DC Comics, Inc. v. Powers

• Decision Date: 07 December 1978
• Docket Number: No. 78 Civ. 4597 (KTD).,78 Civ. 4597 (KTD).
• Citation: 465 F. Supp. 843
• Parties: D C COMICS, INC., Plaintiff, v. Jerry POWERS, Michael Barkow, the Daily Planet, Inc., and Future Development Merchandising, Inc., Defendants.
• Court: U.S. District Court — Southern District of New York

465 F. Supp. 843

D C COMICS, INC., Plaintiff, v. Jerry POWERS, Michael Barkow, the Daily Planet, Inc., and Future Development Merchandising, Inc., Defendants.

No. 78 Civ. 4597 (KTD).

United States District Court, S. D. New York.

December 7, 1978.

COPYRIGHT MATERIAL OMITTED

Weiss, David, Fruss & Lehrman, New York City, Cowan, Liebowitz & Latman, New York City, for plaintiff; Michael Davis, New York City, Carol F. Simkin, Mitchell Alan Frank, New York City, of counsel.

David S. Fitzpatrick, Michael F. Schwartz, New York City, for defendants Jerry Powers and The Daily Planet, Inc.

OPINION AND ORDER

KEVIN THOMAS DUFFY, District Judge:

This is a trademark action involving use of the name Daily Planet both as the title of a news publication and in connection with a myriad of consumer products. Plaintiff, D C Comics, Inc., charges that the continued use of the name Daily Planet by defendants, the Daily Planet, Inc. and its President, Jerry Powers,¹ is violative of § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), hereinafter "the Act" and constitutes unfair competition resulting in dilution of plaintiff's common law trademark under the law of New York. Jurisdiction is founded upon 28 U.S.C. § 1338(a), (b) and upon the principles of pendent jurisdiction.

In June of 1938, plaintiff's predecessors created the fictional character called Superman —the "man of steel who, with powers and abilities beyond those of mortal men, fights a never ending battle for truth, justice and the American way." The Daily Planet serves a dual function in relation to the Superman character. Primarily, it is the name of the fictitious Metropolis newspaper which employs Superman's alter ego, together with the other central characters in the Superman story. The Daily Planet is also the title of a promotional news column appearing from time-to-time within Superman comic books.

Defendants are the moving forces behind an underground news publication² called the Daily Planet. The Daily Planet appeared between the years 1969 through 1973. Since its demise in 1973, the Daily Planet lay dormant until recently when defendants demonstrated a great interest in its resuscitation.

Upon commencement of the instant action, defendants moved for a preliminary injunction to preclude plaintiff from any use of the name Daily Planet including the advertisement, promotion, distribution or sale of any products in connection with the multi-million dollar cinema production of "Superman", scheduled to be released in just a few weeks by plaintiff's parent, Warner Communications.³ Plaintiff has cross moved for injunctive relief seeking to preclude defendants from any use of the Daily Planet.

A hearing was held before me on November 21st and 27th. The following, based upon the testimony elicited and the evidence received at the hearing together with the memoranda and affidavits submitted by the parties, constitute my findings of fact and conclusions of law.

Both plaintiff and defendants claim that as a result of a prior appropriation and use of the name Daily Planet, they each possess exclusive rights to its use. What is really at issue, however, is whether either party to this action is entitled to exclusive exploitation of the name Daily Planet based on the expected wave of public interest in the Superman character calculated to result from the release of the Superman movie.

It is well settled that a preliminary injunction will issue only upon a clear showing by the movant that it will suffer irreparable harm absent its issuance and demonstrates either (i) a probability of success on the merits, or (ii) sufficiently serious question going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the movant. See, e. g., Triebwasser & Katz v. American Telephone & Telegraph Co., 535 F.2d 1356 (2d Cir. 1976).

Merits of the Case

It is undisputed that neither plaintiff nor defendants presently hold a registered trademark in the Daily Planet and, therefore, any rights to the exclusive use thereof are to be determined solely under the common law of trademarks. D. M. & Antique Import Corp. v. Royal Saxe Corp., 311 F.Supp. 1261, 1271 (S.D.N.Y.1970).

A common law trademark, paralleling its statutory counterpart, includes any word, name or symbol adopted and used by a manufacturer or merchant to identify his goods and to distinguish them from those manufactured or sold by others. 3 Callmann, Unfair Competition Trademarks and Monopolies § 65 at 1-2 (3d ed. 1969). See also Clairol, Inc. v. Gillette Co., 270 F.Supp. 371, 376 (E.D.N.Y.1967), aff'd 389 F.2d 264 (2d Cir. 1968).

