Before the America Invents Act

Under the pre-AIA law, the relevant section of the Patent Act read: “A person shall be entitled to a patent unless . . . the invention was . . . in public use . . . in this country, more than one year prior to the date of the application for patent in the United States.”⁴ That version of the law still applies to any patents or applications whose filing date predates March 16, 2013, which would presumably include most of the patents and applications owned by Wayne Enterprises.

There are three things to note about the old law, two of which we can see in the text. First, it provided a one-year grace period for any public use. Second, it was limited to public use in this country (i.e., the United States). For example, Batman’s use of gadgets in China in The Dark Knight wouldn’t trigger § 102(b). Third, it was very strict about what constituted public use. Any use of the invention in public counts—even a single use, and even if the invention is not actually visible to the public.⁵ A discarded gadget, security camera footage, or one of the Joker’s goons willing to testify could be enough to establish public use.

There is an experimental use exception to public use, but it almost certainly does not apply here. The exception requires that the experimentation be done by or at the direction of the inventor as part of the development and testing of the invention.⁶ The exception also requires that the use necessarily be in public.⁷ None of those requirements could plausibly be met in this case, even if someone from Wayne Enterprises (Lucius Fox, perhaps?) were willing to testify to a working relationship with Batman.

Under the old law, then, Wayne Enterprises would have one year from the day Batman first uses a new gadget in public before it must either file a patent application or abandon any right to do so. Why is this a problem? Why not file early and let Batman do as he wishes? That makes sense from the point of view of Wayne Enterprises and Bruce Wayne, who want Wayne Enterprises to make a lot of money. But it is a problem for Batman, who would prefer that Wayne Enterprises keep the technology a secret, yet somehow continue to make money from it. Batman’s gadgets are a major part of his advantage over criminals, and he must always have the latest and greatest in order to stay ahead.⁸ Technologies that would have been a marvel even 20 or 30 years ago are commonplace today. This tension between protected disclosure and trade secrecy is a common one for individual inventors and companies. But before we consider a possible solution, has the situation changed under the AIA?

After the America Invents Act

For patents and applications with an effective filing date on or after March 16, 2013,⁹ “[a] person shall be entitled to a patent unless . . . the claimed invention was . . . in public use . . . before the effective filing date of the claimed invention.”¹⁰ Note the elimination of the territorial limitation and the apparent elimination of the one-year grace period. In fact, the grace period has not been entirely eliminated but it is now quite different—and more complicated.

Under the new § 102(b)(1)(A), there is a one-year grace period for disclosures made by the inventor or by “another who obtained the subject matter disclosed directly or indirectly from the inventor.”¹¹ Under the new § 102(b)(1)(B), there is a one-year grace period for disclosures made by anyone as long as the inventor or another who obtained it from the inventor disclosed it first. In other words, prior disclosure by the inventor or someone who obtained it from the inventor immunizes against later disclosure by unrelated persons.

At first glance, this suggests that the situation post-AIA is the same as it was before. Batman obtained the invention from the inventor (possibly indirectly), and thus his public use should trigger the one-year grace period.

The problem is that proving this involves either publicly acknowledging Batman’s relation with Wayne Enterprises or claiming that Batman stole the invention from Wayne Enterprises.¹² Without that, Batman’s third-party use would act as an immediate public use bar, thus giving Wayne Enterprises a strong incentive to file first rather than risk being barred.¹³ In this regard, the AIA has increased the tension between Batman’s need for public use of a secret invention and Wayne Enterprises’ need to secure patent protection.

There is also some question as to whether a secret public use (e.g., corset steels or Batman’s armor) qualifies as a disclosure under § 102(b)(1)(A). The language of the statute suggests it might not, because such uses might not qualify as prior art under § 102(a)(1). Section 102(a)(1) refers to the invention being “in public use, on sale, or otherwise available to the public.” One interpretation holds that the residual clause modifies “in public use” and “on sale,” meaning that the public uses must not be merely in public but “available to the public.” Another interpretation holds that the clause stands alone, leaving the law of public use undisturbed.¹⁴ There is some postenactment legislative history supporting the second interpretation, and that is the interpretation adopted by the United States Patent and Trademark Office (USPTO).¹⁵ Ultimately, this will depend on a decision by the Federal Circuit or possibly the Supreme Court.

