Why Warner Bros. Trademarked 'Nightwing'

Nightwing Logo - H 2013

Nightwing Logo - H 2013

This story first appeared in the Nov. 29 issue of The Hollywood Reporter magazine.

When studios begin to develop new film projects, their trademark attorneys often are the first to know. On Nov. 8, for example, Warner Bros. filed for registrations at the U.S. Patent and Trademark Office on "Nightwing," the Dick Grayson/Robin alter ego rumored to be featured in its upcoming Batman vs. Superman film. And when Warners announced it was extending its relationship with Harry Potter author J.K. Rowling, the first order of business was to register such Potter universe marks as "Beedle the Bard," "Wimbourne Wasps" and "Quidditch Through the Ages."

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Warners perhaps is the most aggressive studio in marking its legal turf. It has 6,304 active U.S. trademarks, compared with only 160 for Sony Pictures, according to data provided to THR by Thomson CompuMark. Disney also is a trademark hound with 5,275 active marks, while Paramount maintains 389.

What explains the vastly different approaches?

According to insiders, Sony thinks that zealous trademark registration -- at least in the U.S. -- is a waste. Although formal registrations put others on notice, they aren't necessary to win a lawsuit should a rival decide to market Spider-Man underwear. A studio can rely on the federal Lanham Act to establish its common law rights to the mark. "The administrative costs of registering every trademark does not seem particularly cost-effective," says Bennett Bigman, an attorney at Liner Grode. "Registration also requires vigilant monitoring of the trademark, including making certain filings with the U.S. Patent and Trademark Office office at designated times. A studio risks losing the mark if it fails to pay attention to these administrative requirements, and may be subject to an 'abandonment' claim if it fails to use the trademark within a certain period of time. All of this monitoring, of course, is at a cost."

Plus, trademark specialist Ron Coleman notes that registrations tip one's hand. "Sony may well be taking the view that it is not interested in feeding analysts, hobbyists or competitors this sort of information," he says.

By its own count, Sony has 221 active trademarks. A spokesperson says, "A straight numerical count of active U.S. trademarks does not fully reflect the depth or number of our assets or provide a complete picture of how we protect them."

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Warners' registrations could be a sign of its franchise-oriented approach, or that it prefers to be battle-ready. It has been in court recently over unlicensed Superman yarmulkes, custom Batmobiles and a Harry Potter store called Whimsic Alley.

Studios with Active Trademarks - U.S. Federal Database
Warner Brothers  - 6304
Walt Disney - 5275
Fox - 1792
NBCUniversal - 726
DreamWorks Animation - 512
Paramount – 389
Sony - 160

Data provided by Thomson CompuMark SAEGIS on SERION