"They aren't valid registrations, and saying there's a registration doesn't make the marks nongeneric. "
The registrations have not been proven invalid, and the marks have not been proven generic. These are just claims that you are making. We are not interested in alleging that the marks are generic, and we certainly aren't interested in fighting a protracted legal battle against the producers of the content that made the book possible in the first place.
"you wrote a nonfiction book about superheroes and the law."
Yes, and we wanted to lay out why we believe our use of the term is fine in that context, just like we believe our use of the images is fine. Suffice to say that we (and our publisher) had our reasons for wanting to be clear on these points from the outset of the book's publication, particularly based on the publisher's history with the book The Physics of Superheroes and the receipt of certain communications from certain comic book publishers when the sale of the book rights was announced. I'm not sure why you expected us to make some kind of principled stand about copyright and trademark law-and increase the risk of a lawsuit-just to save readers the trouble of seeing a one paragraph disclaimer at the beginning of a 320 page book.
I don't understand under what circumstances you think newsworthiness might be "trumped."
I suggest reading Shulman v. Group W Productions, 18 Cal.4th 200 (1998). There are many cases in which something may be "newsworthy" (i.e. apparently worthy of being reported) and yet other considerations may overcome that. Spider-Man's identity may not be such a case, however, even if he was a minor at the time.
As I said originally, I don't presume to know your negotiations, but I do think it's misleading to repeat these claims as if they were valid in your disclaimer; your statements have consequences not just for you but for other people who read this as if it were a statement of the law, and they have consequences for Marvel & DC's willingness to continue threatening people. You didn't say anything about nominative fair use or genericity to your readership, just to me; you repeated Marvel & DC's claims as if they were yours. I don't think you should have done that. I actually do expect authors who write about the law to take principled stands, or at least say that they haven't.
Shulman, the case that says "the dissemination of truthful, newsworthy material is not actionable as a publication of private facts. If the contents of a broadcast or publication are of legitimate public concern, the plaintiff cannot establish a necessary element of the tort action, the lack of newsworthiness"? I said that Spiderman's secret identity is newsworthy, and Peter Parker's personal characteristics aren't relevant to that; you disagree with the latter claim, though I can't figure out why.
"I do think it's misleading to repeat these claims as if they were valid in your disclaimer"
I'm not exactly sure what you mean by "these claims," but marks registered on the Principal Register are presumed valid. 15 U.S.C. § 1057(b).
"You didn't say anything about nominative fair use or genericity to your readership"
We didn't refer to genericity because the marks have not been held to be generic and we have absolutely no interest in provoking a legal battle with DC or Marvel by claiming that their trademarks are generic. We did refer to nominative fair use, just not by that name: "These terms are used throughout this book solely to refer descriptively to Marvel and DC characters."
"I actually do expect authors who write about the law to take principled stands, or at least say that they haven't."
Our publisher required most of that disclaimer. And we're not only "authors writing about the law" in this context but also "potential defendants reducing our exposure to liability."
"Shulman, the case that says..."
The opinion immediately continues with "To so state, however, is merely to begin the necessary legal inquiry, not to end it. It is in the determination of newsworthiness - in deciding whether published or broadcast material is of legitimate public concern - that courts must struggle most directly to accommodate the conflicting interests of individual privacy and press freedom." (emphasis added) The opinion gives several examples of cases in which there was a newsworthy event some aspects of which were not themselves newsworthy. But as I said, I'm not sure Spider-Man's identity would be an example of that.
But of course, the book doesn't actually claim that Spider-Man's identity isn't newsworthy, just that it's less newsworthy than, say, Batman's. The sentence after your quote is "Thus, whether or not a particular masked character will be able to recover for someone publicizing his secret identity will likely be a fact-intensive analysis wherein the court would balance the First Amendment interests in freedom of the press against the privacy interests of the individual in question." This is not a controversial statement. I quote from Shulman, itself quoting from the Restatement (Second) of Torts:
“Some reasonable proportion is ... to be maintained between the events or activity that makes the individual a public figure and the private facts to which publicity is given. Revelations that may properly be made concerning a murderer or the President of the United States would not be privileged if they were to be made concerning one who is merely injured in an automobile accident.”
You're not a court (not to mention that this presumption can readily be overcome in situations like this one, where I have yet to hear any coherent argument for non-genericity, whether from you or from anyone else), so the statutory presumption is hardly relevant. The rest of the book offers opinions on and statements about the law; your statement at the beginning makes a legal claim; I think it's obviously wrong.
You may have no interest in "provoking" a battle, but I think that capitulation is a really bad idea, especially for people who say they're explaining the law to a lay audience. (For other people who might be interested, places like the Stanford Fair Use Project offer assistance in similar situations.) As Mattel found when it ended up writing a big check to the Food Chain Barbie artist to pay his fees, merely claiming to have a right doesn't mean that it's a valid right. Even if, counterfactually, the mark were valid, there is still no scenario in which a nonfiction book called "The Law of Superheroes" infringes that mark--much less an internal use of "supervillain" in text.
You can negotiate with publishers; I have, and you clearly knew from the outset that some negotiation on IP would be required. So I don't buy "it's not our fault because the publisher required most of it." I certainly believe that you were worried about liability. I simply disagree with your choices, given the existing law that makes a fee award likely for you (law that DC/Marvel are surely equally cognizant of) and the side effects of disseminating the idea that you needed permission to use the terms.