A Possible Solution

So if the problem exists both before and after the AIA, how can it be resolved? One possible solution that may come to mind is a nonpublication request.¹⁶ If granted, such a request prevents the USPTO from publishing the patent application, which it ordinarily does 18 months after the application is filed.¹⁷ There are two major catches. First, nonpublication is available only if the application “[is] not and will not be the subject of an application filed in another country, or under a multilateral international agreement, that requires publication of applications 18 months after filing.”¹⁸ Wayne Enterprises is a multinational company and would likely wish to seek patent protection abroad.¹⁹ Second, nonpublication applies only to the patent application. Although not specifically required by statute, all issued patents are published by the USPTO.²⁰ What is needed is a way for Wayne Enterprises to file for a patent but somehow pause both publication and examination until the invention no longer represents the cutting-edge technology needed by Batman to fight crime.

I believe the answer is a secrecy order. Patent applications that include classified information are subject to a secrecy order, and as a result they are not published until either a set time period has expired or the secrecy order has been lifted.²¹ Applications subject to a secrecy order also have their examination put on hold. This would seem to be an ideal solution to the problem, and one that could likely apply to many inventions used by Batman.

Inventions subject to secrecy orders are often related to technology used by the military. Wayne Enterprises is a major military contractor, and Bruce Wayne is a politically influential billionaire. In exchange for military use of the technology—which Wayne Enterprises would likely be interested in pursuing anyway—the technology could be declared classified and any related patent applications subjected to a secrecy order.

Celebrity, Justice, and the American Way: Alter Egos and the Right of Publicity

By Brad M. Desnoyer

Imagine the consistently cash-strapped Spider-Man tweeting endorsements: “Just KO’d @GreenGoblin. Spidey-sense says he wet himself #pathetic. Now to relax w/ @DrPepper.” He might link to a Daily Bugle photo. Most important, he would get paid for capitalizing on his celebrity.

But like most resources, Spider-Man’s celebrity is exhaustible and can be diminished by unauthorized appropriations. While the right of publicity might be Spidey’s economic savior, localized standards and factually similar yet legally irreconcilable cases cast doubts on Spider-Man’s right. And just Spider-Man’s luck, he lives in New York, where the law could have been written by a comic book villain.

With Great Power Must Come Great Endorsement Deals

Celebrity is a commodity—one that often is exceedingly lucrative. Kim Kardashian reportedly earns up to $20,000 every time she tweets a product endorsement.²² Beyoncé Knowles contracted with Pepsi for a $50 million deal to push caffeine and sugar.²³ And 50 Cent partnered with Vitaminwater, negotiating a stake in the company that earned him hundreds of millions.²⁴

Certainly superheroes are celebrities. And superhero-celebrities are worth their weightlifting powers in profits. Just ask the Walt Disney Company: In 2009, the world’s largest intellectual property owner²⁵ bought Marvel Entertainment for over $4 billion.²⁶ The acquisition put the X-Men, the Avengers, and—of course—Spider-Man under the roof of Mickey Mouse. The results have been spectacular.

In 2012, Marvel Entertainment earned $6 billion in retail sales. Thus, Marvel, independent of Disney, was the world’s fifth-largest intellectual property owner.²⁷ Its companion in the fifth spot: Warner Brothers, owner of DC Comics, and by extension, Batman, Superman, and the rest of the DC pantheon.²⁸ Even while comic book sales decline, superheroes fatten as licensing cash cows. They appear on lunchboxes, bubble baths, and apparel. They even have their own colognes.²⁹

Mirroring our reality, in comics, superheroes endorse fictional products and wear brand logos on their costumes. Much to Superman’s dismay, lesser-known superhero Booster Gold routinely shells for companies: “Sometimes even superheroes get thirsty,” Booster smiles as he displays a can of Soder Cola.³⁰ Indeed, the Fantastic Four run a gift shop out of their headquarters.

But while superheroes possess vast commercial wealth in their extraordinary celebrity, whether superheroes would be entitled to enforce their right of publicity is a peculiar issue—one with important implications for a unique property right.

