Copyright Aid

Evening,

I would like some advice on some running medals that I am designing for my virtual running company.

As my business has a comic book theme I would like to create some running medals which hint towards certain super heroes. For example, I have create a green rock shaped medal and named the event the Kryptonite 10k, or I have a city scene medal that I plan on calling the 'Gotham 10k' Hopefully this steps around the copy write issue of using the superman or batman name/brand and wont get me in trouble with marvel/Disney.

My other issue is around Captain Americas shield. Basically it's intrinsic white and red circles with a star in the middle. I would like to create a medal of this image and would call it our 'be a hero' run, therefore not claiming to be marvel or even using the captain America name etc.... where do you think I stand on this?

I don't want to go to the expense of paying for a product that I cannot use. The other query I have is that I'm not actually selling the medals, the medal is a 'prize' that is given for completing the distance, admittedly participants have to pay £10 to enter but that’s for entry to the race, not a product as such...

Any advice would be appreciated!

Stuart

There are really no copyright issues you need to worry about with what you propose. The sort of references, such as to a piece of Kryptonite, are too far removed from the essence of these superhero characters to be considered a substantial part of any possible copyright in a character. Character copyright is not well defined in UK copyright law, and can best be described as weak compared to some decisions in the US courts. For example in a recent case in the US, certain trivial details about Sherlock Holmes in later life - his having taken up bee-keeping and living by the sea in Sussex - were found to be subject to copyright due to the vagaries of the US law at a time when copyright was based on the date of publication of a work. There is no way a UK court would consider that sort of trivia protectable.

The more relevant type of protection comes from trade mark law, but here, the fact that the word kryptonite has been registered by DC Comics (for instance here) doesn't automatically mean no-one else can use it. This is because trade marks have to be registered in specific classes of goods or services, and use of the same word in connection with non-registered classes of goods may well be acceptable if there is a low likelihood of confusion. Thus a company which manufactures locks has also been able to register the word Kryptonite without infringing DC Comics' trade mark. And of course all that applies just to the word, not a graphical representation of the actual mineral. Incidentally here are just some of the other trade marks registered by DC Comics in the UK and Europe (this list is not comprehensive so if there's something you want to use, check using the word search feature as this brings up entries for similar spellings). Gotham is an interesting example of a word which DC Comics appears not to have registered, although a few other companies have, for various diverse goods and services.

The fact that you are not selling these medals would be irrelevant as far as copyright is concerned, but it is more relevant to trade mark law, because in order to infringe a trade mark, use must be in the course of trade, so I suspect that your use as a prize might not be found to qualify. However naming a race KrytoniteXX and charging an entry fee would qualify as use in the course of trade. There is also a common law tort of passing off which is broader than trade mark protection, that you need to bear in mind. However as you are not intending to trade in these medals, I think it would be hard for someone to show actual damage to their brand/goodwill through use of these medals as described.

Perhaps the last thing to say is that despite what the law might or might not permit you to do, don't be surprised if you get a letter from DC Comics' lawyers. Companies like that tend to protect their intellectual property with some vigour and may assert claims which are devoid of merit just in order to intimidate. It is not illegal to make unjustified threats in respects of alleged copyright infringement, but it is under the Trade Marks Act 1994.

Thank you very much for your comprehensive reply! Its good to know that I probably won't have a lawsuit looming over me. Ive had a search on the website that you linked to at the images that MARVEL have had copy written and have found one of captain america holding the shield I would like to use in a design although the only mention is under class 16 - printed publications and books so I'm guessing this would be fine?

Thanks for your time

Stuart

Hi Stuart,

The problem with graphic trade marks is determining how much needs to be copied for there to be confusion in the mind of the public as to the source of the goods or service in question. It might well be that the shield alone would not invoke the idea in the mind of the reasonably attentive viewer that your medal was a product made or authorised by Marvel Comics, but clearly the reason you want to use this shield is exactly because you wish to make that connection. That's why, presumably, you aren't using the logo of, say, a well-known motor manufacturer, since that would not fit in with your Superhero theme.

However given that certain features (stars, the colours red and blue etc) feature in quite a few Superheros' costumes, I don't think it would be too difficult for you to come up with a variant that would suggest a Superhero without necessarily referring to a specific character.