Edgar Rice Burroughs Inc. Using Trademark Law To Prevent The Use Of Public Domain Stories

from the only-eight-years-left,-make-them-count dept

Fri, Mar 9th 2012 12:50pm — Zachary Knight

The public domain is meant to be a source of free culture for all the world to enjoy, mix and derive other works from. Unfortunately, there are many people and organizations in the world that wish to block the use of public domain material. Edgar Rice Burroughs Inc. (ERB) is one such organization. Founded in 1923, this corporation has been handling all the copyrights and other rights for the works created by the author Edgar Rice Burroughs. Amongst the rights held by the corporation are the rights to the Tarzan and John Carter of Mars characters. What makes this situation somewhat unique is the fact that only a portion of the Tarzan and John Carter books are still covered by copyright in the US. A number of the early works were published prior to 1923 when modern copyright terms of life plus 70 years went into effect. Even though the copyrights of the early works are long expired, ERB has shown that it will block the use of both characters in modern derivative works.

With that in mind, it should come as little surprise that ERB has set its legal sights on the comic book company Dynamite Entertainment. You see, Dynamite had the audacity to base a series of comic books on the public domain stories and settings found in the early Tarzan and John Carter books. However, ERB was not having it. So it decided to sue Dynamite, not for copyright infringement (at least not primarily) but for trademark infringement. Since it can't fight Dynamite's use of those public domain stories on copyright grounds, it is attempting to use trademark law to block it.

In this lawsuit, ERB claims that Dynamite's use of the Tarzan and John Carter marks dilutes and damages the associated brands ERB controls. ERB claims that the manner in which Dynamite uses the mark, and specifically some of the covers which feature partial nudity, are damaging to the reputation and good will of ERB and the business it has built up around Tarzan and John Carter.

What this really sounds like is a company coming to the realization of what will happen in less than a decade's time. If people could just make comics and other derivative works based on its characters, then licensing deals, like the ones it made with Disney and Dark Horse Comics, would not be necessary. That's the real rub here. It is making a lot of money from those deals. If it were to be ruled either in court or through inaction that there is no need for such licensing when the derivative works are using the characters, settings and stories of the public domain works, then ERB's whole business model would fall flat. On the other hand, if ERB can win this case based on trademark alone, it could extend its business model and profit potential to long after the copyrights on all of Burroughs' works expire in 2020. If that is the case, it could set a very damaging precedent.

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Filed Under: copyright, edgar rice burroughs, john carter of mars, public domain, tarzan, trademark
Companies: edgar rice burroughs inc.

44 Comments

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Anonymous Coward, 9 Mar 2012 @ 12:59pm

Is it a far jump to assume that this is all coming about do to the release of the movie called "John Carter" just another example of big money being scared they backed the wrong horse in the race.
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Anonymous Coward, 9 Mar 2012 @ 1:14pm

Somebody send these schmucks a copy of the Supreme court's Dastar ruling.
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Kirion, 9 Mar 2012 @ 1:16pm

I thought trademarks were created to protect customers? How the hell trademark law is relevant in this case?
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Anonymous Coward, 9 Mar 2012 @ 1:20pm

Dynamite's been very careful not to use the trademarked names "John Carter" or "Tarzan" on the covers of their "Warlord of Mars" and "Lord of the Jungle" books as you can see...
WarLord of Mars...
http://www.dynamite.net/htmlfiles/viewProduct.html?CAT=DF-Warlord_of_Mars
Lord of the Jungle...
http://www.dynamite.net/htmlfiles/viewProduct.html?CAT=DF-Lord_of_The_Jungle

BTW, neither "Warlord of Mars" or "Lord of the Jungle" is a registered trademark, despite ERB's claim.
You can look it up on the TESS website...
http://tess2.uspto.gov/bin/gate.exe?f=tess&state=4007:m50khq.1.1

The stories the comics are based on are PD with no dispute, so anyone can do adaptations or new stories based on them.
They just can't call the books "John Carter" or "Tarzan".
(And Dynamite doesn't)
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Gareth, 9 Mar 2012 @ 1:29pm

ERB Inc. has a history of this
They (through the same lawyers) tried to shut down my release of a Sword-and-Planet RPG called MARS ( http://www.rpgnow.com/index.php?cPath=272_4256 ) back in 2007, despite it being a pastiche and featuring NONE of Burroughs' creations or trademarks.

I informed them that they do not own a genre -- and prior art exists, ranging from the Jandar of Callisto novels by Lin Carter, to ERB contemporaries like Otis Adelbert Kline, etc.

I informed them that no Burroughs material appears, public domain or otherwise, in our pastiche.

