Court Backs DC Comics in 'Kryptonite' Suit

by Calvin Reid -- Publishers Weekly, 10/4/2004

A federal judge has ruled that DC Comics can move forward with a trademark infringement lawsuit against a bicycle lock company that uses Kryptonite—a term associated with Superman, DC Comics's most famous trademark—as the company name and on a series of bicycle security devices.

Judge Richard Owen of the Southern District Court of New York also dismissed counterclaims by the Kryptonite Corporation that DC Comics did not own trademark rights to the term Kryptonite because it had never used the term in connection with the sale of goods or services.

Patrick Perkins, a partner in the Fross Zelnick Lehrman & Zissu law firm who represented DC, told PW that the ruling means that entertainment property owners don't necessarily have to individually trademark every term or concept that is related to or used in that property. "This is great for DC Comics or for any entertainment property owner. It reaffirms that the ingredients of a trademarked entertainment property are also protected."

The decision means that, barring a settlement, the suit will likely go to trial.

The lawsuit grew out of a 1983 agreement between DC Comics and the Kryptonite company that gave the bicycle lock company limited rights to the use of the "Krypto" prefix. DC Comics is charging that the firm has breached that original agreement and its trademarks by using Kryptonite on a wider variety of products than called for under the deal.

In making the ruling, Owen noted that trademark law protects "a broad spectrum of marks, symbols, design elements and characters," which the public "directly associates" with a particular trademark. Owen also cited a 1981 trademark ruling in the case of Warner Bros. v. Gay Toys Inc., which established that there are protectable "ingredients" in major entertainment trademarks that can be protected.