David vs. Goliath, Round 2: WildStar vs. the Wild Stars

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"You can’t fight city hall, we’re told. The folks with the bucks get all the breaks.

But sometimes -- just sometimes, mind you -- the little guy wins.

(LEGAL DISCLAIMER: ALL QUOTES IN THIS ARTICLE WERE GIVEN IN AN INTERVIEW WITH MICHAEL TIERNEY ON AUGUST 12, 2000.)

In 1984, Michael Tierney did something that many comic fans would like to do: he created and published his own comic book, Wild Stars. By doing so, he created more than just a book--he birthed a trademark.

"You have a ‘common law’ trademark if you show use," explains Tierney. "I did the comic in ’84. I did the portfolio in ’86. I did another comic book in ’88. I was getting ready to start publishing again in the early ‘90s -- because the industry was really booming right then. My timing was bad in ’84 and ’88, because I was right in front of the black and white boom, and I was right after the black and white bust. So I was waiting for a right time."

But something else happened before he could publish the third edition.

"I was getting ready to go after it again," says Tierney. "Then I see this thing in the Malibu Sun about how Image is going to do WildStar."

"I immediately notified them, contacted a lawyer, made sure I had my book federally registered -- all the due diligence," says Tierney. "I made sure I was completely belt-and-suspenders and said, ‘Hey, this is my mark. I intend to use it. Do not infringe on it.’"

At that point, Tierney says he began getting phone calls from WildStar creators, Jerry Ordway and Al Gordon.

"They called me up saying, ‘Look, we realize this is your mark. Can we work with you? How can we help you?’ At that time, I was an independent and Image was busting onto the scene as a 900-pound gorilla," says Tierney. "With them offering to help promote my book, to counter any confusion that their use of similar mark might create -- they were offering advertisements in Image books; they were going to help get me in touch with other artists to help draw the book. They were making all sorts of nebulous promises of the things they could do to help me if I would allow them to do concurrent use."

But Tierney claims that he and the WildStar creators couldn’t come to an agreement. "They were making all these promises, but they were all vague," says Tierney. "They were always stalled by the lawyers."

"In the meantime," Tierney continues, "Image started publishing, infringing on my mark with no agreement. They got their book out, and then they gave me the offer."

The offer was one of concurrent use. "Basically, this would have bound me at the hip with him forever," says Tierney. "If I wanted to do a poster, I’d have to notify them; if they wanted to do something, they’d have to notify me. We’d have been like Siamese twins."

"For me to agree, do you know what they offered me, after they’d already started publishing the book? They said, ‘Our friend, Keith Giffen, will do you three pages of artwork; he’ll draw anything you want, three pages! How’s that for a great deal?’"

"It was no deal," confirms Tierney.

"I sent them the notification of cease-and-desist," says Tierney. "'This is my mark, I’ve continued to use it, I intend to market it soon, and you’re creating confusion in the marketplace for me.' Their response to my federally registered mark was, ‘Is it registered in Arkansas [Michael’s home state], or any other state for that matter?’ Gee, doesn’t federally registered mean all states?"

The WildStar logo has always been accompanied by the standard TM--right up to the most recent appearance in Savage Dragon #77. But what does the TM really mean?

"The TM means that you intend to register," explains Tierney "I’ve got the ® after mine, because mine is a registered mark. I just renewed it. They would not renew my mark for another ten years unless I was showing use and they recognized it was my mark."

There are plenty of examples, however, where two companies own characters with similar names. Both DC and Marvel have a Captain Marvel. Both have a Sandman (and each has made their own action figure of the character). How can they get away with that?

When it comes to legal questions pertaining to comic books, there’s only one place to turn to: Bob Ingersoll, Ohio public defender and writer of the popular column, The Law Is A Ass.

"DC had a trademark on Sandman," explains Ingersoll. "When Marvel then introduced their Sandman, it was a villain -- thus someone who wouldn't be used all the time -- and DC wasn't using its Sandman. So DC may have decided not to bother challenging the mark. Had Marvel tried to do a super-hero named the Sandman, DC might have felt differently. And by now it's too late for either to challenge the other's use of Sandman. Both have used it so much, I'm not sure either could get a protectable mark on the name. But back then, things were more relaxed as to exactly what marks should, and would, be protected."

