United States District Court, S.D. New York
September 16, 2004.
DC COMICS, Plaintiff,
KRYPTONITE CORPORATION, Defendant.
The opinion of the court was delivered by: RICHARD OWEN, Senior District Judge
OPINION AND ORDER
DC Comics, the publisher of comic books and magazines featuring
Superman, filed the instant action in 2000 against Kryptonite
Corporation ("KC"), the manufacturer of bicycle locks and
accessories, alleging breach of contract, trademark infringement,
unfair competition, trademark dilution, and related state law
claims. KC, in turn, alleges as counter-claims: rescission, a
declaration that DC Comics has no trademark rights in kryptonite,
breach of contract, cancellation of DC Comics' trademark
registration, and enjoining DC Comics from using and registering
kryptonite for certain uses.
KC moves this Court for summary judgment on all the claims in
DC Comics' complaint. DC Comics cross-moves for partial summary
judgment on KC's counter-claims.
For the reasons set forth below, KC's motion for summary
judgment is denied and DC Comics' motion for partial summary
judgment is granted in part and denied in part. Background
"Bullets! . . . Fire! . . . Bombs! . . . Acid! I'm immune to
them all! But kryptonite is my Achilles heel . . . the only
substance in the world that can harm me!" Levitz Decl. ¶ 30.
The story of Superman is well known: While still an infant,
Superman was sent by his parents to Earth aboard a space ship
from his home planet Krypton. On Earth, Superman is secretly
possessed of extraordinary physical abilities, including
superhuman strength and speed, x-ray vision, the ability to fly,
and the ability to withstand bullets. Superman's sole weakness is
his vulnerability to several forms of Kryptonite, an element from
Superman's home planet. The most well known form of Kryptonite is
Green Kryptonite, which weakens and can kill Superman. DC Comics
has also featured a variety of other forms of Kryptonite,
including Gold Kryptonite, Blue Kryptonite, and Anti-Kryptonite.
Compl. ¶ 9-22.
DC Comics invented Kryptonite in connection with the radio
program The Adventures of Superman in 1943 and Kryptonite first
appeared in movies in 1948 and in comic books in 1949. Writers at
DC Comics have referred to Kryptonite as "the one substance that
. . . can overpower the Man of Steel," "Superman's one fatal
flaw," and "the ghastly green substance" that is "the only thing
the Man of Steel has to fear in the entire universe." Levitz
Decl. ¶ 30.
Kryptonite Corporation ("KC") is a manufacturer of bicycle and
motorcycle locks and accessories. KC's predecessor, KBL
Corporation (which was short for Kryptonite Bike Lock,
hereinafter "KBL") began using the "kryptonite" trademark on a
limited basis in 1972 in connection with its security devices (principally bike
locks) without the permission of DC Comics. Compl. ¶ 29.
DC Comics first discovered KBL was using the "kryptonite"
trademark in 1976 when KBL applied to register "kryptonite bike
locks" with the U.S. Patent and Trademark Office. Thereafter, DC
Comics and KBL engaged in a series of correspondence concerning
use of the "kryptonite" mark. This correspondence concluded with
the execution of an agreement in early 1983 ("the Agreement").
The Agreement limited KBL's use (and by extension KC's use) to
the following three marks: "Kryptonite," "Kryptonite and Design,"
and "Krypto Grip" (collectively "KBL's Marks"). The Agreement
limited the use of the KBL Marks to the following products: "(1)
security devices and accessories therefore, without limitation,
such as mechanical and electronic locking means and accessories
therefore, and (2) accessories primarily for two wheeled
vehicles, such as handle bar grips ("KBL's products")." See
Agreement, at 1.
KBL also agreed it would not expand its use of the KBL Marks to
products other than the KBL Products and that KBL would "neither
use nor apply for the registration of any Krypt formative marks
other than KBL's Marks for KBL's Products." Id. at 2.