New York Does Not Heart Superheroes

At its most basic, the right of publicity protects a person’s identity and persona from unauthorized commercial appropriation.³¹ First recognized in 1953 by the Second Circuit in Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc.,³² the “right of publicity” has since rapidly evolved and diversified. Twenty-eight states recognize a common law right of publicity, but only 19 provide statutory protection; further, only 12 states offer postmortem protection—a period that differs by state from 10–100 years.³³

At heart, however, the right of publicity is a property right, not a privacy right. Although the Second Circuit in Haelan—looking to New York state law—failed to explicitly label the right as property, it recognized the right as assignable.³⁴ The court then reasoned that the right exists not to protect celebrities from “having their feelings bruised,” but from feeling “sorely deprived if they no longer received money for authorizing advertisements.”³⁵

The Supreme Court, in affirming the right at common law, compared the right of publicity to patent and copyright, stressing “the right of the individual to reap the reward of his endeavors and having little to do with protecting feelings or reputation.”³⁶ And as stated by Professor J. Thomas McCarthy, “[A]n infringement of the right of publicity focuses upon injury to the pocketbook, while an invasion of ‘appropriation privacy’ focuses upon injury to the psyche.”³⁷

Just Spider-Man’s luck: It is in New York—where the Second Circuit birthed the right—that the law’s goals and purpose are most fundamentally misunderstood. The failure rests upon the New York state legislature—who codified the law as part of the state’s “right of privacy” statute³⁸—and upon New York’s highest court in Stephano v. News Group Publications, Inc.—where the court held that the legislature’s codification usurped the common law.³⁹ Thus, New York limits protection to a person’s “name, portrait, picture, and voice,” but builds an arbitrary barrier against protecting “personas.”⁴⁰

This logic rejects the right of publicity as a property interest and discards previous New York opinions, which follow the majority of jurisdictions. Pre-Stephano, the Southern District of New York held that Julius Marx’s heirs possessed a right of publicity in Julius’s celebrity persona, “Groucho Marx.”⁴¹ Although Julius bore no real resemblance to his cartoonish counterpart Groucho, the court reasoned that Julius had cultivated celebrity in his assumed name and persona: “[T]he Marx Brothers’ fame arose as a direct result of their efforts to develop instantly recognizable and popular stage characters, having no relation to their real personalities.”⁴² Courts reached similar results with other celebrities possessing recognizable personas: Bela Lugosi’s persona “Count Dracula,”⁴³ Stanley Laurel’s and Oliver Hardy’s onscreen personas “Laurel and Hardy,”⁴⁴ and George McFarland’s persona “Spanky” of the Little Rascals.⁴⁵ But by fashioning a villainous statute, New York eventually—and repeatedly—rejected this line of reasoning.⁴⁶

Face It, Tiger,  You Didn’t Hit the Jackpot

Spider-Man, domiciled in New York, is gazing into defeat. His true identity is after all Peter Parker. “Spider-Man” is both an assumed name and a costumed persona. If a Broadway show attempted a haphazard play about his heroics, he could not recover—merely because the production never used Parker’s actual name, picture, portrait, or voice. Rather, theater productions, toy manufacturers, and other potential free riders would bypass the right of publicity because they naturally focused their sights on the money. As stated by New York’s Second District post-Stephano, the law does “not extend to fictitious characters adopted or created by celebrities”; the law does not protect a “costumed character” or the “property interest of the celebrity in his or her public identity.”⁴⁷

Lady Gaga should take notice. Indeed, Lady Gaga, aka Stefani Germanotta, is nearly a comic book character: As satirically reported in The Onion, “Supervillain Lady Gaga brazenly abducted Commissioner James Gordon from a charity fundraiser . . . .”⁴⁸ Like Peter Parker, Germanotta was born and attended college in New York City, she adopted a costumed alter ego, and she might encounter trouble protecting her right of publicity. It may be strongly argued that Lady Gaga, Ziggy Stardust, KISS, and more are mere fictitious, costumed characters—accorded no more protection than Spider-Man. Although all have cultivated celebrity through the use of unique personas, they are vulnerable to misinterpreted law and defective policy.

Worse yet, for superheroes domiciled in New York, which is most superheroes, New York does not recognize the right as assignable or postmortem. Thus, the Fantastic Four—who do not have secret alter egos but operate publicly—still could not assign their rights of publicity to charity or to their heirs upon death. The only consolation may be that no one in comic books stays dead for long.

