IP Law Daily, TRADEMARK—S.D.N.Y.: Creator of ‘Webcomic Name’ scores partial victory in trademark dispute, (Aug 25, 2023)

By George Basharis, J.D.

“Webcomic Name” trademark registration cancelled in favor of comic strip creator.

Ownership of a popular webcomic series featuring a blob-like character and using the catchphrase “Oh No” to highlight life’s mundane misfortunes has been returned to its creator after a federal court canceled a trademark owned by a third-party collaborator. The creator had initially collaborated with a toymaker to develop a game and a line of plush toys based on the webcomic’s “Blob” character. Subsequently, the toymaker applied for trademarks for the “Webcomic Name” series. Adopting the recommendations of a magistrate judge, the court determined that the trademark applications infringed on the creator’s copyrights. The court also agreed with the magistrate’s recommendation to cancel the trademark because the toymaker had failed to show use of the “Webcomic Name” mark in commerce (Norris v. Goldner, August 24, 2023, Engelmayer, P.).

Artist Alex Norris is the creator of the webcomic “Webcomic Name,” a comic strip that features a character named “Blob” and always ends with the punchline “Oh No.” Golden Bell Entertainment and Golden Bell Studios collaborate with artists to create and distribute toys, games, and books. In 2017, Norris and Golden Bell entered into a collaboration agreement that granted Golden Bell the copyright to develop and market a Blob-themed board game and stuffed animals, as well as rights to any sequels.

However, Golden Bell interpreted the contract broadly, believing it conveyed rights not only to the planned board game and its derivatives but also to all of Norris’s work featuring Blob. Consequently, Golden Bell applied to trademark the “Webcomic Name” in International Class 28 for board games and stuffed animals. The U.S. Patent and Trademark Office approved the application as Registration No. 5,629,281 (the ’281 mark). In 2018, Golden Bell filed additional applications to register “Webcomic Name” and “Oh No” in International Class 16 for comic books and comic strips. To demonstrate use of the marks in commerce, the applications included screenshots from Norris’s social media platforms showing cartoons of Blob and the phrase “Oh No.”

By late 2018, the parties’ business relationship had deteriorated, and development of the board game and plush toys had slowed considerably. A dispute also arose regarding the payment of advances and performance obligations under the collaboration agreement. Additionally, when Norris learned of Golden Bell’s trademark applications, he filed a competing application to register “Webcomic Name” in International Class 16. However, the application was refused due to the likelihood of confusion with Golden Bell’s registered ’281 mark. In 2019, Norris filed a petition with the Trademark Trial and Appeal Board to cancel the ’281 mark.

Norris also filed a lawsuit against Golden Bell for copyright infringement, false designation of origin, breach of contract (which Norris contended applied only to the game and plush toys), and damages. Both parties moved for summary judgment. The magistrate judge appointed to the case recommended granting Norris’s motion in part and denying Golden Bell’s motion in full. The magistrate recommended granting Norris’s motion with respect to his copyright infringement and cancellation claims; otherwise, the motions were denied.

Use of copyrighted works. The district court adopted the magistrate’s recommendations to grant summary judgment in favor of Norris on his copyright infringement and cancellation claims. The magistrate concluded that Golden Bell was not authorized to use Norris’s artwork in its trademark applications to show use in commerce. According to the magistrate, the collaboration agreement was limited to “the game and plush toys the parties intended to create.” As a result, Golden Bell did not acquire rights in Norris’s “existing brand and artwork,” including the material in the screenshots used in the trademark applications. The court agreed, noting that even if Golden Bell could show that the artwork used was created after the collaboration agreement was executed, the contract did not grant interests or ownership to Norris’s future works. The court also noted the lack of any evidence to show that Norris authorized use of his artwork outside of the agreement.

Trademark registrations. The court also adopted the magistrate’s recommendation to grant Norris’s claim for cancellation of the ’281 mark. The magistrate found that the collaboration agreement conveyed an ownership interest in “Webcomic Name” only in the category of stuffed animals. To be valid, a trademark must be used in commerce, and Golden Bell never used the “Webcomic Name” mark to sell stuffed animals. Consequently, the court ordered cancellation of the ’281 mark.

False designation of origin. Regarding Norris’s false designation of origin claim, the magistrate concluded that the unauthorized use of Norris’s artwork in Golden Bell’s trademark applications was outside the scope of the “use in commerce” requirement of the Lanham Act. Consequently, it denied Norris’s motion for summary judgment. However, the magistrate also denied Golden Bell’s motion even though Norris would not be able to satisfy the “use in commerce” requirement. The court concluded that, contrary to the magistrate’s recommendation, Golden Bell was entitled to summary judgment because use of the artwork in the trademark applications was the sole basis of Norris’s claim.

Breach of contract. Finally, the court adopted the magistrate’s recommendation to deny summary judgment on Norris’s contract claims. The court concurred with the magistrate’s report that there were genuine disputes of fact regarding the interpretation of certain terms in the parties’ collaboration agreement and their performance obligations.

The Case is No. 1:19-cv-05491-PAE-SN.

Attorneys: Christie Rita Mcguinness (Saul Ewing Arnstein & Lehr LLP) for Alexander Norris. Gerard Patrick Fox (Gerard Fox Law, PC) for Marc Goldner, Golden Bell Entertainment, LLC and Golden Bell Studios, LLC.

Companies: Golden Bell Entertainment, LLC; Golden Bell Studios, LLC

Cases: Copyright Trademark TechnologyInternet NewYorkNews