Very few people had heard of THE MEN IN BLACK (MIB) in 1992. At thattime, MIB was a little known comic book series written by Lowell Cunningham and illustrated by Sandy Carruthers. WhenI started working at Malibu Comics in 1992, MIB was one of the comic bookswhich Malibu Comics published under a license agreement with Lowell Cunningham.Without getting into too much detail, this license agreement provided MalibuComics not only with certain comic book and graphic novel publishing rights,but it also provided for Malibu sharing in filmed entertainment and merchandisingrevenues. With this in mind, the President of Malibu Comics, Scott MitchellRosenberg, established a relationship with ICM, one of Hollywood's top talentagencies, which facilitated the property's introduction to various producersand studios. This article will briefly highlight the trademark history andstrategy with respect to MIB in view of its publishing foundation and ancillarymerchandising rights potential.Trademark Protection
One of my first duties as in-house counsel at Malibu Comics was toassess the trademark portfolio, including the titles published under licensewhich included, but were not limited to such properties as, THE MEN IN BLACK®by Lowell Cunningham, NINJA HIGH SCHOOL® by Ben Dunn, and DINOSAURSFOR HIRE® by Tom Mason (also Creative Director at Malibu Comics). Inthe case of MIB, the thinking, even then, was that MIB was a property withlegs, e.g., merchandising potential. A strategy of trademark filings wasdeveloped which included, but was not limited to, filing a federal trademarkapplication in Class #16 for "Publications, namely, comic books andseries of books featuring graphic novels" based on 'prior use'. Additionally,applications were filed based on 'intent to use' in Classes #9, 24, 25,28 and 41 (see Super Heroes article on this same website for descriptionof goods and classes). Negotiations and discussions were already underwayat this early stage for animation and/or live action feature film developmentof MIB. Subsequently, an 'Option and Acquisition of Rights' Agreement wasreached between the interested parties. On August 20, 1992, Daily Varietyreported that, "Columbia Pictures has acquired rights to Lowell Cunningham'scomic book series "The Men In Black".
As it turns out, the importance of these early filings cannot beunderestimated in view of several later attempts by several different thirdparties to use the title "The Men In Black" for their own purposesand without authorization from either Malibu Comics and/or Lowell Cunningham,thus threatening the success of the exploitation of MIB.Trademark Enforcement
Travel forward to 1995: Malibu Comics has been acquired by MarvelEntertainment Group, Inc.; I have returned to private practice, retainingresponsibility for the MIB trademark portfolio.
Situation #1: A third party magazine publisher advertises in itsnationally distributed publication in March, 1995, that the following montha comic strip series would start called, "Men In Black." Aftera flurry of internal discussions, I am authorized to send a cease and desistletter to said publisher notifying them of our client's rights, includingthe federal trademark registration in Class #16 for MIB, plus the otherpending applications, and the Columbia Pictures film project, all of whichevidence the interested parties' significant proprietary and ancillary rightswith respect to MIB. Shortly thereafter, counsel for said publisher agreedto cease and desist.
Situation #2: Contemporaneous to Situation #1, a third party comicbook publisher advertised in several nationally distributed comic book industrypublications its intent to publish a comic book entitled, "UFOs &THE MEN IN BLACK." A similar cease and desist letter was forwardedas before which put a stop to this infringement as well.
Certainly, these two scenarios prove the value of creating a registeredportfolio of trademarks for comic book properties with legs. While commonlaw rights exist for trademarks in the U.S. based on use, the benefits ofa Principal Register Federal Trademark Registration, as previously stated,cannot be underestimated. More than bragging rights, the MIB federal trademarkregistration in Class #16 has muscle and an infringer can be slapped witha trademark infringement lawsuit in federal court, in addition to otherremedies.
In the final analysis, you are much better off to invest the smallsums necessary to create a portfolio of trademarks than to rely on potentiallygeographically limited common law rights. In the case of MIB, it its firsteight days at the box office, receipts of $100 million plus were reported.That does not include the merchandise now available on store shelves. Merchandiselicense agreements in association with the MIB feature film include, butare not limited to, hats, t-shirts, collectible trading cards, LCD watches,ceramic mugs, lapel pins, bumper stickers, an interactive trading disk,and lunch kits. Licensees also expect the trademark owner to covenant thatthey own the trademark rights for the goods they are licensing. So, in viewof the tremendous ancillary merchandising rights and the ability to enforcethe exclusivity to MIB and avoiding acquiescence through third party usage,the obvious question is, "Was it worth it to create a registered trademarkportfolio for MIB? You can answer this yourself.
Postscript, July 2002:
MIB II (the sequel) opened to a record $90 million in box office receiptsover the July 4th holiday, with with an estimated $54.1 million during thethree-day weekend (Hollywood Reporter, July 8, 2002). This even beats theoriginal MIB feature film released in 1997 which opened at approx. $84million (Daily Variety, July 8, 2002). These types of huge box officenumbers underscore the importance of acquiring, documenting and registeringthe proprietary rights of both the original underlying work (e.g., thecomic book series by Lowell Cunningham and Sandy Carruthers, published byMalibu Comics), as well as the derivative works, e.g., the series offeature films and animated television programs, not to mention the plethoraof ancillary merchandise which also requires attention to trademarkregistration.
In a summer of Comic Book to Feature Film Success with the openings and boxoffice success of both Spider-Man and MIB II, you can bet that filmcompanies, producers and comic book creators are brainstorming the next boxoffice sensation. From an intellectual property practictioner's point ofview this is good news and good business, not to mention necessary in viewof the reality of piracy both at home and abroad, the latter of which isanother story for another article on another day.The End
* William E. Maguire was Senior Counsel for Malibu Comics Entertainment,Inc., a subsidiary of Marvel Entertainment Group, Inc., from 1992 - 1995,where he concentrated on the company's trademarks, copyrights and licensing.Currently, he is in private practice in West Los Angeles, California, where he representsclients in the comic book, entertainment, publishing, multimedia, apparel,cosmetics, sporting goods, and restaurant industries.
P.S. Click here to access the official MEN IN BLACK website at: www.meninblack.com