Generally, the right of publicity is robust. It safeguards earned property and keeps encroachers at bay. But all superheroes have a weakness. The right of publicity’s weakness is New York. According to the classic Spider-Man theme song, when it comes to “wealth and fame, he’s ignored.” The song got it half right. n

Copyright and Comic Book Superheroes

By Janet Fries

In addition to patents and rights of publicity, comic book superheroes present a variety of copyright issues, including questions relating to the scope of copyrightable subject matter and the restriction of protection afforded to utilitarian works. Additionally, superheroes have been at the heart of a number of cases involving the termination of transfers of copyrights and the implementation of the complicated formalities relating to those rights.

Copyrightable Subject Matter

The Ninth Circuit recently addressed the question of whether or not the Batmobile constituted copyrightable subject matter.⁴⁹ Copyright law protects certain specific categories of authorship, and sets forth certain exclusions to the scope of protection available.⁵⁰ When interpreting these categories and exclusions, courts have long held that copyright protection does not extend to utilitarian works.⁵¹ This principle has been clearly expressed by the Copyright Office as follows: “A ‘useful article’ is an object that has an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. Examples are clothing; automobile bodies; furniture; machinery, including household appliances; dinnerware; and lighting fixtures.”⁵²

It would seem that, as an automobile, the Batmobile might be categorically ineligible for protection. But then what about all those cool design features? Those Bat-fins don’t seem particularly useful. And if certain design features can be separated, then the analysis shifts. “Copyright may, however, protect any pictorial, graphic, or sculptural authorship that can be identified separately from the utilitarian aspects of an object. Thus a useful article can have both copyrightable and uncopyrightable features.”⁵³

In DC Comics v. Towle, the court recognized the design features of the Batmobile, was able to separate them from the functionality of the underlying auto, and determined that these features were protectable authorship. The court held that DC Comics had valid copyrights that could be asserted against custom carmaker Mark Towle.

[T]he design elements of the two Batmobiles at issue here are conceptually separable from their underlying car . . . . The underlying vehicle would still be a car without the exaggerated bat features.

. . . .

[A]ll of the features that distinguish the Batmobile from any other car—the fantastical elements that feature bat design, such as the bat tailfin and the various gadgetry that identify the vehicle as the Batmobile—are protectable elements.⁵⁴

Costumes

Batman’s car can be protected by copyright law, but what about his Batsuit? Several courts have looked at whether or not costumes are copyrightable subject matter, with varying results.

Starting again with the prohibition against protecting useful articles, one might think that there was a categorical ineligibility for copyright protection of costumes. Clothing after all is very useful!

Moreover, it is worth noting that there have been a number of unsuccessful attempts to provide copyright protection for fashion design. Numerous bills have been introduced, and were passed by the House or the Senate, but to date, no protection for clothing of any kind has been enacted.⁵⁵

In a case before the Second Circuit, a manufacturer of Halloween costumes sought to enforce copyright protection to stop another company from copying its costume designs. The plaintiff, Whimsicality, attempted to maneuver around the restriction against clothing by arguing that its costumes were entitled to copyright protection as sculptural works.⁵⁶ But the court did not buy that argument: “The intended depiction is in fact recognizable only when the costume is worn by a person or is carefully laid out on a flat surface to reveal that depiction. We conclude therefore that these costumes do not constitute sculpture.”⁵⁷ In this instance, the court held that Whimsicality had obtained its registrations of copyrights by misrepresentation of its works to the Copyright Office. But one can’t help but wonder whether the Batsuit, more substantial and armor-like, might be considered sculptural?

In a more recent New York case involving costumes, the plaintiffs fared much better.⁵⁸ The owners of rights in certain children’s TV characters prevailed in their lawsuit against the manufacturers of unauthorized Barney and Bob the Builder costumes. (Apologies to anyone who takes offense at putting Barney in the same category as Batman! Barney is of course no superhero: I mention this case only because it involves costumes.) The court ordered statutory damages, attorneys’ fees, and a permanent injunction, but the holding is based on the defendants’ infringing use of the plaintiffs’ trademarks, service marks, logos, and trade dress, as well as their copyrights. It may be that the Batsuit and other superhero garb could be better protected through trademark law.

