The Battle of the Captains Marvel – How Superman’s prevailing on a Copyright Infringement Claim Led to a Trademark Battle that Simmered for Nearly 50 Years
March 27, 2019
This is the first in a three-part series discussing how two bodies of intellectual property law (Copyright and Trademark) have come into conflict between two universes of superheroes, with the unintended consequence of allowing a third superhero in yet another comic book universe to use a name already used for a superhero.
Left: Marvel Captain Marvel Movie Poster. Right DC Captain Marvel Movie Poster.
In 2019, Hollywood studios are releasing two competing movies that seem to have come from the same brainstorming session (as when two end-of-the-world asteroid movies, “Deep Impact” and “Armageddon,” were released the same summer). This time, however, two competing “Captain Marvel” movies are being released, namely “Captain Marvel” and “Shazam!” These heroes are not new creations. Rather, they have a long, confusing history of coexisting alongside each other (though I for one didn’t realize there were two separate characters). This coexistence (and its being allowed under trademark law) is remarkable.
As with most superhero movies, the story of how two different Captains Marvel came to exist in two comic book universes (and now cinematic universes) must deal with the heroes’ origin stories, which will be explored more fully in Part 2. Surprisingly, the incarnation of two heroes by the name of “Captain Marvel” is the result of a third hero, the prototypical superhero Superman, vanquishing the first Captain Marvel (we’ll call him DC Captain Marvel) in a copyright infringement claim. Without this, the second Captain Marvel (we’ll call her Marvel Captain Marvel) likely could not have existed, at least not for long. But in a strange twist, it is the second hero who is allowed to use the name “Captain Marvel.”
My Origin Story
Lou Ferrigno as the Hulk —
1970’s special effects have not aged well.
Let us start in the middle, when I first became aware of two of our heroes, Superman and DC Captain Marvel. I was like most kids growing up in the 1970’s. I was introduced to superheroes by Saturday morning cartoons (like Superfriends and The Amazing Spiderman) and live action TV adaptations such as The Incredible Hulk (starring the bodybuilder Lou Ferrigno in green makeup and prosthetics and Bill Bixby as the mild mannered scientist), the Amazing Spider Man (starring Friedrich Von Trapp ala The Sound of Music as Spiderman), and reruns of the campy 1960’s Batman (starring Adam West and a slew of zany characters).
None of these TV or movie adaptations compared to the 1978 Warner Brothers’ Superman The Movie, starring Christopher Reeve as Superman and Academy Award Winners Gene Hackman as Lex Luthor and Marlon Brando as Superman’s father, which upped the Comic Book movie ante. Nor did this movie rise to the level of the billion dollar current crop of franchises like the Marvel Cinematic Universe or the competing DC Universe. In fact, I was only vaguely aware that there was a DC Comics or a Marvel Comics, which recently have been branded Cinematic Universes.
It is somewhere between these two warring Universes (in their relative adolescence of the 1970’s) that I first met Captain Marvel. He wore a cape like Superman, but his was white with some ornamentation—gold I think it was. He also wore a stretchy onesie like Superman, but his suit was red with gold accents, including a gold lightning bolt in place of Superman’s large stylized “S” insignia. I watched enthralled as regular teenager Billy Batson would be transformed into the muscular, flying superhero Captain Marvel by saying the word “Shazam!” This was the name of the TV show. I was a little confused that he was sometimes called “Shazam” and other times “Captain Marvel,” but I didn’t think much of it. Later, I watched a cartoon of the same hero righting wrongs. But after the 1970’s, he pretty much dropped off my radar.
He would occasionally pop up in some of my early-adult conversations with friends who were Superfans of comic books. They informed me (to my surprise) that there were other versions of Captain Marvel, and that the mantle of the hero was handed down from individual to individual (and sometimes families of heroes), and that there were even female “Captain Marvels.” Who knew?
Then another couple of decades passed without word from Captain Marvel or Shazam, or whatever he or she wanted to be called. Her reappearance was hinted at in the end of the Avengers’ Infinity War, when Nick Fury sent a pager message before blowing off into ashes. After a little internet searching and Youtubing, I found out that the pager message contacted Captain Marvel. In fact, when Captain Marvel reappeared in my Universe, it was as a female incarnation in the Marvel Cinematic Universe. The name seemed to make sense after nearly forty years – yeah, “Marvel,” like Marvel Comics. Ok. I watched the teaser trailers as Brie Larson donned a very different Captain Marvel costume. Not very surprising, given the major makeovers most big screen versions of the heroes get – like the diminuitive Wolverine’s yellow spandex being traded in for a 6’ 4” leather outfit. Artistic license and edgier 21st Century design, right? Not quite.
