Superbabies Limited v. Marvel Characters, Inc. and DC Comics (2024)

This case analysis is written by Vaishnavi Gorige during her internship.

The case of Superbabies Limited v. Marvel Characters, Inc. and DC Comics is a landmark development in the world of intellectual property and trademark law with respect to the comic book industry. At the very centre of this dispute was the term “superhero,” a word that for decades had been synonymous with the genre and was jointly trademarked by the two comic giants, Marvel and DC. This trademark helped them retain ownership rights over the term and thus to control its usage in an innovative market. In May 2024, Superbabies filed a petition to cancel Marvel and DC’s trademarks, alleging that the terms “superhero” and “superheroes” have become generic and are no longer protectable as trademarks. 

Overview:

Marvel Characters, Inc. operates as a subsidiary of The Walt Disney Company is the one that holds licenses for media characters such as Spider-Man, The Incredible Hulk and Ghost Rider[1]. It was founded in 1995 and headquartered at California. From a trademark perspective, Marvel Characters, Inc. owns over 2 thousand trademarks that include Avengers, Marvel, Captain America, Iron Man, Guardians of the Galaxy, Spider-Man, Hulk, Big Hero 6, Doctor Strange, and X-Men. Marvel began to the term “superhero” in the 1940’s post-publication of the iconic character Captain America. Specifically, the word was featured in a comic book published by Marvel’s predecessor, Timely Publications in 1941.

DC Comics, a subsidiary of Warner Bros. Discovery, is one of the largest and oldest comic book publishers in the world. In 1938 the introduction of Action Comics featuring the debut of Superman, marked the birth of the superhero genre that solidified DC’s place in popular culture.

The Superhero Trademark was registered jointly by Marvel Characters Inc. and DC Comics in the year 1980. This was done under section 24 of the Lanham Act which allows for joint ownership. The Superhero trademark was registered under several classes. Class 16 includes various printed materials like comic books and magazines. Class 25 covers clothing items like T-shirts (registered since 2009) & Masquerade costumes (registered since 1967). Class 28 includes toys and novelty items, such as Toy figures (registered since 1980).

Superbabies Limited is a private limited company incorporated under the Companies Acts of England and Wales. Superbabies aims to create and publicize stories containing a distinct group of infant superheroes known as The Super Babies, within the brand, Iconic Earth Studios. In May 2024, Superbabies filed a petition to cancel Marvel and DC’s trademarks, alleging that the terms superhero” and “superheroes” have become generic and are no longer protectable as trademarks. The case was strengthened by an additional argument: that permitting two arch-competitors to share such a well-known term inhibits competition and creativity in the marketplace.

In recent times, DC Comics has also accused Superbabies of trademark infringement of its “SUPER”-related trademarks and opposed the trademark applications of Superbabies (ITAB Trademark Opposition No. 91290757) and asserted exclusive rights over the use of “SUPER” followed by a generic descriptor for a human character. These trademark restrictions, in addition to similar protections held by Marvel and DC, limit the ability of Superbabies to effectively market and describe its products, especially in the superhero genre. Superbabies therefore stakes a claim to the right to use words such as “SUPERHERO” and other phrases freely to describe and market its creative work.

Claims listed by Superbabies Ltd. against Marvel Characters Inc.

Challenge to Exclusive Use of “SUPER

Superbabies contends that DC’s assertion of a right to the exclusive use of the prefix “SUPER” followed by a generic term, such as “HERO,” is too broad and overly limiting. DC argues such right based on the grounds that the combination of “SUPER” and a word identifying a human being, “SUPERHERO,” has been uniquely associated with their brand for a long period of time and therefore is not available for others’ use. Superbabies argue that such terms are common and descriptive of the superhero genre they can not therefore, be monopolized by any entity, and DC’s restriction for fair use is necessary for accuracy in describing the genre as well as the associated characters.

