Hollywood Docket: DC Comics Hopes Trademark Suit Will Be Kryptonite to Clothing Company

Superman Lawsuit Split - H 2015
Courtesy of Warner Bros. Pictures; Mad Engine, Inc.

Superman Lawsuit Split - H 2015

It’s a bird! It’s a plane! No, it's a trademark lawsuit.

In a complaint filed Monday in California federal court, DC Comics, the publisher well known for creating Superman and his Justice League compatriots, claims the clothing manufacturer Mad Engine infringed on one of the company's most iconic pieces of intellectual property: the Superman shield.

DC wants to stop sales of a shirt from Mad Engine featuring a design inspired by Superman's logo, with the word "dad" where the character’s "S" would be (pictured). The publisher claims it never licensed the Superman logo for the shirt, which Mad Engine sold in Target (which is not a defendant) and on Target’s website, and wrote to Mad Engine requesting the company stop selling the shirt in a June 1 letter. It says Mad Engine did not respond until June 19 "in an effort to allow the Infringing T-Shirt to remain available for sale through Father’s Day" and refused.

The image on the shirt does not exactly match the marks DC has registered, which include the "S." However, “the shield design on Defendant's Infringing T-Shirt is substantially similar to DC Comics’ copyrighted Shield Design," states the complaint. "DC Comics' copyrighted Shield Design consists of a bordered five-sided shield in red and yellow, with the text inside the shield sized and positioned according to the proportions and shape of the shield. The shield design on Defendant's Infringing T-Shirt incorporates each of these elements."

Represented by Caldwell Leslie's Michael Roth and Fross Zelnick's James Weinberger and Emily Weiss, DC claims trademark and copyright infringement, dilution, and false advertising and unfair competition under California and federal laws.

The publisher is one of the oldest and biggest comics companies in the country, and like longtime competitor Marvel, has a considerable Hollywood presence via corporate owner Warner Bros. The studio is working on a DC "Cinematic Universe" launched with Zack Snyder's Man of Steel in 2013 and set to continue with Snyder's Batman v. Superman: Dawn of Justice in March 2016, with stand-alone movies for Wonder Woman, Aquaman and others planned. The publisher's heroes have a TV presence on Warner Bros.' part owned network The CW's popular series Arrow and The Flash and upcoming DC's Legends of Tomorrow, Fox's Gotham and CBS' upcoming Supergirl.

The Hollywood Reporter has reached out to Mad Engine for comment on the lawsuit.

In other entertainment law news…

—In what is not the first of Stephen Colbert's routines to permeate real life, the NFL on July 13 filed a trademark opposition reminiscent of the former Colbert Report comedian's "Superb Owl" coverage intended to dodge the league's restrictions on Super Bowl references ("This week's Superb Owl coverage will be as majestic as the great Abyssinian long-eared owl. No other network's going to promise that"). The NFL opposes an application not from Colbert, but from the Arizona nonprofit the Night Run, which holds races including the Superb Owl Shuffle for charity. The league wants the U.S. Patent and Trademark Office to deny the Night Run's application for diluting the NFL's trademarks and falsely implying connection.

The Night Run president Tricia Schafer tells THR the organization has corresponded with the NFL over the past several months and set up a GoFundMe page for legal costs. "The NFL has led us to believe that it is willing to continue discussions, and it is our hope that the parties can reach agreement on how the marks can coexist," says Schafer. "In the meantime, we believe that the NFL's opposition lacks merit, and we intend to participate fully in the trademark dispute resolution process."

Jay Z and Roc Nation have scored another win against the rapper's former sound engineer. In April, they prevailed in a lawsuit filed by Chauncey Mahan claiming he should be given co-writing credit for 41 of the rapper's songs including the hit "Big Pimpin'" on the grounds Mahan filed late. Now New York Federal Judge Lorna Schofield has ordered Mahan to pay Jay Z $194,328.59 and Roc Nation $59,081.40 ($253,409.99 total) in attorneys' fees for the “plainly time barred and therefore objectively unreasonable” litigation. "Mr. Mahan regards the decision as cruel and unusual punishment," Mahan's lawyer James Freeman tells THR. "The District Court's ruling on fees, if left to stand, will deter meritorious co-ownership claims and encourage major record labels to forgo contractual relations with those musical creators who are not the so-called 'featured artist,' but who are nevertheless integral to the creation of valuable musical works."

—In April, THR reported on an eyebrow-raising complaint filed by a plaintiff under the name "Jane Doe" claiming Hollywood talent attorney Neil Meyer, whose clients have included Halle Berry and Chris Evans, coerced her into being his "virtual sex slave" with promises of advancing her acting career. Meyer's attorneys claim the woman is Wen Yann Shih, an actress against whom Meyer obtained a temporary restraining order in March 2014, and position her as a jilted mistress who targeted Meyer when he ended their affair. On Friday, Meyer's firm, Stone Meyer Genow Smelkinson & Binder, also a defendant, prevailed on a motion to move the case into private arbitration for which the firm will pay. The plaintiff’s attorney, Jeffrey Lipow, has not responded to THR’s requests for comment.

—The California Labor Commissioner has refused to hear a petition that the script summary website Breakdown Services was violating the Talent Agency Act by allegedly aiding and abetting the unlawful procurement of employment. On July 17, a special hearing officer ruled the Labor Commissioner lacked jurisdiction because Adam Seid, the petitioner, was "not engaged in the performing arts and hence, not a member of the protected class." The dismissal allows Breakdown Services' lawsuit against Seid for allegedly selling access to its subscription site to proceed.

THR senior editor and THR Esq. blogger Eriq Gardner will join attorneys Marty Singer and Brian Panish and public information director for the Los Angeles Superior Court Mary Hearn on the panel "How To Litigate Your First High-Profile Case" presented by the Los Angeles County Bar Association Barristers on Thursday at the Montage Beverly Hills.