The Law of Superheroes

by James Daily

  Batman’s gadgets are often based on advanced technology unavailable on the open market. Sometimes these gadgets are explained as the product of Bruce Wayne’s own considerable intellect. In other cases the gadgets (as in the recent movies) have their origin with Wayne Enterprises R & D, perhaps with some modifications for Batman’s purposes.

  Of course, Batman must always be ahead of the curve, so over time his gadgets have advanced to keep pace with technology. The flip side is that over time gadgets and advanced technologies that were once exclusive to Batman fall into common use, perhaps sold by Wayne Enterprises.

  And therein lies the problem, at least for gadgets that come out of Wayne Enterprises R & D. Like many businesses, presumably Wayne Enterprises would seek to patent its inventions. But Batman’s own use of the inventions in public may prevent Wayne Enterprises from obtaining a patent. In the United States, one cannot obtain a patent on something that was “patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 5 If Batman starts using a new Wayne Enterprises technology prior to the filing of the patent application, then he may have ruined the company’s chance at a patent. 6

  Of course, Wayne Enterprises could always file for a patent before Batman starts using it, but that would mean disclosing the technology to the public eighteen months later when the patent application is published by the Patent and Trademark Office. 7 At most, Batman would have eighteen months in which to use the technology before supervillains could look it up online and start copying it (presumably supervillains are not concerned with patent infringement suits). Perhaps more important, it also means that supervillains could discover any weaknesses or limitations in the technology.

  As Bruce Wayne, Batman could also keep the Wayne Enterprises technology to himself: using it in public—and thus destroying patentability—but also ordering Wayne Enterprises R & D to keep the technology on the shelf. In the end Wayne Enterprises still loses, whether because competitors can copy the unpatentable technology or because the company is prevented from selling the technology in order to keep it secret.

  So Batman’s use of Wayne Enterprise technology puts Bruce Wayne between a rock and a hard place: either harm the company that indirectly finances his heroics by using the technology in public or concede a round of the technological arms race by allowing the technology to be disclosed in a patent.

  You might be thinking that all this talk of “public use” is a bit silly. After all, Batman isn’t exactly walking around giving public demonstrations of his latest gadgets, much less explaining how they work. The patent laws, however, take a broad view of what constitutes public use. It was long ago established that it is enough that a single instance of the invention was used by a single person in public, even if the device itself and its method of operation were not visible (e.g., a hidden piece of armor beneath Batman’s costume). 8 The purpose of this broad definition of public use is to induce inventors to disclose their inventions early; if the invention works well enough to use it in public, then it works well enough to be patented.

  There is an exception to this rule for experimentation, but it is a narrow one, and it may not be practical in this case. In general, the exception requires that the experimentation be done by or at the direction of the inventor as part of the development and testing of the invention. 9 Although Batman often uses gadgets that are not yet fully developed, it is doubtful that Wayne Enterprises would call Batman to the stand to testify that he was using a new gadget at the behest of a Wayne Enterprises scientist in order to test its performance under real-world conditions.

  Furthermore, the experimental use exception also requires that the testing necessarily be in public, such as in the case of a new pavement material. 10 But most if not all of Batman’s gadgets could be tested in a lab or other testing facility. It’s hard to argue that it’s necessary to test them on actual supervillains and criminals.

  But now you might be saying: if Batman keeps his use of the gadget secret, and the criminals he catches don’t understand or even notice the new technology, how will this ever be a problem in practice? Who’s going to snitch? There are two major possibilities. First, Batman doesn’t always have the luxury of operating in the shadows. Sometimes he works in public, and cameras and bystanders may observe new technology in use and equipment such as Batarangs may be left behind. 11 But the second and more serious problem is that Bruce Wayne himself and possibly other Wayne Enterprises employees (e.g., Lucius Fox) know of Batman’s use of the technology. Would Bruce Wayne really be willing to break the law by perjuring himself in order for Wayne Enterprises to make more money? Even if he would, could he convince Lucius to go along? The version of Lucius in The Dark Knight might well not. We think he would probably choose for the company to forgo a patent in order to keep crime-fighting technology secret a while longer.

  There is hope for a work-around, however. Patent applications that include classified information are not published until either a set time period has expired or the secrecy order has been lifted. 12 But neither do such applications mature into patents; effectively they are held in limbo while they remain classified. So if Bruce Wayne could persuade, say, the Department of Defense to classify a given technology, then Wayne Enterprises could apply for a patent early on, Batman could use the technology, and once the time was right the classification could be lifted, the patent could issue, and Wayne Enterprises could make a lot of money. Given that Wayne Enterprises does a lot of work for the US military and given that Bruce Wayne is a very well-connected man, this is a plausible solution to the problem, though the Pentagon might make him share his toys.

