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Even superheroes face trade mark problems: that’s the takeaway from episode five of the new TV series She-Hulk: Attorney at Law (available in the UK on Disney+).

 

The series, created by Jessica Gao based on the Marvel Comics character and starring Tatiana Maslany, tells the story of Jennifer Walters, a Los Angeles lawyer who can turn into the superhero She-Hulk.

 

Over the course of the series, Jennifer/She-Hulk (head of the “superhuman law division” at law firm Goodman, Lieber, Kurtzburg, & Holliway) battles with and against rival superheroes, both in the courtroom and with her superpowers. One of them is Titania (played by Jameela Jamil).

 

In episode five, written by Dana Schwartz, She-Hulk discovers that Titania has registered a trade mark for SHEHULK and has successfully launched a range of beauty and wellness products. Titania has also sent a cease-and-desist letter to Jennifer’s home.

 

As She-Hulk and her trade mark lawyer soon realise, though, they have a problem: She-Hulk has no prior trade mark registration, it is not her real name and she was never even that keen on it (she blames “some random guy on the news” for creating the pseudonym).

 

The episode therefore sees them try to demonstrate that she was using the She-Hulk name professionally before Titania launched her brand, leading to some uncomfortable witness testimony in a tense courtroom showdown (no spoilers!).

 

A common problem

 

She-Hulk: Attorney at Law is a story that features sorcery, space travel and superheroes, so we probably should not take it too seriously. But episode five does identify a common problem that many individuals and businesses face – the discovery that someone else is using “their” brand. And it also identifies some of the challenges that arise when you try to address that problem.

 

The issue is particularly common in industries such as fashion and cosmetics, where so much goodwill is attached to the name of a designer or a celebrity endorser, but we also see it in relation to shops, restaurants, sport and many other industries. Problems often arise when a designer licenses or sells the use of their name to another party, and then loses control over it – as happened to the designer of Princess Diana’s wedding dress, Elizabeth Emanuel (Elizabeth Florence Emanuel v Continental Shelf 128 Ltd).

 

In the United States, where the series first aired, there has already been plenty of commentary on this episode covering everything from choosing superhero names to legal analysis of the She-Hulk/Titania dispute. The battle between the two has even extended to social media.

 

So perhaps it is worth asking: how would the dispute play out in the UK and EU?

What would happen in the UK?

 

If Titania applied to register SHEHULK at the UK IPO or EUIPO, the application would be examined. Assuming the examiner did not reject the application on absolute grounds, it would then be published.

 

At this point, hopefully, She-Hulk’s trade mark monitoring programme would kick into action and she would file an opposition. If not regularly checking published trade mark applications, however, she risks missing the window to file an opposition – in which case Titania’s application would proceed to registration.

 

Even if She-Hulk does file an opposition, there is no guarantee of success. She-Hulk apparently has no earlier registered rights that would help her. She could argue that Titania’s application should be refused under Section 5(4) of the UK Trade Marks Act on the basis of unregistered trade mark and/or copyright but She-Hulk’s admitted lack of use in the course of trade would hamper any passing-off claim, and copyright would also be tough to substantiate.

 

Finally, She-Hulk could argue that the application should not be registered as it was filed in bad faith. This might be a more promising line of attack, if She-Hulk can show that Titania knew about her use of the name and sought to capitalise on it. However, bad faith is a fragile foundation on which to build a case, as it is highly fact-dependent and the law is evolving: the Sky v SkyKick case, which concerns bad faith, is currently pending before the UK Supreme Court.

 

There is, therefore, a reasonable likelihood that Titania’s application to register SHEHULK would be successful.

 

She-Hulk’s defence

 

In the TV series, Titania has not only registered the SHEHULK trade mark, but launched and successfully marketed a wide range of products using the brand. (This seems like quick work, but then again she is a supervillain.)

 

She has also sent She-Hulk a cease-and-desist letter, presumably on the basis that the latter’s business in legal services (or superhero services) infringes the registered trade mark. In response, She-Hulk could try arguing the own-name defence (Section 11(2)(a) of the Act). But as she herself acknowledged, She-Hulk is not her real name, and the own-name defence is generally interpreted strictly in the UK (see the Hotel Cipriani Srl & Ors v Cipriani (Grosvenor Street) Ltd & Ors case) so that may be another dead end.

 

In retaliation, She-Hulk could sue Titania for passing off. This strategy was successful for Rihanna in the Fenty v Arcadia case, in which the singer successfully brought an action against TopShop over t-shirts bearing her image. But that case was different in several respects: TopShop was using Rihanna’s image, the singer had a long record of endorsements, and the court therefore found there was misrepresentation. She-Hulk’s case would likely be much tougher to argue.

 

Overall, unfortunately She-Hulk’s case looks weak, unless she can prove use of the name and goodwill associated with it: as so often in trade mark cases, it will depend on the evidence and how it is presented. Of course (as one character wisely points out in the TV programme) She-Hulk could have avoided the problem by registering the She-Hulk name first. As an attorney, she would have been well advised to apply for a registration for legal services in Class 45 as soon as she became She-Hulk. She would then have a period of five years in which to start using the name in trade.

 

IP and popular culture

 

It’s easy to dismiss the portrayal of complex legal arguments in the media, but She-Hulk: Attorney at Law highlights some real and very relevant trade mark issues in an entertaining and accessible way. The inclusion of this storyline also demonstrates the extent to which IP awareness has penetrated popular culture (as can also be seen in the recent Ridley Scott movie House of Gucci starring Lady Gaga and Adam Driver).

 

In fact, it’s not even the only episode in this series that refers to IP: episode four hinges on an allegation of copyright infringement, unfair competition and gross negligence in a magician’s act. We look forward to seeing what interesting legal issues arise in future episodes!

 

Image credit: Getty Images

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