The function of a trademark is to identify the source of a product. Indeed, it has been held that:

. . . protection of trademarks is the law's recognition of the psychological function of symbols. If it is true that we live by symbols, it is no less true that we purchase goods by them. Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co., 316 U.S. 203, 205, 62 S.Ct. 1022, 1024, 86 L.Ed. 1381 (1942).

In order to claim ownership of a mark, a party must demonstrate that his use of the mark has been of such a quality and for such a duration that it has come to identify goods bearing it as originating from that party. In short, the mark must have developed a secondary meaning—the primary significance of the mark in the hands of the consuming public is not to identify the product, but rather, to identify its producer.

In order to succeed in its suit claiming infringement, plaintiff must establish three essential elements: plaintiff is the owner of the mark; the mark indicates the source of the goods; and, defendant's use of the mark is likely to create confusion in the minds of the consuming public as to the source of the goods. See generally 3 Callmann, Unfair Competition Trademarks and Monopolies §§ 65-66 (3d ed. 1969).

Likewise, defendants, to succeed in their claim of exclusive ownership of the Daily Planet, must prove these same elements.

The Superman character has, since its creation in 1938, been featured in comic books, comic strips and on radio and television. The Daily Planet first appeared in the Superman story in 1940. Since then, the Daily Planet has played a key role, not only in the Superman story, but also in the development of the Superman character. In addition, plaintiff has gone to great effort and expense throughout the long history of Superman to utilize the Superman character in connection with a myriad of products born of the Superman story. See Defendants' Exhibit U. Indeed, to this end plaintiff employed the Licensing Corporation of America to act as its agent in the licensing of the Superman character to persons wishing to use it in connection with a given product. These products have included school supplies, toys, costumes, games and clothes.

At the hearing before me, Joseph Grant, the President of the Licensing Corporation of America, explained the licensing procedures for the D C Comics, Inc. and in particular the Superman characters. He testified that his corporation, at the behest of D C Comics, Inc., licenses the Superman story as a package. Thus, the typical licensing agreement would permit use not only of Superman, but of all the Superman characters. Mr. Grant concluded that while the Daily Planet was never singled out in any licensing agreement, he believed it to be part and parcel of the typical licensing agreement. Indeed, it was clearly established that the Daily Planet has been prominently featured on many products emanating from these licensing agreements.⁴ See, e. g., Plaintiff's Exhibit 3; Defendants' Exhibit X.

In contrast, defendants' relationship with the term Daily Planet has been both brief and, at best, sporadic. Defendants' first published their newspaper in 1969 in Miami, Florida and called it "The Miami Free Press." Thereafter, the name went through a series of changes from "The Miami Free Press and The Daily Planet", to "The Daily Planet and The Miami Free Press" and finally to "The Daily Planet." In 1970, Powers registered the name Daily Planet as the trademark for the paper. It was also during this period that Powers caused the incorporation of the Daily Planet, Inc.

There was testimony from the defendant Powers that the Daily Planet was distributed at the Woodstock Music Festival in Woodstock, New York and at the Atlanta Pop Festival in Georgia. I am willing to believe that to be true. Much of Power's other testimony, however, strains credibility.

Despite defendants' dream of creating a paper with national appeal, the Daily Planet remained throughout its brief history essentially a local affair and, as such, was published between 1969 through 1973 on an irregular basis. Powers also testified that from its inception, the Daily Planet was plagued with financial problems. Finally, in 1973, its financial woes became overwhelming and the paper folded.

Thereafter, Powers left Florida and began work on a new underground publication called "Superstar." At least two issues of "Superstar" were published at this time. It appears that the majority of defendants' time and efforts were devoted to the promotion of this new publication. Consequently, defendants permitted their trademark registration of Daily Planet to lapse and it was subsequently cancelled by the Office of Patent and Trademark Registration in 1976.

In light of the foregoing, it is apparent that only plaintiff has demonstrated an association of such duration and consistency with the Daily Planet sufficient to establish a common law trademark therein. The totality of evidence demonstrates that the Daily Planet has over the years become inextricably woven into the fabric of the Superman story.

Defendants, on the other hand, have offered very little to evidence either a substantial or genuine interest in the Daily Planet. More importantly, however, upon the demise of the Daily Planet in 1973, I find that defendants engaged in a course...