Comic book characters are supposed to bring fun and happiness. Sometimes, they also bring with them patent lawsuits that threaten to overturn the validity of a half-century old patent ruling. This is the scenario with a certain Spider Man toy that is at the center of a patent suit to be heard in the US Supreme Court.
At risk is a 50 year old court precedent that may be in danger if this case takes a different turn than normal and which may have to be then changed. Patent attorneys say that overturning a 50 year old precedent is not going to be child’s play (pun intended) as the precedent deals with the issue of royalty payments after the expiry of a patent.
A Simple Toy, a Gargantuan Lawsuit
The toy which is at the middle of all this drama is surprisingly pretty innocuous. It uses foam strings to create the webs that Spider Man―the web shooting friendly neighborhood superhero is famous for. The toy was originally invented by Stephen Kimble, a resident of Tucson, Arizona. Marvel Entertainment used his design in the ‘Web Blaster’ toys and a deal was agreed upon according to which Walt Disney Co. which owns Marvel agreed to pay millions of dollars in royalties to Kimble.
In July of this year, a lower court had ruled that since the patent on the toy expired, the company was not entitled to pay Kimble any more money as royalties. Marvel had already stopped the payments when the patent duration was up. This was the published ruling of the 9th US Circuit Court of Appeals. In a separate unpublished ruling, the court decided to reverse a separate claim of breach of an alleged verbal agreement as claimed by Kimble and put the matter up for consideration.
Suits and Countersuits
According to Kimble’s patent attorneys, Kimble was waiting on a patent when he shopped his web-shooter design to the Marvel headquarters. The company had agreed to compensate the toy maker if his ideas were used in any of their products which it ultimately was. Kimble had sued the company in 1997 for alleged patent infringement and breach of the verbal contract.
He did lose the infringement claim but the jury ruled that Marvel was in fault for having violated the said agreement between the toy maker and the company and a deal was then struck between the two in 2001. Marvel apparently bought the rights to the toy design for an estimated $515,000 and agreed to pay Kimble 3% of any money made from product sales. Marvel finally paid Kimble about $6 million in royalties.
50 Year Old Precedent Now in Danger
The patent disagreements however did not end there. In 2006, Marvel gave Hasbro the rights to create certain toys and Kimble was back in court suing for his rights. Being a millionaire is not good enough. The patent, which expired in 2010, meant that Kimble was not entitled to any more royalties. Does Kimble think he is going to get paid forever?
The court precedent relating to this ruling is the 1964 Supreme Court ruling in the case Brulotte v. Thys Co. which is now under discussion. It remains to be seen if this superhero war will lead to an overturning if that old precedent or will all remain as it is in Marvel’s world without any more royalties to be paid for Spidey’s silky webs.