In addition, the parties agreed that KBL would not associate
KBL Products with the "Superman, Superboy, Supergirl, Superkids,
Super Jr., and Krytpo the Ungderdog character, word mark and
device mark . . . and shall not use either the word `super' or a
super formative word in the advertising, promotion, packaging or
labeling of the KBL Products." Id. at 2. DC Comics, in turn, agreed (1) it would not use DC's
Marks*fn1 on KBL's Products and (2) it would not use DC's
Marks in any manner to indicate that DC's Products*fn2 are
sponsored by or affiliated with KBL or in any manner associate
its products with KBL's Products. Id.
DC Comics contends that KC breached the Agreement when, in the
late 1990's, KC filed trademark applications indicating an
intention to use the "Kryptonite" trademark with products that
were well beyond locks and handle bar grips. For example,
according to DC Comics, KC had applied to use KBL's Marks in
connection with items including tote bags, briefcases, helmets,
pants, jerseys, polishing agents, and computer hardware and
software. Compl. ¶ 37.
Additionally, DC argues that KC is using and has applied for
and/or registered "Krypto" stem words in violation of the
Agreement, including "Kryptonium," "Kryptoflex," "Kryptovault,"
and "Kryptokoil." Compl. ¶ 36.
Finally, DC Comics contends that KC used the word "super" in
"advertising, promotion, packaging or labeling of KBL Products"
which is expressly prohibited by the Agreement.
DC Comics also brings claims for infringement, unfair
competition and dilution of DC Comics' kryptonite trademark under
the Lanham Act, and for related state law claims based upon KC's
impermissible use of kryptonite and of other confusingly similar
krypto-formative marks and conduct designed to suggest a
connection between KC's goods and the Superman legend and to
unfairly capitalize on them. KC filed counter-claims. KC's first counterclaim is for
rescission of the Agreement based, among other things, on their
claim that the purposes of the Agreement have been "substantially
frustrated." KC's second counterclaim is for a declaration that
DC Comics owns no trademark rights in kryptonite on the grounds
that DC Comics has not used the words kryptonite or krypt in
connection with the sale of goods or services in commerce. KC's
third counterclaim is that DC Comics breached the Agreement by,
among other things, licensing the use of elements from the
Superman Story for use on security devices and accessories for
two-wheeled vehicles. KC's fourth counterclaim is for
cancellation of DC Comics's trademark registrations of Kryptonite
based on alleged non-use. KC's fifth counterclaim is to enjoin DC
Comics from using and registering the Kryptonite mark in
connection with two-wheeled vehicles.
Summary Judgment Standard
Summary judgment is proper under Fed.R.Civ.P. Rule 56(c) where
there are no genuine issues of material fact in dispute and the
moving party is entitled to judgment as a matter of law. Celotex
Corp. v. Catrett, 477 U.S. 317 (1986). The party moving for
summary judgment meets its burden by establishing an absence of
evidence to support the opposing party's allegations. Id. at
325. The burden then shifts to the non-moving party to "set forth
specific facts showing that there is a genuine issue for trial."
In contract cases, "where contract language is ambiguous, the
differing interpretations of the contract present a triable issue
of fact" and thus summary judgment is not appropriate.
Consolidated Edison, Inc. v. Northeast Utilities,
249 F.Supp. 2d 387, 411 (S.D.N.Y.,2003) (citations omitted). Contract
language is ambiguous if it is "`capable of more than one meaning when viewed objectively by a
reasonably intelligent person who has examined the context of the
entire integrated agreement. . . .'" Sayers v. Rochester
Telephone Corp. Supplemental Management Pension Plan,
7 F.3d 1091, 1095 (2d Cir. 1993) (citations omitted).
"[C]ontract language is not ambiguous if it has a definite and
precise meaning, unattended by danger of misconception in the
purport of the [contract] itself, and concerning which there is
no reasonable basis for a difference of opinion." Hunt Ltd. v.
Lifschultz Fast Freight, Inc., 889 F.2d 1274, 1277 (2d Cir.