As for Spiderman/newsworthiness: I said at the outset that Spiderman's secret identity was newsworthy. It doesn't matter who Peter Parker is when he's not dressed as Spiderman. There is no personal characteristic of Peter Parker that could make the identity of Spiderman non-newsworthy. None of what you've quoted changes that; to the contrary, it supports my conclusion. You contrasted Spiderman with Batman, and I think that's obviously wrong for the reasons given. If you wanted to pick an unknown superhero who'd never done anything of note to contrast with Batman or Spiderman, you could have. But on Spiderman, there is nothing to balance.
The registrations have not been proven invalid, and the marks have not been proven generic. These are just claims that you are making. We are not interested in alleging that the marks are generic, and we certainly aren't interested in fighting a protracted legal battle against the producers of the content that made the book possible in the first place.
"you wrote a nonfiction book about superheroes and the law."
Yes, and we wanted to lay out why we believe our use of the term is fine in that context, just like we believe our use of the images is fine. Suffice to say that we (and our publisher) had our reasons for wanting to be clear on these points from the outset of the book's publication, particularly based on the publisher's history with the book The Physics of Superheroes and the receipt of certain communications from certain comic book publishers when the sale of the book rights was announced. I'm not sure why you expected us to make some kind of principled stand about copyright and trademark law-and increase the risk of a lawsuit-just to save readers the trouble of seeing a one paragraph disclaimer at the beginning of a 320 page book.
I don't understand under what circumstances you think newsworthiness might be "trumped."
I suggest reading Shulman v. Group W Productions, 18 Cal.4th 200 (1998). There are many cases in which something may be "newsworthy" (i.e. apparently worthy of being reported) and yet other considerations may overcome that. Spider-Man's identity may not be such a case, however, even if he was a minor at the time.
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Shulman, the case that says "the dissemination of truthful, newsworthy material is not actionable as a publication of private facts. If the contents of a broadcast or publication are of legitimate public concern, the plaintiff cannot establish a necessary element of the tort action, the lack of newsworthiness"? I said that Spiderman's secret identity is newsworthy, and Peter Parker's personal characteristics aren't relevant to that; you disagree with the latter claim, though I can't figure out why.
Reply
I'm not exactly sure what you mean by "these claims," but marks registered on the Principal Register are presumed valid. 15 U.S.C. § 1057(b).
"You didn't say anything about nominative fair use or genericity to your readership"
We didn't refer to genericity because the marks have not been held to be generic and we have absolutely no interest in provoking a legal battle with DC or Marvel by claiming that their trademarks are generic. We did refer to nominative fair use, just not by that name: "These terms are used throughout this book solely to refer descriptively to Marvel and DC characters."
"I actually do expect authors who write about the law to take principled stands, or at least say that they haven't."
Our publisher required most of that disclaimer. And we're not only "authors writing about the law" in this context but also "potential defendants reducing our exposure to liability."
"Shulman, the case that says..."
The opinion immediately continues with "To so state, however, is merely to begin the necessary legal inquiry, not to end it. It is in the determination of newsworthiness - in deciding whether published or broadcast material is of legitimate public concern - that courts must struggle most directly to accommodate the conflicting interests of individual privacy and press freedom." (emphasis added) The opinion gives several examples of cases in which there was a newsworthy event some aspects of which were not themselves newsworthy. But as I said, I'm not sure Spider-Man's identity would be an example of that.
But of course, the book doesn't actually claim that Spider-Man's identity isn't newsworthy, just that it's less newsworthy than, say, Batman's. The sentence after your quote is "Thus, whether or not a particular masked character will be able to recover for someone publicizing his secret identity will likely be a fact-intensive analysis wherein the court would balance the First Amendment interests in freedom of the press against the privacy interests of the individual in question." This is not a controversial statement. I quote from Shulman, itself quoting from the Restatement (Second) of Torts:
“Some reasonable proportion is ... to be maintained between the events or activity that makes the individual a public figure and the private facts to which publicity is given. Revelations that may properly be made concerning a murderer or the President of the United States would not be privileged if they were to be made concerning one who is merely injured in an automobile accident.”
Reply
You may have no interest in "provoking" a battle, but I think that capitulation is a really bad idea, especially for people who say they're explaining the law to a lay audience. (For other people who might be interested, places like the Stanford Fair Use Project offer assistance in similar situations.) As Mattel found when it ended up writing a big check to the Food Chain Barbie artist to pay his fees, merely claiming to have a right doesn't mean that it's a valid right. Even if, counterfactually, the mark were valid, there is still no scenario in which a nonfiction book called "The Law of Superheroes" infringes that mark--much less an internal use of "supervillain" in text.
You can negotiate with publishers; I have, and you clearly knew from the outset that some negotiation on IP would be required. So I don't buy "it's not our fault because the publisher required most of it." I certainly believe that you were worried about liability. I simply disagree with your choices, given the existing law that makes a fee award likely for you (law that DC/Marvel are surely equally cognizant of) and the side effects of disseminating the idea that you needed permission to use the terms.
As for Spiderman/newsworthiness: I said at the outset that Spiderman's secret identity was newsworthy. It doesn't matter who Peter Parker is when he's not dressed as Spiderman. There is no personal characteristic of Peter Parker that could make the identity of Spiderman non-newsworthy. None of what you've quoted changes that; to the contrary, it supports my conclusion. You contrasted Spiderman with Batman, and I think that's obviously wrong for the reasons given. If you wanted to pick an unknown superhero who'd never done anything of note to contrast with Batman or Spiderman, you could have. But on Spiderman, there is nothing to balance.
Reply
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