One more costume case: The owner of the copyrights in the Power Rangers filed a lawsuit in California against another manufacturer of Halloween costumes, asserting infringement of its registrations of copyrights in the artwork and design of the Power Rangers’ uniforms.⁵⁹ This case was settled and the terms of that settlement are confidential, but it does appear that the rights in the uniforms were enforceable.

Termination of  Transfers

It has often been observed that many authors have little bargaining power in negotiating licenses for their works, particularly if they are young and/or their works have no proven value in the marketplace. But copyright law provides authors with a second bite of the apple.⁶⁰ When it enacted the provisions allowing authors to terminate certain transfers of copyrights, Congress intended to provide the antidote for “unremunerative transfers . . . needed because of the unequal bargaining position of authors, resulting in part from the impossibility of determining a work’s value until it has been exploited.”⁶¹

It would seem that the termination of transfer provisions would offer a perfect resolution for comic book artists who entered into less-than-fabulous agreements early in their careers. These termination provisions have been tested, explored, and explained in numerous cases involving comic book superheroes including Superman, Captain America, and the Fantastic Four, all with little success for the artists who created the characters. Unfortunately for the artists, much of the work they created was determined to be work made for hire and therefore not eligible for termination rights.⁶²

Moreover, these termination provisions require numerous formalities that have functioned as traps for the unwary. For example, written notice must be sent within a specified window⁶³ and must include statutory reference, titles of works, and other elements.⁶⁴

Most noteworthy is the long-running battle fought by the artists who created Superman—Jerry Siegel and Joe Shuster—to get more compensation for their authorship. Siegel and Schuster were in and out of court for decades, starting soon after their work was first published and continuing until their deaths, and their heirs continue to litigate, much like the parties in Jarndyce v. Jarndyce in Dickens’s Bleak House.⁶⁵ But while their efforts have been largely unsuccessful, in large part due to the work made for hire exemption to rights of termination, their cases and others involving the rights in superheroes have served to clarify some of the procedural requirements for terminating transfers of copyrights.

For example, the Ninth Circuit recently held that a letter from a former attorney who had represented an heir of Siegel constituted acceptance of a settlement offer and therefore barred the heir’s attempt to assert a right of termination.⁶⁶ On remand to the district court, it was found that the lawyer’s letter remained a binding agreement, fatally barring Larsen’s copyright claim, because there had been “no unequivocal rescission or termination.”⁶⁷

Another formality addressed in the Superman litigation by the Siegel heirs is whether each work must be listed specifically on the notice of termination. In a rare ruling in favor of the plaintiffs, the court held that if every reasonable effort is made to list each work, then a catch-all phrase such as “and any other” could be used to capture any work that was inadvertently omitted: “Nevertheless, if any such work has been omitted, such omission is unintentional and involuntary, and this Notice also applies to each and every such omitted work.”⁶⁸

The Shuster heirs have had no better luck than the Siegel heirs. The Ninth Circuit recently determined that Shuster’s sister, Jean Peavy, and his brother, Frank, were not entitled to exercise termination rights.⁶⁹ The court held, by a 2–1 majority, that the notice of termination sent in 2003 was invalid. The court reasoned that by accepting lifetime annual payments of $25,000 for the sister and the payment of the brother’s debt, they had entered into a new agreement in 1992, leaving no pre-1978 agreement in place to be terminated. The court rejected the argument presented by the heirs, i.e., that the 1992 agreement was merely a pension agreement and did not cancel the original 1938 copyright agreement. The heirs also argued that they could not have entered into a revocation and re-grant prior to the passage of the Copyright Term Extension Act in 1998 and its creation of the termination right in 17 U.S.C. § 304, but they did not prevail on this point.