I. Kryptonite Corporation's Motion for Summary Judgment
A. Breach of Contract
KC has moved for summary judgment on the breach of contract
claim arguing that there is an absence of evidence to support the
DC Comics' allegations of a breach of contract.
1. Definition of KBL Products
KC first argues that the definition of KBL's Products in the
Agreement is unambiguous:
(1) security devices and accessories therefore,
without limitation, such as mechanical and electronic
locking means and accessories therefore, and
(2) accessories primarily for two wheeled vehicles
such as handle bar grips.
KC argues that the plain meaning of this language is that KC
can use its marks on any type of security device and accessory
for two wheeled vehicles in all channels of trade without
regard to the type of security devices and accessories it was
manufacturing or selling in 1983. This interpretation, KC argues,
is bolstered by the inclusion of the broad and expansive language
"without limitation" and the absence of any limiting terms. KC also argues that the meaning of the terms "security device"
and "accessory" are also unambiguous and should be afforded their
usual meaning. They argue it is clear that the goods set forth in
KC's trademark applications and registrations fit squarely
within such meanings and do not breach the agreement.
DC Comics, on the other hand, argues that KC's reading ignores
the plain language of the Agreement that expressly limited KC to
those products with which it had used or registered the mark in
1983. DC Comics also argues that the only plausible reading of
the "without limitation" language is that that phrase modifies
the language that comes after "such as" and clarifies that the
specific examples of "security devices" listed were not intended
to be the entire list of permissible devices. DC Comics also
argues that the term "security device" is ambiguous and that KC's
attempt to create an unambiguous and "plain" meaning for
"security device" by combining dictionary definitions of the
words "security" and "device" further proves that the term is
I find that the definition of KBL Products in the Agreement is
ambiguous and that 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.
2. Associating with Superman and use of the word Super.
Next, KC argues that it did not breach the following provision
of the Agreement:
KBL shall not in any manner indicate or suggest
that KBL's Products are or were sponsored by or
affiliated with DC, or in any manner associate its
products with DC's Products,*fn3 or with DC's
Marks,*fn4 . . . in particular and without
limitations KBL shall not associate with the Superman, Superboy, Supergirl, Superkids, Super Jr.,
and Krypto the Underdog character, word mark and
device mark . . . and shall not use either the word
`super' or a super formative word in the advertising,
promotion, packaging or labeling of the KBL Products.
Ag. ¶ 2. (emphasis added)
DC Comics, however, presents evidence of the following actions
which they claim constitutes a breach by defendant under the
Agreement not to associate its products "in any manner" with
"DC's Products" and Superman:
The Glowing Green Brand Identity; comic book-style
advertising; dissemination of press articles that
associate Superman with KC; dissemination of ads and
cartoons referring to Superman; use of phrases
associated with Superman, such as "Men of Steel" and
"Up, Up and Away," in promoting its products on its
website; dissemination of a photo of KC's founder
dressed in a Superman costume; adoption of "Super
Villains" and masked cartoon characters reminiscent
of DC Comics' comic book characters on the packaging
and promotion of a line of products; instructing the
designer of KC's web-site to "impart" to KC's site a
"comic book style"; a newspaper article concerning KC
that began with the phrase "And you thought only
Superman was allergic to Kryptonite" which also
included KC's address and telephone number.
Pl. Opp. Brief, 11.
I find triable issues of material fact regarding whether KC has
breached the Agreement's prohibition against KC associating
itself with DC Comics' characters or comic books "in any manner"
thus making the breach of contract claim inappropriate for
In addition, as explained in section II-C in more detail, KC's
use of the word "super" is a clear breach which would entitle DC
Comics to summary judgment on its breach of contract claim.
Accordingly, summary judgment is denied as to the breach of
contract claim. KC raises statute of limitations, equitable estoppel, and
waiver arguments, all of which the Court rejects.
B. Trademark Infringement and Unfair Competition
KC next argues that it is entitled to summary judgment on DC
Comics' Lanham Act claims for trademark infringement and unfair
competition. The Lanham Act prohibits the use of:
any reproduction, counterfeit, copy or colorable
imitation of a registered mark in connection with the
sale, offering for sale, distribution, or advertising
of any goods or services on or in connection with
which such use is likely to cause confusion, or to
cause mistake, or to deceive.
