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The stuff that weakens the Man of Steel is protected by trademark. A federal judge has ruled that the owner of the Superman franchise, DC Comics, owns a valid trademark in “kryptonite” that can be protected from dilution and infringement by a bicycle lock company that adopted the name. Southern District of New York Judge Richard Owen issued several summary judgment rulings favorable to DC Comics in DC Comics v. Kryptonite Corp., 00 CV. 5562, including a finding that kryptonite, “Superman’s one fatal flaw,” is a protectable symbol under the Lanham Act. The judge refused to dismiss a claim that DC breached a contract on limited trademark use it reached with Kryptonite Corp., leaving the bulk of that issue for trial. Coincidentally, the decision came a few days after Kryptonite Corp. acknowledged that its $90 bike lock can be opened with a ballpoint pen — a widely reported story. The Canton, Mass.-based company said Friday it is accelerating the introduction of a pen-proof version. Kryptonite Corp. began using the name in 1972 for bike locks and other security devices. In 1976, it applied to register “Kryptonite bike locks” with the U.S. Patent and Trademark Office. In 1983, after years of correspondence, DC Comics and the company reached an agreement that allowed the limited use of three marks associated with the kryptonite name as long as they were only for security devices and accessories for two-wheeled vehicles. The company promised not to associate its products with the characters “Superman, Superboy, Supergirl, Superkids, Super Jr. and Krypto the Underdog.” Nor would it “use the word ‘super’ or a super formative word in the advertising, promotion, packaging or labeling” of its products. DC Comics claimed the express limitations in the agreement were breached in the 1990s when the Kryptonite Corp. applied for trademark applications for use of the kryptonite trademark for items other than locks and handlebar grips for bikes. The Kryptonite Corp. had applied for and/or registered “Krypto” stem words in violation of the agreement and used the word “super” in ad campaigns, DC Comics said. DC Comics filed suit alleging infringement, unfair competition and dilution of the trademark, as well as state law claims that Kryptonite Corp. was using kryptonite and other words containing “krypto” to confuse consumers into believing there was a connection between its products and the Superman legend. The lock company counterclaimed for recision of its agreement with DC Comics, saying the purposes of the agreement had been “substantially frustrated.” Among other claims, it said DC Comics owns no trademark rights because it had never used the works “kryptonite” or “krypt” in connection with the sale of goods or services. Judge Owen ruled that the definition of the lock company’s products in the agreement is ambiguous. Referring to Kryptonite Corp. by its initials, he said “there are triable issues of fact regarding what constitutes ‘security device and accessories,’ and whether the Agreement only covers products KC was making in 1983.” Owen also said there were triable issues on whether the lock company has breached a prohibition against associating itself “in any manner” with DC Comics characters or comic books. He denied summary judgment on the breach of contract claim. Owen then reached the heart of the dispute. “KC has failed to establish that as a matter of law that DC Comics does not own a trademark in Kryptonite,” he said. “The Second Circuit has repeatedly held that the Lanham Act protects ‘a broad spectrum of marks, symbols, design elements and characters which the public directly associates with the plaintiff or its product.’ “Kryptonite is an ingredient of an entertainment property (Superman) … ” he said. “ Kryptonite is closely associated with Superman resulting from DC Comics’ 60 years of use of Kryptonite with Superman.” The lock company argued that there was no actual confusion between the products. “However,” Owen wrote, “DC Comics argues that KC’s own founder testified that he had been asked ‘numerous, numerous, numerous times’ whether there is an association between KC and DC Comics,” and, therefore “summary judgment is denied as to all claims, including the trademark and unfair competition claims.” The judge then granted DC Comic’s motion for summary judgment on Kryptonite Corp.’s counterclaim for recision, but he said triable issues of fact remain on whether DC Comics had violated the agreement by licensing Superman and other “indicia” for bicycle bags, scooters, tricycles, bicycle number plates and other bicycle-related items. He said there are “outstanding ambiguities” on the scope and definition of the two companies’ products. Noting that DC Comics licensees sell Kryptonite T-shirts, Owen wrote, “There is no genuine issue of material fact that DC Comics has not stopped using its kryptonite mark let alone demonstrated any intent not to resume use of the mark.” Paul Fields of Darby & Darby and Jonathan E. Moskin of White & Case represented the Kryptonite Corp. Patrick T. Perkins of Fross Zelnick Lehrman & Zissu represented DC Comics.

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