But they only backed off when I asked them how they had managed to get a copy -- which was only digitally available, with all sales records passed on directly to me. I pointed out that I had no record of a sale to either ERB, Inc., or its representatives, and that "of course, digital piracy is of great concern to us", and asked them if they could help me track down the source of their illegally-obtained copy, so I could issue the proper DMCA notice.

They never contacted me again. :)
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Gumnos (profile), 9 Mar 2012 @ 1:30pm

Disney gearing up to do the same?
Even after the Mickey Mouse Copyright Extension expires, I suspect Disney will lean on the Mickey/Steamboat Willy trademarks to come down hard on anybody who has the audacity to use "their" works.
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Mitchell Featherston, 9 Mar 2012 @ 1:42pm

Unfortunate...
This is yet another case of IP law out of control. In theory, would it help the comic publisher to simply re-name the characters (I am not familiar with the comic series)? How about using "Joe Cartier" -- probably TOO SIMILAR.

I can see this very thing happen decades from now when Marvel character's stories begin to enter the public domain... Disney will use every trick in the book, including trademark, to kill off attempts at using their characters.
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jupiterkansas (profile), 9 Mar 2012 @ 1:43pm

I'm just happy Edgar Rice Burroughs will get to enjoy his newfound riches. He's an awesome writer and deserves the wealth.
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E. Zachary Knight (profile), 9 Mar 2012 @ 1:51pm

Re: ERB Inc. has a history of this
Thanks for sharing this. I was aware that ERB does this on a regular basis and it is great that you were able to defend yourself without being forced into a court for it.
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el_segfaulto (profile), 9 Mar 2012 @ 1:55pm

Re:
+1! I'll bet that this will only encourage him to write even more wonderful literature. After all, that is the purpose of copyright...is it not?
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E. Zachary Knight (profile), 9 Mar 2012 @ 1:55pm

Re: Disney gearing up to do the same?
There is definitely going to be a number of high profile cases like this if copyright sticks to its current term lengths. As you have pointed out, Disney is massively litigious and will fight tooth an nail to 1) lengthen copyright to continue to protect Mickey or 2) attempt to use trademark to protect their brand around Mickey.

I hope that this ERB case reaches a point that it would effectively negate any future attempt at using trademark law to block the use of public domain material. That would hurt Disney's ability to follow the same path with regard to Mickey.
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Gracey (profile), 9 Mar 2012 @ 2:08pm

[ERB claims that the manner in which Dynamite uses the mark, and specifically some of the covers which feature partial nudity, are damaging to the reputation and good will of ERB and the business it has built up around Tarzan and John Carter.]

I don't know about that for sure, though it could be, because I will say that when I see books with any of the character names from the Martian stories written by ERB (books which I actually own, c. 1963 printing) like Dejah Thorus or Tars Tarkas, I would immediately assume they were ERBs books/stories as written, so if other fans of those series assumed the same thing, then the comics might in fact be an "annoyance". I haven't much studied TM law or regulations so make that a personal feeling I suppose.

I'm definitely not a fan of the new covers either. The original stories weren't based on anything terribly sexual - they were sci-fi with a touch of romance. Not having looked at the comics, I don't know if they twisted the stories, but they sure have the cover art.

That being said, young people today would probably find the covers, er "interesting", while old fogies like me find them lewd - particularly when someone like me views the covers in light of the stories they've read, rather than the stories contained in the comics. The current covers would not be a good fit to the original books/stories.

At least one of the books I own has a publishers note in it, whereby ERB "renewed" their copyright...but no note about how long for.

Oddly enough, a few days ago I had made a recent post on Google+ looking for three of the original stories, but the reprints from 1963, not the original print. I had photographed the covers from those I had, to be sure people trying to sell me a book, had the right printing. While you can buy reprints on demands, they don't have the right covers. Weird timing that another story about this series has popped up.
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Joe Publius (profile), 9 Mar 2012 @ 2:09pm

Re:
Isn't that why Robert Howard wrote that new Conan movie? Bit of a shame though, his writing appears to be slipping.
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Gracey (profile), 9 Mar 2012 @ 2:11pm

Re: Re:
Encourage who to write more stories? Huh...
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The Devil's Coachman (profile), 9 Mar 2012 @ 2:18pm

The ERB lawyers need to find a new career. One with more potential and honor than the one they pursue now. For them, I would suggest they seek employment in certain establishments south of the border, where donkeys are regularly molested for the audience's entertainment, a position for which they already appear to be eminently qualified, if not already experienced. I would pity the donkeys, however. Nonetheless, at least they could then claim they made an honest dollar.
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E. Zachary Knight (profile), 9 Mar 2012 @ 2:37pm

Re:
I believe the covers were designed to mimic many Sci-fi and Fantasy covers from many classic sci-fi and fantasy books. Many of those books had covers featuring overtly sexualized women. It was a stylistic choice of Dynamite. While ERB may consider that damaging to their brand, the key here is whether they have a brand that is protected by trademark in this case.

