then you would have to as well. Even if the words were in the public domain the trademarked characters would be a problem. But if they just did it without permission and got away with it on the grounds of parody, then you probably would too.

Just have a very good intellectual property lawyer standing by at all times. :slight_smile:

3

[QUOTE=Exapno Mapcase]
However, the Superman trademark continues in force, so any changes you make - other than excerpting them - would constitute violation of the trademark.

Similarly, images from the films would be trademark protected, so no t-shirts.
[/QUOTE]
What is an image but a very short excerpt? And images other than those of Superman himself, and other trademarked characters would be fair game for t-shirts, right?

4

[QUOTE=Alan Smithee]
The Fleischer shorts have been distributed on DVDs for a low price, so presumably, trademark law doesn’t prevent the commercial distribution of the shorts or labeling them with the name and likeness of Superman. Is this correct?
[/quote]
Trademark cannot be used to thwart the public domain copyright status of a work. Dastar Corp. v. Twentieth Century-Fox Film Corp. (2003).

[QUOTE=Alan Smithee]
Presumably, the Fleischer shorts could be shown abridged. Could they be edited in a way that changes the story? Could I record new dialog for them, and distribute the results commercially? Could I write and produce a play based on the shorts? Could I put images from the shorts on t-shirts and sell them?
[/QUOTE]
Yes to all of the above.

5

Fascinating, Walloon. That’s a pretty recent case, so I doubt there’s much caselaw to address this, but what are the limits? Could I produce a Superman movie without permission from DC and claim that I based it on characters and situations from the Fleischer shorts?

6

The more you move away from something that resembles the Fleischer cartoons, the more likely you are to infringe.

7

[QUOTE=Alan Smithee]
The Fleischer shorts have been distributed on DVDs for a low price
[/QUOTE]
Complete tangent, but I just thought I’d mention that many of the Fleischer Superman cartoons (as well as a bunch of other PD stuff by him and others) are available for free download from the moving pictures section of archive.org - anyone can create and sell their own DVDs of these cartoons (and indeed there’s a great deal of that happening, perfectly legitimately, on eBay).

8

[QUOTE=Walloon]
Trademark cannot be used to thwart the public domain copyright status of a work. Dastar Corp. v. Twentieth Century-Fox Film Corp. (2003).
Yes to all of the above.
[/QUOTE]

I continue to disagree.

The Dastar case concerned a shortened but otherwise unaltered version of the original. I already stated that excerpting would be legal.

The other uses that Alan Smithee mentions merely use public domain material as part of a new work directly based on a trademarked image.

I see nothing in the Dastar decision that remotely touches on this issue. As Gfactor said in the other thread, it is a narrow, technical decision.

So when Alan Smithee asks, “Could I produce a Superman movie without permission from DC and claim that I based it on characters and situations from the Fleischer shorts?” the answer is a flat no. There’s no difference between doing that and doing the things I said no to earlier.

9

[QUOTE=Exapno Mapcase]
So when Alan Smithee asks, “Could I produce a Superman movie without permission from DC and claim that I based it on characters and situations from the Fleischer shorts?” the answer is a flat no.
[/QUOTE]
That’s basically what I meant when I wrote above, “The more you move away from something that resembles the Fleischer cartoons, the more likely you are to infringe.”

10

My limited understanding of Trademark suggests that it only pertains to the marketing of the material - so, though Marvel has the trademark to “Captain Marvel” as a name, DC is still able to produce Captain Marvel comic books, but cannot title them “Captain Marvel” or a derivative thereof.

In that case, I don’t see the issue with derivative works so long as they’re not promoted using the name ‘Superman’ or any image of Superman that isn’t an excerpt from the material in question.

11

[QUOTE=CandidGamera]
My limited understanding of Trademark suggests that it only pertains to the marketing of the material - so, though Marvel has the trademark to “Captain Marvel” as a name, DC is still able to produce Captain Marvel comic books, but cannot title them “Captain Marvel” or a derivative thereof.

In that case, I don’t see the issue with derivative works so long as they’re not promoted using the name ‘Superman’ or any image of Superman that isn’t an excerpt from the material in question.
[/QUOTE]

Sorry, this is simply wrong. Marketing has nothing to do with it.

12

[QUOTE=Exapno Mapcase]
Sorry, this is simply wrong. Marketing has nothing to do with it.
[/QUOTE]

Without an explanation as to the Captain Marvel situation, I’m not really inclined to simply defer to your opinion on the matter.

13

[QUOTE=Exapno Mapcase]
Sorry, this is simply wrong. Marketing has nothing to do with it.
[/QUOTE]

Sorry, I have to disagree quite strongly. Marketing and confusion between companies selling products is EXACTLY what trademark is about.

Companies can and DO sell old Superman cartoons, but do so without marketing using DC comics trademarks.

Companies can and DO have characters named the same as trademarked characters of other companies, as long as they don’t market in such a way as that it infringes upon those trademarks.

This things are pretty clear in the laws as well as court decisions, not to mention how things work in the real world.

If you think marketing has nothing to do with it then you have a completely backwards idea of what trademarks are.

14

[QUOTE=CandidGamera]
Without an explanation as to the Captain Marvel situation, I’m not really inclined to simply defer to your opinion on the matter.
[/QUOTE]

Well now, that was a very good point you brought up, but…

We need to get one of the real dedicated Comicbook fans in here, but as I understand it, the Captain Marvel situation is a lot more complex.