A couple of months later, I saw another trailer for a different Captain Marvel movie. This was a comedy. It was called “Shazam!” And he wore a bright red onesie and white cape with gold accents, including a gold lightning bolt on the chest. And the character and plot was waaaay closer to the Captain Marvel I met in the 1970’s. It also included Billy Batson transforming into a superhero by saying the magic word “Shazam!” Wait. What? Gotta watch the “Captain Marvel” trailer again. No, Brie Larson did not have a lightning bolt on her chest. She had a gold star with wings, more like Wonder Woman.
I had just entered the Universe of Consumer Confusion, a universe that is central to conflicts in Trademark. And I was in the thick of it, disoriented by a war between at least two superheroes and superhero universes for nearly 80 years. Because at its heart, Trademark is meant to be a set of consumer protection laws, it prohibits use of trade names or trademarks that are confusingly similar to another. It is meant to avoid cut rate goods or services using similar names or marks of an established, (hopefully) quality brand in order to trick consumers into buying the lesser quality goods based on a misunderstanding that the knock off products are from the quality brand. Thus, the brand name of McDonald’s for fast food should preclude a competitor from using the too similar name of MacDonald’s for fast food to lure away customers. Each federal circuit in the United States has developed its own test for consumer confusion. The Ninth Circuit, in which California is located, applies an eight factor “Sleekcraft” test set out in the Ninth Circuit’s opinion in the case AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir.1979).[1] Normally, the first person to use a name as a trademark is the one deemed to have superior rights in the mark, with the power to fend off any subsequent attempts to use the same or confusingly similar name.
DC Captain Marvel’s Origin
DC Captain Marvel as he appeared in early comics.
In 1939, the DC Captain Marvel landed on this planet (appearing Fawcett Publications’ variously titled Flash Comics #1, Thrill Comics #1, and finally Whiz Comics #1 when it was discovered that the other two names could not be granted trademark rights because they were already in use by other publishers). This was the DC Captain Marvel who I knew, but his first arch-enemy in this battle was Superman, himself (appearing at the time in National Comics). This was because Captain Marvel was reportedly created as a knock off of the already super successful Superman: Fawcett Publications’ circulation director Roscoe Kent Fawcett recalled telling the staff, "Give me a Superman, only have his other identity be a 10- or 12-year-old boy rather than a man".[link] This worked surprisingly well, and Captain Marvel (as he came to be known) outsold Superman’s comics during the 1940’s. The franchise was expanded with other kids who could transform into adult superheroes and kids who could transform into kid superheroes, including Mary Marvel, the alter ego of Billy Batson’s twin sister, Mary Batson. However, DC Captain Marvel and his family of heroes became a victim of their success, as their existence was challenged when Superman’s publisher filed a copyright infringement lawsuit that would be heavily litigated without resolution for over a decade, as will be discussed in Part 2.
Marvel Captain Marvel’s Origin
Marvel Captain Mavel in early comics.
Years later, in 1967 when superhero comic sales again took flight, Marvel Comics began publishing comics about an alien military officer, Captain Mar-Vell, created by Stan Lee and Gene Colan. Marvel’s Captain Marvel went through numerous refinements, reboots and rebrandings, culminating (for our purposes) in Carol Danvers, who became Ms. Marvel in 1978 but had appeared in the 1960’s Captain Mar-Vell books as a United States Air Force pilot. It is this Captain Marvel who has recently entered the Marvel Cinematic Universe, hinted at when Nick Fury sends a mysterious text message just before he turns to ash and drifts out of existence. Interestingly, the name Captain Marvel seems to make the most logical connection to the comics under the Marvel moniker. Yet this is the most recently established use of the mark. Strangely, in this case, it was a junior user, who used the name over two decades after the initial use, that was allowed superior rights? Why that is the case will be discussed in Parts 2 and 3.
[1] The Sleekcraft factors are: (1) the strength of the mark; (2) the proximity of the goods; (3) the similarity of the marks; (4) evidence of actual confusion; (5) the marketing channels used; (6) the type of goods and the degree of care likely to be exercised by the purchaser; (7) the defendant’s intent in selecting the mark; and (8) the likelihood of expansion of the product lines.