In another long-running battle, this one involving the attempt to exercise termination rights relating to superheroes including the X-Men, the Fantastic Four, and the Hulk, the Southern District of New York held that sending a notice of termination conferred personal jurisdiction on the sender:

The exercise of personal jurisdiction over the non-resident Defendants therefore “is triggered by [their] own action in projecting . . . [themselves] into New York.” And here, Defendants “knew or reasonably should have known that by sending the [Termination Notices] into New York, [they were] running the risk of suit in New York in connection with that activity.”⁷⁰

Fortunately, the Second Circuit recently overturned this extraordinary holding, stating:

We conclude that a communication from out-of-state, required for the exercise of rights conferred under a federal statute, cannot alone constitute a purposeful availment of “the benefits and protections of [New York’s] laws,” at least where the only connection to New York is that the recipient’s business headquarters has a New York address.⁷¹

Looking at another recent case, although the comic book character Ghost Rider is immortal, the copyright renewal rights in the character were questioned.⁷² At the heart of the matter was an agreement that the court found to be “ambiguous on its face”⁷³ as to whether it conveyed renewal rights to Marvel.

Spider-Man on Stage

Much of the litigation involving superheroes has been related to the huge profits generated by motion pictures. Comic books produce revenues, but nothing in comparison to the movies; it seems like every year there is a blockbuster film starring a superhero. But recently, there has been litigation for yet another sort of derivative work—musical theater. In March 2011, Julie Taymor, the Tony Award–winning director and costume designer of the Broadway hit musical The Lion King, was removed from her position as director, writer, and costume designer for the musical then in production called Spider-Man: Turn Off the Dark. In November 2011, Taymor filed suit for breach of contract and copyright infringement, asserting that the musical’s producers “continued to promote, use, change, and revise Taymor’s work . . . without her approval or authorization and in violation of their agreements with Taymor and Taymor’s intellectual property rights . . . . They have refused to pay Taymor her contractually guaranteed authorship royalties.”⁷⁴

Although the production was plagued with problems in preview performances, after certain changes were made the musical became a box office success, and sold out shows with average ticket prices over $100 a seat until its closing in January 2014.⁷⁵ So Taymor wanted a share of the profits from the show that she argued was based largely on her authorship.

In April 2013, the parties reached a settlement. While we would never want to express regret that the parties were able to resolve their differences without a costly court battle, it would have been interesting to see how certain copyright issues, including what constitutes new and protectable authorship in a derivative work, were handled by the court. Taymor registered copyrights in her treatment and in other text, disclaiming rights in the underlying comic book characters but claiming authorship for elements including storyline and stage directions. Taymor asserted that the producers copied “entire scenes, dialogue blocks, themes, plot lines, narrative arcs, characters, and descriptions of stage activity” from her work.⁷⁶ Because the settlement was confidential, we are left wondering whether Taymor’s compensation was fitting for a superhero.

Conclusion

The battles over rights involving comic book heroes continue and appear to be as perpetual as Superman’s “never ending battle for truth, justice, and the American way.” And of course, all of the litigation is fueled by the revenues generated from movies, plays, books, comic books, costumes, and more—as we feed our insatiable appetite for superheroes who seem to continually amaze, inspire, and entertain us.⁷⁷

Endnotes

1. See, e.g., Detective Comics, Inc. v. Bruns Publ’ns, Inc., 111 F.2d 432 (2d Cir. 1940) (holding that the character of Superman was copyrightable); Ross D. Petty, The “Amazing Adventures” of Super Hero®, 100 Trademark Rep. 729 (2010) (describing the history of the ownership and disputes surrounding the SUPER HERO trademark).

2. Also known as Wayne Industries, among other names.

3. Examples from the recent Christopher Nolan movies include Batman’s armor and his vehicles, such as the Tumbler.

4. 35 U.S.C. § 102(b).

5. Egbert v. Lippman, 104 U.S. 333, 336 (1881) (the corset steels case).

6. City of Elizabeth v. Am. Nicholson Pavement Co., 97 U.S. 126, 134 (1877) (the asphalt case).

7. Id.

8. He would also like to avoid disclosing the technology’s weakness. For example, his new armor in The Dark Knight gave him improved maneuverability at the expense of vulnerability to gunfire and knives.

9. The actual situation is slightly more complex than this, because the AIA refers to applications or patents containing one or more claims with an effective filing date on or after March 16, 2013, but that distinction will be relevant in relatively few cases.

10. 35 U.S.C. § 102(a)(1).

11. Id. § 102(b)(1)(A). The statute includes joint inventors as well.

12. Although it is not clear whether “obtained” includes theft.

13. As a multinational company, Wayne Enterprises would also have an incentive to file early in order to avoid similar “absolute novelty” rules in other countries.

