It may be over 18 months away until the release of the highly anticipated Batman V Superman movie, but Warner Bros. (WB) and DC Comics have already begun establishing their IP rights through the registration of trade marks and domain names.
Fans of the comic, like me, first learned of the upcoming movie with an announcement at San Diego Comic Con last year. Director, Zack Snyder, even gave a glimpse of the renowned Superman shield embedded within a slightly more robust Batman logo, alluding to the epic battle between the two superheroes.
Building an IP portfolio
Warner Bros. quickly began registering domain names BatmanVsSuperman.com, SupermanVsBatman.com and BatmanVsSupermanMovie.com, giving fans the first insight into possible movie titles. However, nerds like myself, were quickly thrown off the scent by WB registering several Man of Steel titles, including Man of Steel: Battle the Knight and Man of Steel: Beyond Darkness, suggesting that we may see a sequel from the original Man of Steel feature.
Fast forward to July 2014, WB and DC Comics were preparing for their next instalment of marketing releases at San Diego Comic Con. As a bleary-eyed fan who had camped out for the Warner Bros panel at ‘The Con’, I was ecstatic to witness footage featuring a laser-eyed Superman hovering in the silhouette of the Bat signal cast above the stormy Gotham skyline.
Unbeknown to the 6,500 cheering fans in Hall H, DC Comics had already filed trade marks across Australia (Australian Trade Mark No. 1633098), Europe (European Trade Mark No. 13066014) and the United States (US Trade Mark Nos. 86332922 and 86332927) for the movie title, “Batman V Superman: Dawn of Justice”. Each of these marks has now been accepted in goods and services classes 9 and 41, which relate to motion pictures and entertainment services, respectively.
Trade Mark filing strategy
WB and DC Comics are no stranger to protecting their brand in the market, like most international companies, the establishment of IP is critical to maintaining exclusive rights. The ‘Dawn of Justice’ trade mark adds to the list of over 100 accepted marks in Australia, including the infamous Superman shield (Trade Mark Nos. 426045 & 728445) and variations of the Batman logo (Trade Marks Nos. 1513455 and 1517824).
The marks build on earlier intellectual property rights given to DC Comics. The life-span of an Australian trade mark is 10 years (Australia Trade Marks Act 1995 s 72(3)), however the continual ‘regeneration’ of marks similar to those registered contribute to an ‘extension strategy’, akin to what we already see with ‘ever-greening’ of patents in the BigPharma space.
For companies like WB or DC Comics, it is extremely important to file for marks and domains as early as the conception of the idea, preventing domain-squatters and those capitalising from marks yet to be registered. In this particular case, we saw a ‘footprint’ of the brand established several months after the initial announcement of ‘a movie’ in 2013 with the registration of domain names. However, DC Comics left the filing of trade marks, for the movie title, until 7 weeks after the release of the name.
Why did they leave the trade mark filing so late?
Those familiar with Australian trade mark law would understand that ownership of a trade mark is evidenced by ‘first to use’ (Australia Trade Marks Act 1995 s 58A). DC Comics have an extensive and well-established portfolio of Superman and Batman marks, dating back to the 1940s. Therefore any applicant who dared to file for the ‘Batman V Superman: Dawn of Justice’ mark or similar, would have been denied by General Zod the Trade Marks Registrar on the grounds of section 43 of the Trade Marks Act 1995 ‘likely to deceive or cause confusion’ or section 44 ‘marks that are substantially identical or deceptively similar’. Alternatively though, domain names and social media accounts are not governed by similar laws and hence ‘Flash’ speed is required to secure these marketing avenues.
Section 43. Trade mark likely to deceive or cause confusion
An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.
Interestingly, the mark for the Batman V Superman logo, see below, filed in August is still pending. Unlike the ‘movie title’ mark, DC has filed for nearly every class except the kitchen sink (class 11)! Presumably in anticipation for those marketing products which will feature the logo, including clothing (class 25), beverages (class 30 and 32) and of course printed matter (class 16).
Overall this gives an insight into the strategy and capture of IP by large enterprises. In the meantime, we wait with bated breath for March 2016, where I sincerely hope the Dawn of Justice successfully translates into the incarnation of the Justice League on the Big Screen, rivalling the likes of Marvel and their ‘Avengers’.
Australian Trade Mark Application No. 1643438