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Posted on Jun 21, 2018 in News

If you enjoy movies about fictional superheroes, then you’re probably familiar with Captain America and his miraculous shield. Recently, however, his shield showed up in a most unlikely place—the U.S. Patent and Trademark Office (PTO).

Captain America first appeared as a comic book character in 1940, and since then has been valuable intellectual property of Marvel Comics, an operating unit of Marvel Entertainment. Marvel Entertainment was acquired by the Walt Disney Co. in 2009 for $4 billion. Captain America’s shield is also a valuable piece of intellectual property, and Disney has (and will) take proper steps to protect it.

Intellectual property is most often protected in three different ways: patents, copyrights and trademarks. To protect the design of Captain America’s shield, Disney chose to use design patent protection. U.S. Design Patent D819,750, appropriately named SHIELD, was granted on June 5, and will run for the usual term of a design patent—15 years. The patent includes drawings of the shield from multiple angles. As required by U.S. patent law, views are included to completely disclose the shield’s appearance (front, rear, left, right, top, bottom). Perspective drawings, while not required, are also included to show the appearance and shape of the three-dimensional aspects of the design.

Why a design patent? Design patents protect “any new, original and ornamental design for an article of manufacture” (35 U.S.C. 171). Contrast this with a utility patent that protects “any useful process, machine, manufacture or composition of matter” (35 U.S.C. 101)—think mouse traps, pharmaceuticals, oil refining, etc. Since the value of Captain America’s shield lies in its appearance, Disney chose to apply for a design patent on a newly designed shield for Captain America.

Patenting an object out of the Marvel comic books may seem a little odd, but it actually makes a lot of sense. Think of George Lucas of Star Wars fame. It is well known that when he negotiated his contract with 20th Century Fox studios to film Star Wars, he took a pay cut in exchange for all merchandising rights associated with the movie. Fox readily agreed. Today, it is reported that Star Wars toy licensing has raked in $12 billion since 1977. While he is a phenomenal director, it appears that George Lucas is an even better business negotiator!

Movie merchandising today is a huge moneymaker, and is radically different than the business environment that existed when George Lucas negotiated his merchandising contract. For example, before the first Star Wars script was ever started, merchandising for Fox’s movie Doctor Doolittle had been a spectacular failure, with a reported $200 million worth of merchandise that was never sold. Today, however, merchandising is big money, and studios such as Disney want to cash in on the potential profits. Hence, a design patent on Captain America’s shield.

While the rear of the shield has rarely been shown in comic books or movies, the design patent shows the back of the shield in significant detail. As evidenced by the list of inventors included with the patent application filing, Disney had a team of designers who worked on the details of the shield to create what is illustrated in the patent. According to LinkedIn, the shield’s inventors include two mechanical engineers, two vice presidents, an art director, a design supervisor and a research and development (R&D) manager.

Design patents are sometimes frowned upon because the protection they afford may be narrow. But for a movie prop that may eventually become a hit toy, seeking patent protection makes sense. Are there other forms of intellectual property that could protect Captain America’s shield?

Copyright protection for the artistic aspects of three-dimensional objects has traditionally been very difficult to obtain. But last year’s U.S. Supreme Court decision Star Athletica v. Varsity Brands, Inc., 580 U.S. _____ (2017), created a significant shift in that field of the law. Today, as a result of that opinion, the U.S. Copyright Office will grant a copyright registration for an artistic feature applied on or incorporated into a useful article if the feature can be perceived separate from the useful article, and would be protectable (as stated in Star Athletica) “if it can be imagined separately from the useful article into which it is incorporated.” (In fact, earlier this year, I apparently obtained the first copyright registration that was affected by the Star Athletica opinion.) So, copyright protection is now available for some three-dimensional objects that previously were not protectable under the copyright law.

Using the trademark law to protect Captain America’s shield might be a particularly hard sell. To succeed, a trademark registration applicant needs to show that the design of the shield has acquired distinctiveness as the result of acquiring secondary meaning. In other words, the applicant needs to prove to the PTO that consumers have come to recognize Captain America’s shield as being associated with Disney. While this may be possible to do, such proof may require the use of survey evidence, which is very expensive to obtain.

While Captain America’s shield is an unlikely basis for providing business advice, there are lessons here for business owners to take note of. If your company creates a product with ornamental features, it may be possible to protect that product with design patent protection. In the words of the PTO, the subject matter of a design patent application “may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.” Compared to utility patent applications, design patent applications are significantly cheaper to prepare and file, and they typically lack the protracted modification and negotiation that utility patent applications require. The PTO allows applicants to file design patent applications up to one year after disclosure (including first sale and public use), but this grace period does not exist in most foreign countries. So, if a need for international protection is a possibility then the services of a licensed patent practitioner should be sought before disclosure.

Perhaps one day the Disney Co. will indeed invent a fully working “Captain America” shield. If, at that time, I were Disney’s attorney, I might recommend that Disney file a utility patent application to protect the invention (that is, unless Disney decides to keep its inner workings as a trade secret). For now, a design patent was a good option for Disney to pursue.

By Lawrence E. Ashery

Reprinted with permission from the June 19, 2018 issue of The Legal Intelligencer. © 2018 ALM Media Properties, LLC. Further duplication without permission is prohibited. All rights reserved.


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