July 31, 2015 Practice Points

DC Comics: Trademark Police

Has the comics giant gone too far in their quest to clean the streets of infringers?

By Jessica S. Nam

DC Comics seems to have adopted Batman's crime-fighting ways, as evidenced by the recent aggressive policing of their iconic trademarks. In a recent legal dust-up with a major pop star, DC Comics is attempting to block Rihanna's company, Roraj Trade, from registering the mark "Robyn," Rihanna's legal name. Roraj Trade applied to register the name last June, intending to publish an online magazine adding to her ever-expanding line of products. DC Comics filed its opposition on May 11, arguing that Rihanna's use of "Robyn" is likely to lead to brand dilution by blurring and tarnishing their ROBIN mark. The proceeding is currently suspended for settlement discussions.

DC Comics most recently filed a lawsuit for counterfeiting and trademark and copyright infringement over a shirt substituting the word "dad" for the "S" in the iconic five-sided diamond Superman logo. The logo first appeared in 1938 and has remained mostly unchanged since. Defendant Mad Engine, Inc., is a California apparel company that sells to retailers such as Target, Wal-Mart, and Amazon.com. On its website, Mad Engine claims it is a licensed apparel wholesaler of various recognizable brands such as Star Wars and Marvel Products; however, Mad Engine is producing and distributing their "Super Dad" t-shirts without DC Comics' permission. DC Comics has its own "Super Dad" t-shirt with the word "dad" in red printed below the Superman logo. DC Comics is seeking damages, costs including attorneys' fees, and the destruction of Mad Engine's "Super Dad" shirts.

Even small mom-and-pop businesses are not safe from DC Comics' hunt for potential infringers. In 2010, DC Comics sent a cease-and-desist letter to the Broussard brothers when they applied to register the mark "BATS BBQ," which is an acronym for their (now closed) BBQ restaurant. The brothers created the name and logo on the family computer in Fort Mill, South Carolina. Their restaurant did not have a movie or comic-book theme. Additionally, in 2013, DC Comics settled a trademark infringement lawsuit against a Florida barbershop owner who allegedly used the Superman logos with permission. DC Comics agreed to settle its suit with Reginal B. Jones, the owner of two barbershops named "Supermen's Fades to Fro's" and "Supermen Fades to Fros." Jones also used promotional material that allegedly infringed DC Comics' "Superman" trademarks.

DC Comics has also expanded their policing over international borders going after La Liga giants Valencia for using a bat as their club crest. In May 2013, DC Comics lodged its opposition with the Office of Harmonization in the Internal Market, the European Union's trademark arm. The Spanish soccer club has been using a bat on their crest since 1919, twenty years before Batman made his debut. More importantly, the use of the bat as Valencia city's crest is reported to date back to the 13th century, when a bat was said to have landed on the flag of James I when he re-took Valencia from the Moors.

Has DC Comics gone too far in their quest to clean the streets of infringers? Who's next? Looking at DC Comics' track record, no one is immune, even deceased children.

Keywords: intellectual property, litigation, DC Comics, copyright infringement, logo, trademark, Batman, Superman

Jessica S. Nam is with the Class of 2017 at The George Washington University Law School in Washington, D.C.


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Jessica S. Nam – July 31, 2015