15 U.S.C. § 1114(1).
In addition, the Lanham Act also protects both registered and
unregistered marks against the use of:
any word, term, name, symbol, or device, or any
combination thereof, or any false designation of
origin, false or misleading description of fact, or
false or misleading representation of fact, which
. . . is likely to cause confusion, or to cause
mistake, or to deceive as to the affiliation,
connection, or association of such person with
another person, or as to the origin, sponsorship, or
approval of his or her goods, services, or commercial
activities by another person . . .
15 U.S.C. § 1125(a).
For both Lanham Act claims, DC Comics must demonstrate (1) that
it has a valid mark that is entitled to protection under the Act
and (2) that there exits a likelihood of confusion that
consumers will be misled or confused as to the source of the
goods in question. Yurman Design, Inc. v. PAJ, Inc.
262 F.3d 101 (2d Cir. 2001) at 115.
1. Ownership of valid mark KC argues that DC Comics' use of Kryptonite does not qualify
for protection under the Lanham Act because DC Comics has not
used Kryptonite as a brand name or trademark to indicate the
source of its goods.
KC argues that DC Comics does not own the trademark in
Kryptonite because DC Comics has never used the mark in
commerce the only evidence of use is as a story element. KC
argues that Kryptonite is simply a fictitious substance that
appears in the Superman story for narrative not source
identifying purposes. According to KC, Kryptonite is one small
part of the overall content of a comic book story used in the
story to describe a fictitious substance and enhance the story
not to identify or designate the source of a real product or
service. KC contends that the word "kryptonite" (except as a name
for KC's locks and other products) has no commercial meaning
identifying the source of goods or services.
DC Comics, on the other hand, argues that it has made
significant use of Kryptonite as a trademark on products other
than comic products and motion picture products. For example, DC
Comics argues it has used Kryptonite with merchandise such as
toys, apparel, books, calendars, games, greeting cards, novelty
items, and video games. In addition, DC Comics argues that it
owns two trademark registrations for the use of Kryptonite on
t-shirts which are incontestable (Number 1,231,983 registered
3/22/1983, and number 1,239,506 registered 5/24/1983).
KC has failed to establish that as a matter of law that DC
Comics does not own a trademark in Kryptonite. 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."
Warner Bros, Inc. v. Gay Toys, Inc., 658 F.2d 76, 78 (2d Cir.
1981). It remains undisputed law of this Circuit that:
where the product sold by plaintiff is
`entertainment' in one form or another, then not only
the advertising of the product but also an ingredient
of the product itself can amount to a trademark
protectable under § 43(a) because the ingredient
can come to symbolize the plaintiff or its product in
the public mind.
DC Comics, Inc. v. Filmation Associates, 486 F.Supp. 1273, 1277
(S.D.N.Y. 1980) (emphasis added).
Protectable "ingredients" recognized in this circuit include
the names and nicknames of entertainment characters ("bionic" man
and woman), as well as their physical appearances and costumes,
but not their physical abilities or personality traits. Id.
See also, Warner Bros. v. Gay Toys, 658 F.2d 76, 78 (2d
Cir. 1981); Universal City Studios, Inc. v. T-Shirt Gallery,
Ltd., 634 F. Supp. 1468, 1476, n. 9 (S.D.N.Y. 1986) ("[i]t is
not disputed that section 43(a)'s protections `extend to the
specific ingredients of a successful T.V. series'").
In DC Comics, Inc. v. Powers, which is directly on point, an
infringer attempted to publish a magazine under name "The Daily
Planet" the same name as the fictitious newspaper that employs
Superman's alter ego, Clark Kent. There was nothing in the record
that showed that DC Comics had used "The Daily Planet" on a
product in the traditional trademark sense. However, the Court
found that, because over time there had grown such a close
association between the "The Daily Planet" and Superman, that DC
Comics owned protectable rights in "The Daily Planet."