  Spider-Man and Gene Patents

  In the 2002 Spider-Man film, Peter Parker became Spider-Man after being bitten by a genetically engineered spider, which apparently transmitted the modified genes to Parker. 13 Assuming the spiders were covered by one or more patents, could Spider-Man infringe those patents simply by developing superpowers? After all, patent infringement is a strict liability tort: it does not have to be intentional, and there is no “innocent infringer” defense. 14

  First, we have to decide what, exactly, we mean when we talk about spiders being covered by patents. People often talk about “gene patents,” but what are they? In the United States there are two main kinds of claims in gene patents: claims to genetically modified organisms and claims to DNA or proteins produced by DNA.

  There have been two recent developments regarding gene patents. First, the Federal Circuit, the appellate court that hears all patent-related appeals, recently affirmed the patentability of DNA sequences, including human DNA sequences. 15 Second, the America Invents Act of 2011 16 amended the Patent Act to prohibit patents “directed to or encompassing a human organism.” This change would likely stop a patent infringement suit against Parker. There are other defenses, however.

  The validity of claims to genetically modified organisms was first recognized in the landmark case Diamond v. Chakrabarty. 17 Although the Chakrabarty case involved a genetically modified bacterium, the Patent Office and the courts have subsequently recognized the validity of patents claiming multicellular organisms, including animals. So a genetically modified spider could be patented. But giving a human these same modifications would not be an infringement of the spider patent, because humans aren’t spiders. The patent claim is not for the specific genetic modification as such, but for the genetically modified organism as a whole.

  But what about claims to the DNA itself? Claims to DNA generally take the form of “purified and isolated DNA, wherein the DNA molecule has a nucleotide sequence as set forth in Fig. 1” or “a purified and isolated protein, as an expression product of a transformed host cell containing a DNA molecule coding for the protein, the DNA molecule having a nucleotide sequence as set forth in Fig. 1.” As you can see, these kinds of claims require a purified, isolated form of DNA, which is not the natural state for DNA in th
e body, and so Spider-Man wouldn’t infringe such a claim.

  Even the second example, a purified and isolated protein (such as the proteins that make up spider silk), wouldn’t apply because spider silk is made up of several proteins. But one could imagine a patent claiming spider silk produced by a genetically modified organism having a particular DNA sequence. In fact, a patent application claiming a genetically modified silkworm that produces spider silk was filed in 2010. 18 So could a patent like that spell trouble for Spider-Man?

  We think not. The patent would likely have to claim a genetically modified spider or another specific organism (e.g., a silkworm), which of course would not apply to a human. A patent that tried to claim a broad class of organisms (e.g., mammals) modified to produce spider silk would be invalid for lack of “enablement” unless the patent

  “contain[ed] a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same.” 19

  Since genetic engineering is a fairly complex and difficult process, it is unlikely that a patent could describe a general process for modifying organisms to produce spider silk.

  The only way Spider-Man could infringe the patent, then, is if it specifically claimed and described a genetically modified human that produced spider silk. However, as discussed, the law now expressly prohibits such patents. Even without that prohibition it is likely that the Fifth and Fourteenth Amendments would forbid claims that covered genetically modified humans. For starters, a patent could not grant someone the right to exclude another human from reproducing (which of course means passing on DNA) because the Constitution protects “personal decisions relating to…procreation.” 20 Another problem would be the unavoidability of infringement. Although patent infringement is a strict liability tort (i.e., there is no requirement that the infringement be intentional, knowing, or even negligent), there must still be an act of infringement. Simply existing is not an act, and penalizing Spider-Man for it would likely run afoul of the Constitution. 21

  Copyright

  Like patents, copyrights are created by federal law and copyright issues have come up in comic books. We’ll consider copyright and alternate universes, a copyright claim by the Joker, how copyright affects Peter Parker and Clark Kent, and how superheroes can use copyright to control the use of their image.

  Copyright and Alternate Universes

  In New Excalibur, Nocturne (a.k.a. Talia Wagner, the daughter of Nightcrawler from alternate universe Earth-2182) is transported to Marvel’s mainstream continuity (Earth-616) by the Timebroker to “repair” a number of damaged timelines. She happens to have an iPod with a copy of the Beatles fortieth anniversary album on it. In her universe the Beatles never broke up, John Lennon wasn’t killed, and they went on to create new music for years. Could anyone on Earth-616 (e.g., the “real” Beatles) lay claim to a copyright on this music or otherwise prevent its distribution?

  A Beatles album from an alternate universe might be the only Beatles music it’s legal to copy. Chris Claremont et al., Old Times Now are Not Forgotten!, in NEW EXCALIBUR 4 (Marvel Comics April 2006).

