Law Offices Of William E. Maguire

The Men In Black: From Comic Book To Feature Film

Introduction

Very few people had heard of THE MEN IN BLACK (MIB) in 1992. At that time, MIB was a little known comic book series written by Lowell Cunningham and illustrated by Sandy Carruthers. When I started working at Malibu Comics in 1992, MIB was one of the comic books which Malibu Comics published under a license agreement with Lowell Cunningham. Without getting into too much detail, this license agreement provided Malibu Comics not only with certain comic book and graphic novel publishing rights, but it also provided for Malibu sharing in filmed entertainment and merchandising revenues. With this in mind, the President of Malibu Comics, Scott Mitchell Rosenberg, established a relationship with ICM, one of Hollywood's top talent agencies, which facilitated the property's introduction to various producers and studios. This article will briefly highlight the trademark history and strategy with respect to MIB in view of its publishing foundation and ancillary merchandising rights potential.
 

Trademark Protection

One of my first duties as in-house counsel at Malibu Comics was to assess the trademark portfolio, including the titles published under license which included, but were not limited to such properties as, THE MEN IN BLACK® by Lowell Cunningham, NINJA HIGH SCHOOL® by Ben Dunn, and DINOSAURS FOR HIRE® by Tom Mason (also Creative Director at Malibu Comics). In the case of MIB, the thinking, even then, was that MIB was a property with legs, e.g., merchandising potential. A strategy of trademark filings was developed which included, but was not limited to, filing a federal trademark application in Class #16 for "Publications, namely, comic books and series 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 description of goods and classes). Negotiations and discussions were already underway at this early stage for animation and/or live action feature film development of MIB. Subsequently, an 'Option and Acquisition of Rights' Agreement was reached between the interested parties. On August 20, 1992, Daily Variety reported that, "Columbia Pictures has acquired rights to Lowell Cunningham's comic book series "The Men In Black".

As it turns out, the importance of these early filings cannot be underestimated in view of several later attempts by several different third parties to use the title "The Men In Black" for their own purposes and 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 Marvel Entertainment Group, Inc.; I have returned to private practice, retaining responsibility for the MIB trademark portfolio.

Situation #1: A third party magazine publisher advertises in its nationally distributed publication in March, 1995, that the following month a comic strip series would start called, "Men In Black." After a flurry of internal discussions, I am authorized to send a cease and desist letter to said publisher notifying them of our client's rights, including the federal trademark registration in Class #16 for MIB, plus the other pending applications, and the Columbia Pictures film project, all of which evidence the interested parties' significant proprietary and ancillary rights with respect to MIB. Shortly thereafter, counsel for said publisher agreed to cease and desist.

Situation #2: Contemporaneous to Situation #1, a third party comic book publisher advertised in several nationally distributed comic book industry publications its intent to publish a comic book entitled, "UFOs & THE MEN IN BLACK." A similar cease and desist letter was forwarded as before which put a stop to this infringement as well.
 

Conclusion

Certainly, these two scenarios prove the value of creating a registered portfolio of trademarks for comic book properties with legs. While common law rights exist for trademarks in the U.S. based on use, the benefits of a Principal Register Federal Trademark Registration, as previously stated, cannot be underestimated. More than bragging rights, the MIB federal trademark registration in Class #16 has muscle and an infringer can be slapped with a trademark infringement lawsuit in federal court, in addition to other remedies.

In the final analysis, you are much better off to invest the small sums necessary to create a portfolio of trademarks than to rely on potentially geographically limited common law rights. In the case of MIB, it its first eight days at the box office, receipts of $100 million plus were reported. That does not include the merchandise now available on store shelves. Merchandise license agreements in association with the MIB feature film include, but are 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 that they own the trademark rights for the goods they are licensing. So, in view of the tremendous ancillary merchandising rights and the ability to enforce the exclusivity to MIB and avoiding acquiescence through third party usage, the obvious question is, "Was it worth it to create a registered trademark portfolio for MIB? You can answer this yourself.

Postscript, July 2002:

MIB II (the sequel) opened to a record $90 million in box office receipts over the July 4th holiday, with with an estimated $54.1 million during the three-day weekend (Hollywood Reporter, July 8, 2002). This even beats the original MIB feature film released in 1997 which opened at approx. $84 million (Daily Variety, July 8, 2002). These types of huge box office numbers underscore the importance of acquiring, documenting and registering the proprietary rights of both the original underlying work (e.g., the comic book series by Lowell Cunningham and Sandy Carruthers, published by Malibu Comics), as well as the derivative works, e.g., the series of feature films and animated television programs, not to mention the plethora of ancillary merchandise which also requires attention to trademark registration.

In a summer of Comic Book to Feature Film Success with the openings and box office success of both Spider-Man and MIB II, you can bet that film companies, producers and comic book creators are brainstorming the next box office sensation. From an intellectual property practictioner's point of view this is good news and good business, not to mention necessary in view of the reality of piracy both at home and abroad, the latter of which is another 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 represents clients in the comic book, entertainment, publishing, multimedia, apparel, cosmetics, sporting goods, and restaurant industries.