465 F. Supp. 843, 847 (S.D.N.Y. 1978). The factual record here demonstrates that DC Comics does own a
valid trademark in Kryptonite. Kryptonite is an ingredient of an
entertainment property (Superman) and is a protectable symbol
under the Lanham Act. Kryptonite is closely associated with
Superman resulting from DC Comics' 60 years of use of Kryptonite
Here, I find that Kryptonite is an element associated with
Superman entertainment products and it is thus entitled to
protection. DC Comics' predecessor first introduced Kryptonite
into the Superman story as part of the Superman radio program in
1943. Since that time, Kryptonite has been a staple of the
Superman character and story. For example, several recurring
characters created by DC Comics are based entirely around
Kryptonite: the Kryptonite Kid, the Kryptonite Man, and Metallo
(a villain powered by Kryptonite). Kryptonite has regularly
appeared on licensed consumer merchandise over the years and the
Kryptonite mark or the appearance of Kryptonite have been used in
connection with consumer products such as toys, apparel, books,
calendars, greeting cards, novelty items, and video games.
As a result of broad dissemination throughout all media, the
fictional element Kryptonite, including its graphic depiction,
has come to be recognized as a powerful symbol, and is
immediately recognized or associated with the character Superman.
As such, Kryptonite also serves to identify the entertainment and
other goods and services created, distributed and/or licensed by
or on behalf of DC Comics. Kryptonite, its green glowing
appearance, and other related indicia thus represent trademarks
of DC Comics.
2. Likelihood of Confusion
As to the second element of trademark infringement, KC argues
DC Comics cannot prove there is a likelihood of confusion as to
the origin of the goods at the consumer level between DC Comics' mark and KC's mark. In
analyzing the likelihood of confusion, this Court must determine
whether numerous ordinary purchasers are "likely to be misled or
confused as to the source of the product in question because of
the entrance in the marketplace of defendant's mark." Gruner
Jahr USA Publ'g v. Merideth Corp., 991 F.2d 1072, 1077 (2d Cir.
The Second Circuit has set forth a set of eight factors for
courts to consider in determining whether a likelihood of
confusion exists: (1) the strength of DC Comics' mark; (2) the
similarity of the DC Comics' mark; (3) the competitive proximity
of the products; (4) the likelihood that the DC Comics will
"bridge the gap" by entering KC's market; (5) actual confusion
between the products; (6) good faith on KC's part; (7) the
quality of KC's product; and (8) sophistication of buyers. See
Polaroid Corp. v. Poloroid Elec. Corp., 287 F.2d 492, 495 (2d
Cir. 1961). Summary judgment in a trademark action is appropriate
where the undisputed evidence would lead to only one conclusion
as to whether confusion is likely. Cadbury Beverages, Inc v.
Cott Corporation, 73 F.3d 474, 478 (2d Cir. 1996).
Summary judgment is not appropriate here because there are a
number of triable issues of fact regarding likelihood of
confusion. For example, KC argues that there is no actual
confusion between the products. However, DC Comics argues that
KC's own founder testified that he has been asked "numerous,
numerous, numerous times" whether there is an association between
KC and DC Comics.
Accordingly, KC's motion for summary judgment is denied as to
all claims, including the trademark and unfair competition
claims. II. DC Comics' Cross-Motion for Partial Summary Judgment
DC Comics has cross moved for summary judgment on the following
counterclaims: 1) rescission of the Agreement; 2) a declaration
that D.C. Comics owns no trademark rights in Kryptonite; 3)
breach of contract; 4) cancellation of DC Comics' trademark
registrations for Kryptonite; and 5) enjoining DC Comics from
using and registering the Kryptonite mark in connection with two
wheeled vehicles. DC Comics also requested judgment as a matter
of law that KC has breached the Agreement by using (a)
"Krypt-formative" marks other than Kryptonite and Krypto Grip and
(b) the term "Super."
