How Disney Qualified for Design Patent for Marvel's Captain America Shield

Patenting an object out of the Marvel comic books makes a lot of sense. Think of George Lucas of Star Wars fame. When he negotiated his contract with 20th Century Fox studios to film Star Wars, he took a pay cut in exchange for all merchandising rights associated with the movie. Fox readily agreed.

Today, Star Wars toy licensing reportedly has raked in $12 billion since 1977, though movie merchandising is radically different today than the business environment that existed when George Lucas negotiated his merchandising contract. For example, before the first Star Wars script was ever started, merchandising for Fox's movie Doctor Doolittle had been a spectacular failure, with a reported $200 million worth of unsold merchandise. Today, however, merchandising brings in big money, and studios such as Disney want to cash in on the potential profits, hence a design patent on Captain America's shield.

Note that while the rear of the Captain America shield has rarely been shown in comic books or movies, the design patent shows the back of the shield in significant detail. As evidenced by the list of inventors included with the patent application filing,

Disney had a team of designers who worked on the details of the shield to create what is illustrated in the patent. According to LinkedIn, the shield's inventors include two mechanical engineers, two vice presidents, an art director, a design supervisor and a research and development (R&D) manager.

Design patents are sometimes frowned upon because the protection they afford may be narrow. But for a movie prop that may eventually become a hit toy, seeking patent protection makes sense.

What Other Forms of IP Could Protect Cap's Shield? 

Copyright protection for the artistic aspects of three-dimensional objects has traditionally been very difficult to obtain. But last year's U.S. Supreme Court decision Star Athletica LLC v. Varsity Brands Inc., 137 S.Ct. 1002 (2017), created a significant shift in that field of the law. Today, as a result of that opinion, the U.S. Copyright Office will grant a copyright registration for an artistic feature applied on or incorporated into a useful article if the feature can be perceived separate from the useful article and would be protectable, as stated in Star Athletica, “if it were imagined separately from the useful article into which it is incorporated.” (In fact, earlier in 2018, I apparently obtained the first copyright registration that was affected by the Star Athletica opinion.) So copyright protection is now available for some three-dimensional objects that previously were not protectable under the copyright law.

Using the trademark law to protect Captain America's shield might not be easy. To succeed, a trademark registration applicant needs to show that the design of the shield has acquired distinctiveness as the result of acquiring secondary meaning. In other words, the applicant needs to prove to the USPTO that consumers have come to recognize Captain America's shield as being associated with Disney. While this may be possible to do, such proof may require the use of survey evidence, which is very expensive to obtain.

If an entertainment company you represent creates a product with ornamental features, it may be possible to protect that product with design patent protection. In the words of the USPTO, the subject matter of a design patent application “may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.” Compared to utility patent applications, design patent applications are significantly cheaper to prepare and file, and they typically lack the protracted modification and negotiation that utility patent applications require. The USPTO allows applicants to file design patent applications up to one year after disclosure (including first sale and public use), but this grace period does not exist in most foreign countries. Thus, if a need for international protection is a possibility then the services of a licensed patent practitioner should be sought before disclosure.

Perhaps one day the Disney Co. will indeed invent a fully working Captain America shield. If, at that time, I were Disney's attorney, I might recommend that Disney file a utility patent application to protect the invention (that is, unless Disney decides to keep its inner workings as a trade secret). For now, a design patent was a good option for Disney to pursue.

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Lawrence E. Ashery is a partner in the Philadelphia office of Caesar Rivise. He focuses his practice on all aspects of intellectual property law. He can be reached at [email protected].