  To answer this question we first have to consider how copyright works. Following the Copyright Act of 1976, copyright in the United States “subsists…in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated.” 22 This means that copyright in a work exists the moment that the work is fixed in a tangible medium. 23 The practical upshot is that there is no copyright in the Beatles album unless there was copyright protection when it was created on Earth-2182. 24 Now we must consider the circumstances under which the United States recognizes the copyright of a work created in a foreign jurisdiction. For that we turn to the Berne Convention. 25

  The Berne Convention is an international treaty with 164 signatories—most of the countries in the world. The Convention works to harmonize several key aspects of copyright law, including copyright protection without formal registration and international recognition of copyright. Each signatory nation must treat works created in other signatory nations the same as works created domestically. The flip side is that signatories are not required to recognize a copyright in works created in non-signatory nations. However, because none of the countries on Earth-2182 are signatories to the Earth-616 Berne Convention, it is likely that the Beatles album has no copyright protection at all on Earth-616.

  Even if the copyright were recognized, however, the remaining Earth-616 Beatles would not have a claim. They didn’t create the tracks, and even if the album incorporated music that was substantially similar—or even identical—to Earth-616 Beatles music, the defense of independent creation absolves the Earth-2182 Beatles (and thus Talia) of any civil liability for infringement because the Earth-2182 Beatles created their music without ever knowing about the Earth-616 Beatles. 26 Indeed, coming up with the same music in an alternate universe is about as independent as independent creation can get. And independent creation is something the Earth-616 Beatles should be very familiar with. 27

  Just because the Earth-616 Beatles don’t have a copyright claim does not mean they might not be able to prevent distribution of the album, however. Trademark law (discussed later in this chapter) and the right of publicity (discussed in chapter 5) provide alternative routes to accomplishing the same goal. Specifically, the Earth-616 Beatles could sue to prevent Talia and others from misrepresenting the music as “Beatles music.” They could seek an injunction requiring people distributing the music to describe it as coming from an alternate universe with no connection to the Earth-616 Beatles. This would create a contrast to their own genuine Earth-616 Beatles creations.

  Another possible complication comes from the possibility of criminal copyright infringement. While we may assume that Talia properly purchased her copy on Earth-2182, anyone else making copies might run afoul of the criminal copyright infringement statute. 28 If the United States government recognized a copyright in the album, it could prosecute distributors of the work even though the copyright holders couldn’t possibly benefit, since they’re in an alternate universe.

  The Joker’s Copyright Claim

  In Detective Comics #475, the Joker causes all of the fish in Gotham Harbor to take on a twisted, Joker-like expression. He then goes to the Gotham City division of the Copyright Commission 29 and demands to register a copyright on the fish. Why? Well, Batman says in this very comic: “The Joker’s mind is clouded in madness! His motives make sense to him alone!” In other words, who knows? In any case, the clerk refuses, saying that fish are a natural resource and cannot be copyrighted. Was he right, or did the Joker have a legitimate copyright claim?

  We think the copyright clerk was right. First, living organisms and genetically modified DNA are not copyrightable, although several commentators have proposed it, going back to the early 1980s. 30 Patents can be used to protect genetically engineered organisms, 31 and special plant patents can protect certain kinds of plants. 32 But so far, at least, copyright is right out.

  Even if the fish could be copyrighted, there are other defenses which make the Joker’s plan problematic. First of all, no one is copying the fish. They reproduce naturally, on their own, so the fact that there are an increasing number of them does not constitute an act of infringement by anyone in particular, and we don’t think that even the Joker is crazy enough to sue the fish. And even if he were that crazy, the courts aren’t. But that aside, the fact is that copyright owners lose some of their rights when they sell copies of their copyrighted work. 33 This is called the “first sale doctrine,” which states that some of a copyright holder’s rights in a particular copy of a work are extinguished when the copy is sold or transferred to a new owner. 34 So, for example, when you buy a new CD, you aren’t allowed to make and distribute n
ew copies of the CD—the copyright holder retains those rights—but you can decide to sell it or give it away. This is why used bookstores exist. It also means that fishermen, sellers, and consumers of the fish have legal title to the individual fish that they catch, process, and eat. The Joker cannot claim copyright infringement against them for those activities, because his control over the individual fish was lost as soon as the fish were released into the water. By abandoning the fish in the harbor and allowing a legal transfer of ownership, the Joker exhausted most of the rights in the fish that he apparently wants to enforce. The Joker wouldn’t lose his alleged copyright as such, just his right to control what happens to particular fish. “Ownership of a copyright, or of any of the exclusive rights under a copyright, is distinct from ownership of any material object in which the work is embodied.” 35

  Finally, there is also an argument that Gotham’s fishermen and sellers and consumers of fish products have an implied license to use the fish, since they simply used the modified fish as they found them. A license may be implied by a copyright holder’s conduct. 36 The Joker left the fish in the wild to be caught, so he can hardly complain if people make use of them in the usual way.

  The Joker’s copyright scheme was, appropriately, as crazy as he is. Steve Engelhart et al., The Laughing Fish, in DETECTIVE COMICS (VOL. 1) 475 (DC Comics February 1978), reprinted in SHADOW OF THE BATMAN (VOL. 1) 4 (DC Comics March 1986).