"The same is true of Sabertooth," Ingersoll continues. "The Flash villain came and went and DC might not have felt the need to maintain this mark or challenge Marvel on it. If the matter came up today, things might be different. Now marks are more important -- what with toy lines that include villains and other such licensing possibilities. Now if, say, Marvel wanted to do a villain named Sandman, DC would probably challenge it. I suspect if DC tried to use Sabertooth again, Marvel would pitch a bitch."

"Finally, Captain Marvel isn't so difficult to follow," says Ingersoll. "It's like this: When the mid-60's version of Captain Marvel came out (that was the Carl Burgos ‘Split/Xam’ atrocity), Marvel realized it should have a mark on the name Captain Marvel. When the Burgos version died, Marvel brought out its own Captain Marvel and has maintained the mark on Captain Marvel ever since. When DC wanted to revive the real Captain Marvel, it couldn't use that name, as Marvel had the trademark on it. So it calls its book Shazam. DC can publish a book with a character called Captain Marvel, it just can't call the book Captain Marvel, as that would violate the trademark Marvel has."

But could DC publish a book titled, hypothetically, Arachnid Tales, featuring a non-trademarked character called Spider-Man?

"DC might well be able to do a book such as you describe," says Ingersoll, "as long as they didn't try to trademark Spider-Man. I suspect they don't, because they realize they will be buying their way into a lawsuit. It's one they might, eventually, win but most people don't like buying into one, if they can avoid it. The Captain Marvel thing was a slight difference, as DC was reintroducing an already established character, so Marvel might have decided it wasn't worth suing over. But if DC tried to introduce a new character called Spider-Man, Marvel would probably have a different attitude."

I asked Tierney if such an arrangement would be workable for him -- some situation where Image could still use the WildStar character, but not publish under the same title.

"I probably wouldn’t have a problem with that," says Tierney, "as long as they weren’t trying to put it out as a logo and implying trademark, because I don’t want to block somebody else’s ability to tell the stories they want to tell. But that’s what’s happened to me. And I’ve made it real clear that I’ve got these stories I want to tell, I’ve got this book I want to publish, and all they’ve been doing is running interference on it."

So if trademarks are so registered, shouldn’t the government somehow protect the owner from infringement?

"That’s the catch," explains Tierney. "The way the law reads is that protecting a trademark is the responsibility of the trademark owner. The government doesn’t do that for you."

Tierney gives the following example: "Let’s just say Ordway and Gordon stole my car. I could call the police and say ‘There’s my car, and here’s my registration papers,’ and they’d arrest them for a felony, put them in jail, and give me my car back. Unfortunately, in the publishing industry, you have to be your own cop. And the only way to get legal process is to hire a lawyer and go to the courts."

"The question becomes, can you afford $50,000, minimum, to prove you’re right and make them stop? Anytime you tell a lawyer, ‘I’m not interested in money from these guys, I just want them to stop,’ there’s no incentive for them," says Tierney.

"I don’t want to go after these guys for money," Tierney continues. "I don’t care about the money. I just want to publish my book. That’s all I want. And I want them to stop doing the confusion on the marketplace. Blocking me from the marketplace is what they’ve been effectively doing, and they did a really good job of it ten years ago."

"I was slowed down by what Image did," says Tierney. "But I’m not going to let it derail me like it did back in the early 90s, where I just threw all my art in a drawer. I continued working on the property [as a novel], but I had quit working on it for the comic industry after being ripped off by people like that."

"Things are different now than they were when this first happened back in the early 90’s," says Tierney. "The marketplace is different, and the damage they’ve done is not as severe. Image is not the company it used to be. What Image does is not seen by that many people anymore."

Fast forward to today, August 2001.

After nearly ten years of struggling and a delayed start (prompted by a recent appearance of the WildStar logo on Savage Dragon #77), Tierney is publishing Wild Stars, and Image has ceased its use of the WildStar mark. When asked to comment on the current situation, Tierney released the following statement:

"The dispute between Tierney and Image Comics, Inc. was resolved to the mutual satisfaction of both parties, and Image Comics is no longer using the Wild Stars term."

Rack up another one for David; and bring on the next Goliath.