At least one of the books I own has a publishers note in it, whereby ERB "renewed" their copyright...but no note about how long for.

You mentioned that your books were printed in 1963, at that time I believe copyright was 25 years with an optional 25 year renewal. That could be what it is referring to.
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E. Zachary Knight (profile), 9 Mar 2012 @ 2:39pm

Re: Re: Re:
Edgar Rice Burroughs. Copyright was created to encourage artists and writers to continue to create. With a copyright of life plus 70 years, Burroughs should be still writing books today. However, he has been dead for nearly 70 years now.
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Anonymous Coward, 9 Mar 2012 @ 2:44pm

Re: Re: Re: Re:
That's no excuse.
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Dave Miller (profile), 9 Mar 2012 @ 2:48pm

Re:
See now, I don't quite get the logic that illustrations of nudity somehow detract from the established characters in the Barsoom stories. Am I the only one who remembers that pretty much everyone on Mars was nude most of the time in them?
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Watchit (profile), 9 Mar 2012 @ 3:26pm

Re: ERB Inc. has a history of this
Interesting story! way to fight back against bogus IP claims! :D
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Watchit (profile), 9 Mar 2012 @ 3:30pm

Re: Re: Re: Re: Re:
Yeah, since copyright is obviously to help promote the creation of more content, then it should only make sense for dead people to create more content as long as a copyright for their work exist!
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Digitari, 9 Mar 2012 @ 3:32pm

RE
Dotar Sojat, Warlord of Barsoom, is NOT amused
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Watchit (profile), 9 Mar 2012 @ 3:32pm

Re: Re:
yeah the cover for Dynamite's "Warlord of Mars" book kinda reminds me of Planet Hulk more than anything else...
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Watchit (profile), 9 Mar 2012 @ 3:33pm

Re: Re:
Wasn't Tarzan half nude all the time anyway?
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The Groove Tiger (profile), 9 Mar 2012 @ 3:34pm

Re: Re:
Actually I read all of the Mars books available on Project Gutenberg. They describe everyone as not wearing any clothes and just using metal bling bling as a sign of status (this was because apparently Mars weather was just perfectly temperate all year long except at night, when they slept in furs). Even one of the books tells that the martians could see Terrans via their uber martian radium explodium unobtanium telescopes and wondered why humans were so stupid to cover their bodies all the time.

This just points to me how stupid people can be when they have no concept of seasons and illnesses.
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Unimatic1140 (profile), 9 Mar 2012 @ 4:41pm

But but but....
Correct me if I'm wrong but didn't the supreme court already say in Dastar Corp. v. Twentieth Century Fox Film Corp. (et al., 540 US 806 (2003) that a trademarks cannot be used to try to force a perpetual copyright, when a copyright does not exist or has expired???
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DOlz (profile), 9 Mar 2012 @ 5:31pm

Re: Re: Re: Re:
Lazy bastard.
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TtfnJohn (profile), 9 Mar 2012 @ 6:40pm

It's funny that ERB are complaining about partial nudity in this when they most certainly didn't complain about a scantily dressed Jane in the TV show of the 50s and even more scantily dressed Jane in the movies of the same period.

As for harming anything, I can't see what unless it's a major attack of prudery. When I was much younger I had a couple of paperbacks of John Carter of Mars one published in the early 60s which hinted at a relationship with the woman depicted on the cover and the other from the 40s where the woman was almost as scantily dressed as in these covers. Judging from what was written on the back cover that edition was published for Allied soldiers, to increase morale, no doubt.

I found John Carter of Mars fascinating when I was 10. By the time I was 15 it was just tripe and I'd moved on to things like Asimov, Arthur C. Clarke and more adult stuff.
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Bergman (profile), 9 Mar 2012 @ 8:11pm

Let's hear it for Nazrat, Lord of the Tropical Rainforests!
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Anonymous Coward, 9 Mar 2012 @ 9:32pm

Re: But but but....
Dastar dealt with reverse passing off, where Dastar renamed the series and removed the original credits and Twentieth Century Fox sued. This does not appear to foreclose a claim against using the trademarks involved in a public domain work.
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G Thompson (profile), 9 Mar 2012 @ 11:11pm

I'd think that ERB would be more shocked at the Robert A. Heinlein series of books with the actual character called Zebediah John Carter actually going to an alternate universe Mars (Barsoom) in "Number of The Beast (1980)" where he was also married to "Dejah Thoris Burroughs" who in other books actually had incestual relations with her father Profess Jacob Burroughs. Not to mention full on Orgies with Lazarus Long et.al. :)

RAH Always said the character names were fully purloined from ERB material and even states it many a time in the actual books themselves when talking about "World as Myth" theory.