Entry Barriers in the Market:

With the trademark of Superhero in effect, Marvel and DC are preventing competitors like Superbabies from properly marketing and selling their merchandise because they hold trademarks on widely recognizable terms in the superhero genre. Superbabies believes that trademarks, especially on words such as “SUPERHERO,” prevent smaller companies from entering the market on equal footing, as they cannot use terms that consumers readily associate with superhero themes. This has reportedly affected the Superbabies ability to project their brand to potential consumers, since they could not use common terms that correctly define the types of goods they sell.

Trademark Opposition by DC:

DC has strongly objected to the trademark applications made by Superbabies themselves, which include ITAB Trademark Opposition No. 91290757. Such an opposition is part and parcel of DC’s effort to limit Superbabies’ rights in the trademarks that bear the “SUPER”-worded terms, based on their ownership of the said marks. Superbabies claims this is wrong and beyond reasonable trademark protection since it should be possible for Superbabies’ line of superhero stories and goods to coexist in the super-hero market as a whole.

Right to Describe Products with Common Terms:

Superbabies holds that it has a First Amendment right to use such prescriptive words as “SUPER HERO” in advertising their products because such words fall under the umbrella of description that characterizes the superheroes. It is the contention of the company that in order to market and thereby differentiate itself from its competitors to appeal to consumers, they must be allowed to make use of such language. Superbabies argues that Marvel and DC’s near monopoly over these terms imposes an undue burden, forcing them to restrain their capacity to communicate effectively with intended customers.

Submissions made:

The most substantial evidence proffered by Superbabies Limited was that the term “superhero” became generic and cannot be trademarked since it belongs to no one. The attorney for Superbabies argued that Marvel and DC were using a term of such common usage as a method of stifling the creative freedom of creators of comics and to restrict competition within the industry. The petition for cancellation cited such instances where other publishers have used the term without receiving legal consequences, indicating “superhero” was likely common in the public rather than a distinctive brand indicator.
Further, Superbabies Limited pointed out that Marvel and DC had always utilized the trademark for suppressing other creators’ works in the past, which supported their argument that the term should not be protected under trademark law. The default judgment was rendered in favour of Superbabies as Marvel and DC did not respond to the cancellation petition within the time allowed.

Key legal provisions involved:

• Trademark Cancellation (15 U.S.C. § 1064): Superbabies Ltd. filed an action in cancellation of Marvel and DC’s trademarks on grounds of the term “superhero” having become generic in nature and thus eligible not for trademark protection, based on 15 U.S.C. § 1064(3) states that a party to register that mark may file an ex parte petition to cancel registered trademark if the trademark or service mark has, or has become, dead among the public, merely become generic, or had or has been abandoned and abandoned. Superbabies argued that Marvel and DC had not used the term in a way that maintained its distinctiveness as a trademark, making it generic.
• Generic Terms: In trademark law, genericness is quite an important legal concept. A term may be generic if it describes a genus or class of products or services in general rather than identifying a source. The TTAB decided that with widespread usage in popular culture, the term “superhero” had become so generic that any right Marvel and DC enjoyed was nullified.
• Failure to Respond (TTAB Rules): TTAB requires respondents to file an answer to cancellation petitions within a certain timeframe. Marvel and DC filed for an extension but failed to respond prior to the date set for response, and thus, it became a default judgment on Superbabies’ petition. This would seal the TTAB’s decision.
• Abandonment (15 U.S.C. § 1127): Abandonment under 15 U.S.C. § 1127 was cited in the petition as well. This is the determination that a trademark has been abandoned. This section indicates that a mark is deemed abandoned when it has not been used for three consecutive years with no intent to resume using it. Superbabies claimed that neither Marvel nor DC used “superhero” as an active trademark and thus, generic.
• Trademark Registration Requirements: As the case demonstrated, use of trademarks must be living to maintain their status as a registered trademark. The TTAB ruling held that inaction and doing nothing to enforce trademarks puts them at risk of losing them, especially when trademarks become part of the common vocabulary.

