• It's a Bird! It's a Plane! It's a¿Trademark!
  • October 14, 2004
  • Law Firm: Manatt, Phelps & Phillips, LLP - Los Angeles Office
  • A federal judge has ruled that the owner of the Superman franchise has a valid trademark in "kryptonite" that can be protected from dilution and infringement by a bicycle lock company that adopted the name. Rejecting Kryptonite Corp.'s contention that DC Comics owns no trademark rights because it had never used the word "kryptonite" in connection with the sale of goods or services, the court found in a September 21, 2004 decision that "Superman's one fatal flaw" is a protectable symbol under a federal law governing advertising.

    DC Comics filed a complaint in Manhattan federal court in 2000 to block Kryptonite from proceeding with plans to use the word on products such as tote bags, briefcases, helmets, pants, jerseys, and computer software. It argued that a 1983 agreement between the companies limited the bike lock company's use to locks, bike accessories, and handle-bar grips.

    The decision is another blow for Kryptonite Corp., which is still reeling from revelations earlier this month that its $90 bike lock can be opened with a Bic pen -- a widely reported story. The reports have already spawned several class action lawsuits. The company announced earlier this week that it would offer rebates to customers who bought their locks more than two years ago.

    DC Comics filed suit under the Lanham Act alleging infringement, unfair competition, and dilution of the trademark, as well as state law claims that Kryptonite Corp. was using kryptonite and other words containing "krypto" to confuse consumers into believing there was a connection between its products and the Superman legend.

    "Kryptonite is an ingredient of an entertainment property (Superman)," the judge wrote. "Kryptonite is closely associated with Superman resulting from DC Comics' 60 years of use of Kryptonite with Superman."

    The judge also found that there were issues of consumer confusion. "DC Comics argues that [Kryptonite's] own founder testified that he had been asked 'numerous, numerous, numerous times' whether there is an association between [Kryptonite] and DC Comics."

    Significance: Several aspects of the court's ruling in this case warrant noting. DC Comics did not have a slam dunk case on either the law or the undisputed facts. The court's finding that kryptonite is a trademark even though DC Comics has not registered it and has used it only in conjunction with the sale of tee-shirts is a solid victory for DC Comics. The courts are also split on whether inquiring about an association between two products indicates consumer confusion or actually shows that consumers are not confused, but again, the court sided with DC Comics on this point. Perhaps the judge is a Superman fan.