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HomeNEWSIntellectual property dramas: the good, the bad and the ugly

Intellectual property dramas: the good, the bad and the ugly

Many hardcore comic book fans would be delighted to be contacted by DC Comics, but for Super Tyre Guy in Paeroa, it was a different story.

Owners of the Super Tyre Guy store, Gene and Marie Young, received a letter from the Los Angeles-based company asking them to “immediately and permanently stop using the Super Tyre Guy character”.

Super Tyre Guy. Source / NZ Herald

DC said it would file a lawsuit if they didn’t change their branding.

The Super Tyre Guy mascot bears several similarities to Superman, including his blue and orange themed colours, the diamond picture on his chest and his caped, underwear-on-display attire.

It said if Super Tyre Guy immediately changed its branding, it would forgo any claims to costs or damages.

The company appears to have taken it in stride, despite having to spend thousands of dollars on a rebrand. It also has removed all imagery of the Super Tyre Guy from its Facebook page.

To all our Super customers: we are in the process of changing our logo image to look more like a “tyre guy” for legal…

Posted by Super Tyre Guy on Monday, August 3, 2015

“It is a huge expense but at the same time it has to be done and it is something we have to accept. I will just have to change more tyres and sell more mags,” Young told the NZ Herald.

“I suppose it is a lesson and a step in our journey into creating our unique identity.”

It’s not the first time DC Comics has taken on a New Zealand company. In 2011, it said finance company Superloans was also infringing on its famous superhero with its finance mascot, Buck.

It said Buck was strikingly similar to Superman, but the International Property Office of New Zealand ruled there was clear differences between the two cases and threw out the case.

To be safe, here are some “superlaws” – aka identifying elements of Superman –  for those who are worried DC might come after their company next:

  • Strength
  • The ability to fly
  • A superhero suit including a matching top and tights
  • Matching cape, boots, and “trunks” (underpants)
  • A shield logo containing a stylised S on the chest of the superhero-suit
  • One arm extended straight out with a clenched fist
  • The corresponding leg extended straight behind
  • The opposite arm beside the torso bent at the elbow with a clenched fist
  • The corresponding leg bent approximately 90 degrees at the hip and also bent at the knee at a similar angle.

It’s always fun cheering for the little guy, so here are some other examples of David vs Goliath intellectual property cases that New Zealand companies have faced:

Battle of the industrial superheroes: Metalman vs Scrapman (2014)

Scrapman BOP (Bay Of Plenty) wanted the trademark registration owned by Metalman New Zealand to be scrapped from the NZ Trade Marks Register.

This was because it claimed Metalman had failed to use the name over a three-year period up to its trademark registration.

It was found that it was used once over the course of three years in a local newspaper advert.

It was decided that the “use it or lose it” principle applied to the case, so Scrapman won the scrap over Metalman.

Scrapman may have won that battle, but there may be another one yet to come in the future.

It has a superhero in their branding that looks even more like Superman than Super Tyre Guy, but it doesn’t seem like DC Comics has come calling – yet.

 “But it’s the name I was born with!” – the awkward battle for one’s namesake (mid-2000s and 2015)

Tamsin Cooper

If you’re yet to introduce a child into the world, beware of what you name them.

If it’s too similar to someone else or a brand that’s moderately famous, they can be facing an unfortunate onslaught of legal troubles if they want to start up their own business.

Take Tamsin Cooper, who’s better-known namesake Trelise Cooper had her up for infringing on her copyright.

Trelise said the brands were similar and appealed to the same kind of market, while Tasmin said the brands were different and that it was her name.

Trelise soon dropped the charges.

This also happened more recently to Kiwi photographer Sirous Dior, who was told by the luxury fashion giant he couldn’t use his own name.

His company was called Dior Fine Art, but Dior said that it already owned numerous trademarks in New Zealand, including the name Dior.

Siruous registered Dior Fine Art in 2014, but has since given up and changed the business’ name to Alphabet Limited.

He says it’s too much hassle and money to take on an empire like Dior. 

The bold, the brave and the stupid (2010 and mid-1980s)

Trumpcard’s mascot

Donald Trump’s lawyers managed to track down an Invercargill fundraising company called Trumpcard in 2010 after the company trademarked its name.

The Trump corporation sent a letter to the company, saying the fact they had used the word ‘Trump’ was an “an obvious attempt to trade on Mr Trump’s well established reputation”.

The company insisted it used the word in the sense of playing cards and cards have been around a lot longer than Mr Trump himself.

Trump’s people agreed that the court jester logo for Trumpcard beared no resemblance to Trump’s pre-existing copyrights, but warned they’d be watching closely.

Perhaps if the logo featured a man with an elaborate hairpiece, it would’ve been a different story.

Another Invercargill store was a lot more bold in its copyrighting.

A fish and chips store branded itself as “Snoopy’s” and took on the renowned beagle dog persona.

However, this was halted abruptly by Peanut creator Charles Schulz’s people, who ordered a rebrand. 

One Facebook user fondly remembers their spearmint milkshakes and thickshakes, circa 1976.

According to the Facebook discussion, it now has a much more nondescript name: “Moon’s”.

The Italian mob inspired fish and chips shop (2015)

A Martinborough fish and chip shop that specialises in cod dishes has been challenged by movie giant Paramount Pictures for the similarities its branding has to the iconic movie, The Godfather. 

The shop’s branding parodies the 1979 crime movie, with the same font used. The logo is also a suave looking cod in a suit that bears a resemblance to Marlon Brando’s Don Corleone character.

Business for The Codfather is booming thanks in part to its witty name and branding, so owners Danielle and Lochie Stuart aren’t keen to give it up easily. 

They say the branding is staying, as Paramount Picture is being mean spirited. 

Danielle Stuart told Stuff because the business name wasn’t the same and is in a completely different industry, she didn’t see a problem. 

How to beat the Hiltons (1990s)

A hotel built in the early 1900s rebranded to The Blackball Hilton in the 1990s, but faced protests from a well known overseas hotel chain called The Hilton.

There was a genuine reason for this name – the hotel was opposite Hilton St, which was named after a director of the Blackball Coal Company. 

The hotel avoided legal disputes and simultaneously stuck it to the powerful company by renaming itself “Formerly the Blackball Hilton”.

The legend of Harrodsville (1986)

Otorohanga

A historical New Zealand case is a true David and Goliath story, and probably the most legendary multinational company takedown of them all.

In 1986, Henry Harrod, whose restaurant was named after himself, was threatened with lawsuits by UK Harrods owner Mohammed Al Fayed over using the same name.

In protest, almost every local store in the restaurant’s town of Otorohanga also changed their name to Harrods.

The showing of solidarity for Harrod went so far as to change the town name.

It was briefly renamed “Harrodsville” for a while, with the support of its district council and mayor.

After international media had a field day reporting the story and criticising Harrods, Al Fayed dropped legal action.

The shops and town reverted back to their former names.

The sleepy town’s epic protest against the UK Harrods has become the pride and joy of the town, and is included in many descriptions of the place.

Moral of the story? If a multinational threatens legal action, think outside the box. Be the David. Or rename your entire town, you know, whatever it takes.

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