Legal reasoning

The Trademark Trial and Appeal Board (TTAB) ruled in favour of Superbabies by recognizing the generic nature of the term “superhero,” which was central to Superbabies’ argument against Marvel and DC. Registration Nos. 1179067, 1140452, 3674448 and 825835 were cancelled by the Commissioner for Trademarks.

1. The Genericness of the “Superhero- The TTAB relied on the rule that, due to widespread and generic use in a particular category, some words and terms become generic and, as such, cannot be used to establish trademark rights. They concluded that the term “superhero” had become a generic descriptor within popular culture: characters of extraordinary abilities and moral missions generally, rather than pointing to goods coming from any source. The TTAB explained that the giving of a monopoly in a term such as “superhero” would be beyond the reach of trademark rights because it is founded on the limitation of confusion among consumers about the origin of products and not in limiting descriptions available to the public.
2. The TTAB reasoned that trademark law exists not to allow companies to dominate an entire creative genre but rather to protect consumers by distinguishing one company’s products from another.   By attempting to claim “superhero” exclusively, Marvel and DC were overstepping the boundary that trademark laws had established. The Board said the protection of a term like that would seriously distort the very purpose intended for trademark law because it would place a barrier in competition and even hamper the creativity of bringing in newer or smaller enterprises into the world of superheroes.
3. Waiver by non-action- When the firms didn’t respond to the Superbabies petition, it was presumed that Marvel and DC had actually surrendered their opportunity to present an argument to protect their right to the monopoly on the term. On that rationale, the TTAB decision simply assumed that they relinquished the trademark claims further strengthening the case that “superhero” should be free to the public and that no one has a proprietary claim.
4. Adam Adler, on the side of Superbabies, argued that this ruling was not just about trademark ownership but a broader principle of creative freedom. He further proposed that superhero stories have become staple fare for modern storytelling as they have become part and parcel of the imagination in the global market and ignited the creative juices of anyone who wants to create. In fact, the access to these basic terms may be denied to new stories, innovations, and the development of the genre itself by a company like Marvel and DC. Adler claimed that, basically, the genre of the superhero should always be accessible to all the creators. In fact, terms like “superhero” are free to use with no legal boundaries for anybody.

The outcome of the case

The case of Superbabies Limited v. Marvel Characters, Inc. and DC Comics, whereby the joint trademark for the term “superhero” was canceled has far-reaching implications regarding future trademark applications within this particular industry of comic book companies.

1. Greater Access for Novel Authors
2. Freedom to Use Generic Terms: The determination would free independent creators and small publishers from being sued over the use of the word “superhero.” Language democratization may be fruitful in terms of creativity as new characters and stories are created without the cumbersome limitations put on trademark.
3. Promotion for Creativity: Since “superhero” is in public domain now, authors and writers would feel free to play with diverse narratives and character designs that go well with today’s issues and might revitalize the genre.
4. Trademarking Strategy Evolution
5. Reconsideration of trademark applications: Future applicants will have to think over how they approach trademarking terms associated with comic book characters or themes. The ruling now sets a precedent that generic terms may not receive protection, causing companies to focus on more distinctive branding strategies.
6. Specificity: A company might concentrate more on trademarks that are unique to their characters or storylines rather than trademarking a broad term which would be labeled generic. The result of this would be the existence of a wide range of trademarks in the industry.

3. Increased Competition

• Market Dynamics: This will eliminate exclusive rights over “superhero,” and it may make the market more competitive. New entrants are free to create and market superhero content, possibly challenging established players like Marvel and DC.
• Impact on Well-established Brands: Marvel and DC keep the trademarks for specific words such as “SUPER HEROES” and “SUPER-VILLAIN.” Unavailability of ownership of a generic term “superhero” may lead to diluting their brands and thus affect market force.
• The case law enhances a strong legal principle that business firms cannot monopolize terms or words within the sector, which are common phrases. The applications of this trademark will most likely appear before this case-law ruling and the applicants would require showing distinctiveness.

[1] Marvel Characters, Inc., Marvel Characters, https://spiderman-animated.fandom.com/wiki/Marvel_Characters,_Inc. (last visited Oct. 5, 2024).