The original Captain Marvel’s company went out of business, and the trademarks were not being enforced or somesuch, IIRC, and Marvel was able to make and market a series with a Captain Marvel (an original work named in tribute to the old character). However, later on DC acquired the rights to all the original companies characters, and began using adapted versions of them in the DCU (a pretty common tactic of theirs, actually). DC holds the legal rights to the original Captain Marvel, but either as a court settlement, or a general understanding between the companies (I forget which), Marvel continues to be free and clear because there was no legal obstacle to the use of Captain Marvel when they made their version.

Again, it’s been a long time since I read up on this, so I’m sure someone will come along later and correct me. I might actually research this a little and come back with sources later on, but I might forget so don’t hold your breath. :wink:

15

[QUOTE=H3Knuckles]
Well now, that was a very good point you brought up, but…

We need to get one of the real dedicated Comicbook fans in here, but as I understand it, the Captain Marvel situation is a lot more complex.
[/QUOTE]

I’m one of the dedicated comocbook fans.

Here’s some more info on the Captain Marvel situation:

http://goodcomics.comicbookresources.com/2005/07/07/comic-book-urban-legends-revealed-6/

16

[QUOTE=Dan Norder]
Sorry, I have to disagree quite strongly. Marketing and confusion between companies selling products is EXACTLY what trademark is about.

Companies can and DO sell old Superman cartoons, but do so without marketing using DC comics trademarks.

Companies can and DO have characters named the same as trademarked characters of other companies, as long as they don’t market in such a way as that it infringes upon those trademarks.

This things are pretty clear in the laws as well as court decisions, not to mention how things work in the real world.

If you think marketing has nothing to do with it then you have a completely backwards idea of what trademarks are.
[/QUOTE]

I think the problem is that we are using different definitions of marketing.

As the Dastar decision makes clear, the key principle in trademarks is that of “origin.” Can a producer feel assured that the consumer understands who is the originator of the product?

Marketing is certainly a component of this, because if the product is not brought before the public there can be no confusion. But marketing is a subset of the issues involved.

You can have a Cadillac brand of dog food (and do) without infringing on the Cadillac brand of automobile because there is no reasonable inference that the automakers are putting out the dog food. However, even if there is no reasonable inference that the automakers are also putting out a Padillac line of cars, that would be barred because of the possibility of confusion. Same if the Dastar corporation put out a line of cars with the Cadillac shield on its cars. Marketing is involved, but the question of origin is the legal point.

When Apple Computer started, Apple Corps got an agreement from it saying that it wouldn’t get into the music business. When Apple Computer started iTunes, Apple Corps naturally sued. When Apple Computer, now just Apple, announced the iPhone, there were at least two existing products named iPhone from two different companies. I believe Apple made a behind-the-scenes settlement, but the business press said they probably could have gotten away without one because the products were sufficiently different.

Donald Trump created a kerfluffle a few years ago when he attempted to trademark the phrase “you’re fired.” People did not understand that he was attempting to do so in the narrowest of contexts related to his show, and wasn’t trying to - and couldn’t - trademark the ordinary English phrase. He just wanted control over the proliferation of products cashing in on his success. I don’t think it ever got very far, but it was an understandable try.

The case of the two Captain Marvels is a particularly bad example in terms of law because Marvel and DC came to a behind-the-scenes agreement on the allowable uses of the two characters. This circumvented whatever the courts would have found.

Harlan Ellison’s name is now a registered trademark, BTW. There are legal reasons for doing this that I don’t understand, but expect to see more of it in the future.

While trading anecdotes about trademark is endless fun, my point is simply that marketing is not what trademark law concerns. Origin is. Marketing is a means rather than the substance.

I hope this makes my comment clearer.

17

[QUOTE=Exapno Mapcase]

The case of the two Captain Marvels is a particularly bad example in terms of law because Marvel and DC came to a behind-the-scenes agreement on the allowable uses of the two characters. This circumvented whatever the courts would have found.
[/quote]

I can’t find any evidence of a behind the scenes agreement between the two on Captian Marvel.

Yes. You’re using “marketing” different than everyone else here. Crystal clear. :wink:

Here’s a related item - a discussion of DC and MArvel’s joint trademark on the word Superhero.

Particularly relevant :

18

Out of curiosity, I looked up collections of the old Superman toons on Amazon. All three items I found have the name “Superman” prominently displayed. (And I assume DC could reissue the original Captain Marvel comics under the “Captain Marvel” title?) The first two items I found had what appear to be (and in the latter case certainly is) a new rendering of Superman as depicted in the Fleischer cartoons. (The latter featuring a close-up of the “S”-shield as it looked in the cartoons.) The third item, however, has an image of the Silver-Age Curt Swan Superman and the iconic red and yellow 3-D font for the title. I assume this is blatant trademark violation, and simply hasn’t been caught yet.

The jury seems to still be out on whether I could sell t-shirts with images from Fleischer on them. What about using clips from the Fleischer shorts in ads for my donut shop or used car lot? (I can guess the answer to that one!)

19

[QUOTE=Exapno Mapcase]
While trading anecdotes about trademark is endless fun, my point is simply that marketing is not what trademark law concerns. Origin is. Marketing is a means rather than the substance.

I hope this makes my comment clearer.
[/QUOTE]

Actually, no, not at all… It would be like claiming that NASA has nothing to do with the space program, and that it’s a engineering company, and that the space program is just a side effect.

I should add that all the comments about Apple Computers and so forth is quite basic knowledge but completely irrelevant to what you are trying to argue. It’s be like further telling me about how NASA built moon rovers and space shuttles and so forth and hoping people would think it means that they are just engineers and not really in the space program.

And this bizarre attempt to redefine words is pointless anyway, as the conclusions you tried to support with this tactic are would still not only be wrong but quite well demonstrated as wrong by case law and real world practices.