A. Rescission of the Agreement
KC's first counterclaim for rescission is based in part on DC
Comics' (1) alleged authorization of third parties to use
Krypt-formative marks; (2) alleged authorization of one of KC's
competitors to use Kryptonite; (3) alleged licensing of elements
from the Superman story for use on security devices and
accessories for two-wheeled vehicles; and (4) alleged abandonment
of its trademark rights in Kryptonite.
In order to obtain rescission of a "freely bargained" trademark
settlement agreement such as the one at issue in this case, "a
party must show that the public interest will be significantly
injured if the contract is allowed to stand" Times Mirror
Magazine, Inc. v. Field & Stream Licenses Company, 294 F.3d 383,
396 (2d Cir. 2002). In Times Mirror Magazine, the Court of
Appeals went on to hold that "[s]imple fairness requires holding
a party to its contract unless adhering to the contract will
damage the public and not just a contracting party." Id. The
Court defines this damage to the public interest as a threat to
the "health or safety" of the public by virtue of confusion."
Id. KC cannot show any public injury and accordingly, the Court
grants summary judgment dismissing the first counter-claim
regarding rescission of the Agreement.
B. A declaration that D.C. Comics owns no trademark rights
KC's second counterclaim seeks a declaration that DC Comics
"enjoys no trademark rights in and to the name `Kryptonite.'"
DC Comics argues that it does own trademark rights in
Kryptonite in two ways: 1) trademark rights flow from
kryptonite's appearance in Superman entertainment products; and
2) DC Comics owns trademark rights in consumer products that
have included the Kryptonite trademark including toys, apparel,
books, calendars, games, greeting cards, novelty items, and video
The Court finds that DC Comics does own trademark rights in
Kryptonite. See Section B(1) supra.
Accordingly, I grant summary judgment dismissing the second
C. Breach of Contract
KC's third counterclaim alleges that DC Comics has breached ¶ 2
of the Agreement which provides:
DC shall not in any manner use or refer to DC's Marks
in any manner to falsely indicate or suggest that
DC's Products are or were sponsored or affiliated
with KBL or in any manner associate DC's Products
with KBL or with KBL's Products or with any part
thereof or authorize or permit any of its licensees
to do any of the foregoing. ¶ 2.
DC agrees not to use DC's Marks on KBL's Products. ¶
KC alleges that DC Comics has breached the Agreement by
entering into licensing agreements with third parties. However,
this is without merit for two reasons. First, the agreement
between DC Comics and a third party company called Kryptonics was in 1982 before the 1983 Agreement at issue in this case
was even entered into. Second, the agreement between DC Comics
and a third party company called PTV was not a license, it was
a settlement agreement. Therefore, the above provision (which
deals with licensees) does not apply.
However, I do find triable issues of fact regarding KC's claim
that DC Comics has violated the Agreement by associating DC's
Products with KBL's Products. Under the Agreement, DC Comics may
not associate DC' Products with KBL or KBL's Products. DC Comics'
Products are defined as comic magazines, comic books, motion
pictures, and a general line of licensed merchandise. KBL's
Products are defined as security devices and accessories and
accessories for two-wheeled vehicles.
DC Comics itself admits that it licensed Superman and related
indicia for various products including: bicycle bags, bicycles,
scooters, tricycles, bicycle number plates, bicycle decals,
bicycle directional signals, bicycle handlebar grips, bicycle
streamers, training wheels, and bicycle water bottles. See
Declaration of Paul Levitz, ¶ 16.
Here, there are outstanding ambiguities regarding the scope and
definition of DC's Products and KBL's Products and whether DC
Comics' admitted conduct violates the Agreement. Accordingly,
summary judgment to defendant is denied.
D. Cancellation of DC's trademark registrations for
KC's first and fourth counter-claims allege that DC Comics has
abandoned its rights in the Kryptonite trademark.