14. Most of the controversy actually surrounds secret sales or offers for sale, but the arguments apply equally to public uses.

15. Examination Guidelines for Implementing the First Inventor to File Provisions of the Leahy-Smith America Invents Act, 78 Fed. Reg. 11,059, 11,062 (Feb. 14, 2013) (amending 37 C.F.R. pt. 1).

16. 35 U.S.C. § 122(b)(2)(B).

17. Id. § 122(b)(1)(A).

18. Id. § 122(b)(2)(B)(1).

19. On the other hand, other countries may not offer a solution to the problem at hand, and so there may be no way to file abroad and maintain secrecy in every country in which patent protection is sought.

20. Strictly speaking, 35 U.S.C. § 153 only requires that an issued patent be “recorded in the Patent and Trademark Office” and says nothing about publication or public access. And while 35 U.S.C. § 6 empowers the director to publish patents, it states that the director “may” publish them, not that he or she must do so. However, there is no mechanism for requesting nonpublication of an issued patent, and it is arguable that an unpublished patent could not be infringed.

21. 35 U.S.C. § 181; U.S. Patent & Trademark Office, Manual of Patent Examining Procedure (MPEP) § 120 (8th ed. Rev. 9, Aug. 2012).

22. Kim Kardashian Net Worth, Salary, Earnings, Endorsements, Celebrity Networth (June 27, 2012), http://celebnetworth.org/kim-kardashian-net-worth-salary.

23. Meghan Casserly, Beyoncé’s $50 Million Pepsi Deal Takes Creative Cues from Jay Z, Forbes (Dec. 10, 2012), www.forbes.com/sites/meghancasserly/2012/12/10/beyonce-knowles-50-million-pepsi-deal-takes-creative-cues-from-jay-z.

24. Dan Charnas, How 50 Cent Scored a Half-Billion, Wash. Post (Dec. 19, 2010), www.washingtonpost.com/wp-dyn/content/article/2010/12/17/AR2010121705271.html.

25. Tony Lisanti, Top 125 Global Licensors, License! Global (May 10, 2012), www.licensemag.com/license-global/top-125-global-licensors-0.

26. David Goldman, Disney to Buy Marvel for $4 Billion, CNNMoney (Aug. 31, 2009), 

27. See Lisanti, supra note 25.

28. Id.

29. “Smash!”—officially licensed “cologne based on The Hulk”—is described as “woody aquatic cologne evoking both a serene sense of timeless freedom and a single-minded, unbridled passion for life” with hints of “musk and sharp cheddar.” Smash, JADS Int’l, 

30. Geoff Johns et al., Golden Lads & Lasses Must . . . , 52:1 Week One (DC Comics May 10, 2006).

31. 1 J. Thomas McCarthy, The Rights of Publicity and Privacy § 5:60 (2d ed. 2013).

32. 202 F.2d 866, 868 (2d Cir. 1953).

33. David Leichtman et al., Transformative Use Comes of Age in Right of Publicity Litigation, 4:1 Landslide 28 (Sept/Oct 2011).

34. 202 F.2d at 868.

35. Id.

36. Zacchini v. Scripps-Howard Broad. Co., 433 U.S. 562, 573 (1977).

37. 1 McCarthy, supra note 31, § 5:60.

38. N.Y. Civ. Rights Law §§ 50–51.

39. 474 N.E.2d 580, 584 (N.Y. 1984).

40. See Burck v. Mars, Inc., 571 F. Supp. 2d 446, 453 (S.D.N.Y. 2008); Geisel v. Poynter Prods., Inc., 295 F. Supp. 331, 355–56 (S.D.N.Y. 1968).

41. Groucho Marx Prods., Inc. v. Day & Night Co., 523 F. Supp. 485, 491 (S.D.N.Y. 1981), rev’d on other grounds, 689 F.2d 317 (2d Cir. 1982).