OMG The Horror!
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Anonymous Coward, 9 Mar 2012 @ 11:26pm

Re: Unfortunate...
"In theory, would it help the comic publisher to simply re-name the characters (I am not familiar with the comic series)? How about using "Joe Cartier" -- probably TOO SIMILAR."

As long as they don't use "John Carter" on the cover, it's fine.
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Anonymous Coward, 9 Mar 2012 @ 11:33pm

Re: Re:
"You mentioned that your books were printed in 1963, at that time I believe copyright was 25 years with an optional 25 year renewal. That could be what it is referring to."

The pre-1978 law was a 28-year copyright with a renewal of another 28 years...if you filed the paperwork!
If you didn't, there was no renewal!
A superbly-practical system, if you ask me!
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Chargone (profile), 10 Mar 2012 @ 10:13pm

Re: Re: Re: Re:
the reason it continues after death is, of course, to prevent some bright-spark circumventing the term by killing the author off.

of course, far more intelligent would be to have a simple fixed length in the first place, but oh well.
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Anonymous Coward, 11 Mar 2012 @ 8:38am

Re: Re: Re: Re: Re:
It's clear we need stronger copyright rules and longer copyright terms. Even dead authors don't have enough of an incentive to create works from the afterworld.
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Hart D. Fisher, 11 Mar 2012 @ 1:04pm

Trademark Law and your guts...
This is just another bully tactic used by larger corporations to stifle creativity and honest competition in the marketplace. I dealt with this when I sued Marvel Comics Group for trademark & copyright infringements over my title, Dark Angel.

I came out of that lawsuit on top, but it wasn't easy. They threatened a groundless counter suit meant to bleed my finances. When they saw I wasn't cowed, they capitulated and canceled the title in question (originally a Marvel UK title called Hells Angel. Guess who sued over that one).

This battle should got to Dynamite. We'll see if they have the courage to stand behind their convictions. If they stand tall and fight the good fight, they'll come out on top.

I wish them the best of luck.

Sincerely,

Hart D. Fisher
President/American Horrors
www.americanhorrors.com
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Hephaestus (profile), 11 Mar 2012 @ 2:44pm

Re:
Actually, just send them a copy of a micro economics text book. That and the sherman act
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Anonymous Coward, 11 Mar 2012 @ 4:30pm

Did the movie "John Carter" strike you as a ripoff of "Princess Of Mars"? Seriously, it was a good movie, but just imagine a catfight between Lynn Collins and Traci Lords over who is the real Princess, culminating in an explicit love scene between the two. Now THAT would have been awesome!
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jupiterkansas (profile), 13 Mar 2012 @ 2:26pm

Re: Re: Re: Re:
But I already pre-ordered his next book.
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Anonymous Coward, 7 Apr 2012 @ 8:22am

Re:
ur an idiot... burroughs has been dead for YEARS...
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Sigh, 11 Mar 2019 @ 11:16am

Re: Trademark Law and your guts...
Apparently it isn't absurd enough that Tarzan has been stuck in copyright limbo since 1912 thanks to Edgar Rice Burroughs. I'm surprised they didn't mention copyright creep and adaptation overload in this article.
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Anonymous Coward, 22 Jul 2019 @ 5:55pm

Re:
moron
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Joe, 4 Apr 2020 @ 9:20pm

Copyright
If a builder builds a building and leaves it to his heirs they can profit from rents forever. Why shouldn't an author be allowed to leave his copyright to his heirs? Publishers will continue to make money from Tarzan after all the copyrights have run out. Why shouldn't the heirs get a royalty?
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Anonymous Coward, 23 Feb 2021 @ 5:50am

Re: Copyright
False equivalence. Real property requires proof of ownership, upkeep, maintenance, and taxes (making it easy to figure out who owns the property in most cases). Intellectual "property" requires none of that - in fact, sometimes nobody knows who the owners are.

https://www.techdirt.com/articles/20201111/10541245687/happy-20th-birthday-to-no-one-lives-fore ver-classic-pc-game-that-cant-be-sold-today-thanks-to-ip.shtml

To make matters worse, the builder of the house in your argument more closely resembles the publisher. A closer analogue would be the architect, who definitely does not get a cut of my property.
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