Dear Rich: Nolo’s Patent, Copyright & Trademark Blog

Hi Readers: The pile of questions about licensed characters is too big too avoid. So, this week is all about Spidey, Captain Jack, Homer Simpson, et. al. We'll return to normal programming next week.

Dear Rich: I'm working on a graphic novel/comic book. One of the characters will be driving a vehicle of a highly recognizable make and model. Are there legal issues in doing this? If needed, I could alter the car to the point that it's more generic. The short answer is that you're okay using a popular make of automobile in your graphic novel or comic (that's why they call them car-toons) or in most any type of fictional or "editorial" work (remember Stephen King's use of a red Plymouth Fury as the villain in his novel, Christine?). A car manufacturer may battle other manufacturers over the appearance, but those design patent or trade dress rights -- for example, the C-scoop on a Ford Mustang -- are rarely asserted against editorial uses. You may run into a problem if you use the image of the car on the cover of your work, or in the advertising and it creates the impression that the manufacturer is associated with or endorses your work. And you probably shouldn't offer merchandise -- for example, a miniature replica of the car. Of course, the use can also be lucrative if you partner with a car company or get involved in movie and TV product placements. The Dear Rich Staff recommends that if you want to avoid any potential C&D correspondence, use a car that's no longer in production and for which no manufacturer is claiming rights -- like our favorite anthropomorphic characters, Sam & Max (above), and their speedy customized DeSoto. 

If you've ever dreamed that your trashed pickup might someday resemble an all-terrain military vehicle, I've got good news. The 10th Circuit refused to shut down Urban Gorilla, a company that sells car kits that modify your SUV or pickup to look like a Hummer (see pic).

Who cares? General Motors (who acquired the Hummer line) sought to enjoin Urban Gorilla claiming that the appearance created by the assembled car kits infringed the Hummer's trade dress (the distinguishing design or packaging of a product).

Why did the court rule against GM? The 10th Circuit: (1) had questions about trade dress protection for the Hummer's appearance, (2) held that purchasers who spend $100K+ on an H3 were not likely to be confused by an under $10K car kit, and (3) noted that the products were inherently different (GM sells a faux-military vehicle; Urban sells a kit).

But didn't the kits dilute the Hummer trade dress? Dilution (the tarnishing or blurring of a famous trademark) has a unique standard for trade dress (thanks to a Supreme Court decision involving Victoria's Secret). To win on a dilution claim, GM had to prove actual economic harm (and it didn't).

What's next for GM? Maybe they'll go after this bumper sticker?

To learn more about all things intellectual property, check out my book Patent, Copyright & Trademark: An Intellectual Property Desk Reference (Nolo).