42. Id.

43. Lugosi v. Universal Pictures, 603 P.2d 425 (Cal. 1979).

44. Price v. Hal Roach Studios, Inc., 400 F. Supp. 836, 843–44 (S.D.N.Y. 1975).

45. McFarland v. Miller, 14 F.3d 912, 919 (3d Cir. 1994).

46. See supra text accompanying notes 35 and 40.

47. Burck v. Mars, Inc., 571 F. Supp. 2d 446, 453 (S.D.N.Y. 2008).

48. Lady Gaga Kidnaps Commissioner Gordon, Onion (July 27, 2010), www.theonion.com/articles/lady-gaga-kidnaps-commissioner-gordon,17789.

49. DC Comics v. Towle, No. 2:11-cv-03934-RSWL, 2013 WL 541430 (C.D. Cal. Feb. 7, 2013).

50. See 17 U.S.C. § 102.

51. See, e.g., Baker v. Selden, 101 U.S. 99 (1879).

52. Fact Sheet FL 103: Useful Articles, Copyright Off. (Dec. 2011), 

53. Id.

54. Towle, 2013 WL 541430, at *17–18.

55. See, e.g., A Bill to Provide Protection for Fashion Design: Hearing on H.R. 5055 Before the Subcomm. on Courts, the Internet, and Intellectual Property of the H. Comm. on the Judiciary, 109th Cong., 2d Sess. (2006) (statement of the Copyright Office).

56. Whimsicality, Inc. v. Rubie’s Costume Co., 891 F.2d 452 (2d Cir. 1989).

57. Id. at 456.

58. Lyons P’ship v. D&L Amusement & Entm’t, Inc., 702 F. Supp. 2d 104, 122 (E.D.N.Y. 2010).

59. Complaint, SCG Power Rangers LLC v. Underdog Endeavors, Inc., No. 2:11-cv-08485-JHN-VBK (C.D. Cal. Oct. 13, 2011).

60. See 17 U.S.C. §§ 203, 304.

61. H.R. Rep. No. 94-1476, at 124 (1976).

62. 17 U.S.C. §§ 203(a), 304(a)(1)(B)(ii).

63. Id. §§ 203(a)(3), 304(c)(3).

64. Id. §§ 203(a)(4), 304(c)(4); 37 C.F.R. § 201.10(b).

65. “Innumerable children have been born into the cause; innumerable young people have married into it; innumerable old people have died out of it. Scores of persons have deliriously found themselves made parties in Jarndyce and Jarndyce without knowing how or why; whole families have inherited legendary hatreds with the suit. The little plaintiff or defendant who was promised a new rocking-horse when Jarndyce and Jarndyce should be settled has grown up, possessed himself of a real horse, and trotted away into the other world.” Charles Dickens, Bleak House ch. 1 (1852).

66. Larson v. Warner Bros. Entm’t, Inc., 504 F. App’x 586, 587 (9th Cir. 2013).

67. Larson v. Warner Bros. Entm’t Inc., Nos. 2:04-cv-08400-ODW(RZx), -08776-ODW(RZx), 2013 WL 1164434, at *9 (C.D. Cal. Mar. 20, 2013).

68. Siegel v. Warner Bros. Entm’t Inc., 658 F. Supp. 2d 1036, 1091 (C.D. Cal. 2009).

69. DC Comics v. Pac. Pictures Corp., No. 12-57245, 2013 WL 6098416 (9th Cir. Nov. 21, 2013).

70. Marvel Worldwide, Inc. v. Kirby, No. 10 Civ. 141(CM)(KNF), 2010 U.S. Dist. LEXIS 38701, at *16 (S.D.N.Y. Apr. 14, 2010) (citation omitted).

71. Marvel Characters, Inc. v. Kirby, 726 F.3d 119, 130 (2d Cir. 2013).

72. Gary Friedrich Enters., LLC v. Marvel Characters, Inc., 716 F.3d 302 (2d Cir. 2013).

73. Id. at 314.

74. Amended Complaint at 2, Taymor v. 8 Legged Prods., LLC, No. 1:11-cv-08002-KBF (S.D.N.Y. July 9, 2012).

75. See Spider-Man, Turn Off the Dark, Broadway.com, www.broadway.com/shows/spider-man-turn-off-the-dark (last visited Jan. 12, 2014).

76. Amended Complaint, supra note 74, at 31.

77. See, e.g., Gary Susman, The Superman We Deserve, Rolling Stone, June 14, 2013, www.rollingstone.com/movies/news/the-superman-we-deserve-20130614.