In order to establish its claim that DC Comics has abandoned
its rights in the Kryptonite trademark, KC is required to
demonstrate (1) non-use by DC Comics and that (2) an intent not
to resume use. Columbia Pictures Industries, Inc. v. Screen Gems
Film Co., Inc., 2001 WL 1254838 at *5 (S.D.N.Y. October 18, 2001)
(finding that Screen Gems mark was not abandoned based upon
inclusion of mark on marketing materials). When considering
whether a mark has been abandoned, the court must consider the
trademark owner's business to determine what constitutes use of
the mark. Stetson v. Howard D. Wolf & Assocs., 955 F.2d 847,
851 (2d Cir. 1992).
It is undisputed that DC Comics' predecessor first introduced
Kryptonite into the Superman story as part of the Superman radio
program in 1943. Since that time, Kryptonite has been regularly
featured in DC Comics' comic books, motion pictures, and
television programs. Kryptonite has regularly appeared on
licensed consumer merchandise over the years and the Kryptonite
mark or the appearance of Kryptonite have been used in connection
with consumer products such as toys, apparel, books, calendars,
games, greeting cards, novelty items, and video games.
KC argues that these examples of Kryptonite products do not
constitute "trademark use" protectable under the Lanham Act. KC
argues that DC Comics uses the word Kryptonite only as a story
element or character and never as a brand name or trademark to
indicate the source of its goods. However, as stated above,
ingredients of entertainment properties constitute protectable
symbols under the Lanham Act.
Moreover, the United States Patent and Trademark Office was
fully satisfied with DC Comics' use of Kryptonite (in connection
with apparel) and issued two federal registrations to DC Comics
(one in March of 1983 and the other in May of 1983). Those
registrations are incontestable pursuant to the Lanham Act.
15 U.S.C. § 1065. As a matter of law, defendant is statutorily
precluded from challenging DC Comic's use of Kryptonite on
t-shirts as not trademark use. Park n' Fly, Inc. v. Dollar Park
and Fly, Inc., 469 U.S. 189, 196-97 (1985). The evidence is undisputed that
current DC Comics licensees sells Kryponite t-shirts. (Ex. 80 and
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. As a result, KC's first and
fourth counterclaims (to the extent based on abandonment) are
dismissed as a matter of law.
E. KC's motion to enjoin DC Comics from using and
registering the Kryptonite mark in connection with two wheeled
Defendant's fifth counterclaim requests that the Court rule
that DC Comics' current trademark application to register
Kryptonite for two-wheeled vehicles, namely, ride-on toys and toy
vehicles would violate KC's rights in Kryptonite.
The only restrictions placed upon DC Comics' use of the
Kryponite mark in the Agreement are: (1) it will not use DC's
Marks on KBL's Products and (2) it will not use DC' Comics' Marks
in any manner to indicate that DC's Products are sponsored by or
affiliated with KBL or in any manner associate its products with
KBL's Products. See Agreement ¶ 2,3. Otherwise, the Agreement
provides to DC Comics the absolute right to use the Kryptonite
However, as explained above, I find a triable issue of fact
regarding the definition of KBL Products and DC Comics' Products.
Accordingly, I deny summary judgment to KC as to this claim. F. DC Comics' motion for Summary Judgment on Two Aspects of
KC's Breach of Contract Claim
DC Comics asks for Summary Judgment on its claim that KC
breached the contract by 1) using Krypt-formative marks (i.e.
using stem words beyond those allowed in the Agreement) and 2)
the term "Super" are in violation of the Agreement. Paragraph 1
of the Agreement prohibits KC from using "the word `SUPER' or a
SUPER formative word in the advertising, promotion, packaging or
labeling" of its products. Paragraph 4 of the Agreement further
prohibits KC from applying "for registration of any krypt
formative marks other than" Kryptonite and Krypto Grip. KC
concedes that it has used the term "Super" in violation of
Agreement. KC also concedes that has used the impermissible Krypt
formative marks in violation of the Agreement. KC's defenses to
these breaches are without merit.
Accordingly, summary judgment is granted to DC Comics as to
these portions its breach of contract claim.
Submit order on notice.