Salesman's 'superhero' branding triggers DC Comics trademark dispute

A western NSW man who dresses as a caped superhero to promote ceiling fans has found himself in a legal dispute with comic book giant DC Comics.

Dubbo Lighting Centre owner Matthew McKay created "Fanman" after becoming tired of customers walking into his store and asking whether it also sold fans.

What started with a personalised number plate grew into social media videos and a brightly wrapped car featuring the red-and-blue superhero.

Mr McKay said the character was originally intended to promote the business, but these days he mostly dresses up for fun.

"I just enjoy having kids laugh at it; I drive past schools and they yell at you on the fence," he said.

But the joke took a serious turn when Mr McKay received an email from representatives for DC Comics alleging elements of his Fanman branding infringed its trademarks.

The letter argued Fanman "adopts key features" that are "deceptively similar" to Superman, including the red, blue and yellow colour scheme, cape and boots, and a chest emblem resembling Superman's shield.

It suggested the branding could "likely mislead consumers" into believing Mr McKay's business or products were authorised, licensed or endorsed by DC Comics, and requested he remove all Fanman-related content.

"I was very shocked. I thought it was a scam," he said.

"I understand what their standpoint is in similarities, but [they're] trying to state that I am using their brands to deceive people into thinking that I am endorsed by them.

"I don't think anybody thinks I'm affiliated with the real DC comic universe."

DC Comics has been contacted for comment.

Small businesses on the radar

Mr McKay is not the only Australian small business to attract the attention of a major international brand.

Western Australian swimwear company Swim Shady successfully defended its trademark against a challenge from US rapper Eminem, while Australian fashion designer Katie Taylor this year won a long-running trademark battle with pop star Katy Perry.

University of Technology Sydney intellectual property law expert Sarah Hook said such disputes were not new, but social media had made potentially infringing material much easier to find.

"You go to any rural town and look at the names of businesses and they're quite funny and most of them would be trademark infringements," Dr Hook said.

"But now, because of social media, people are able to kind of clamp down on instances."

In western NSW, organisers of Coonamble's "Cowchella" festival recently changed its name to "Cowchilla" after being contacted by representatives of US music festival Coachella.

Dr Hook said Coachella had also pursued uses of its name online, including through hashtags about similar events or fashion, and believed artificial intelligence (AI) tools could be used to automatically search for references to major brands.

"My thought is they're probably using AI tools now to really roam the internet and find any kind of instances," she said.

"That's probably why there's going to be an uptick in a lot of these letters going out and a lot more enforcement."

Protecting an icon

Dr Hook said major companies had an incentive to pursue unauthorised uses of their trademarks to prevent their brand identity from weakening over time.

In 2013, DC Comics also took legal action against an Australian gym over the use of Superman-related branding for a workout program.

"DC Comics are quite litigious, and there's a reason why and that's because Superman is such an unbelievably important part of popular culture," she said.

"Everyone knows who Superman is … they really are at risk if they don't clamp down on unauthorised uses that they would start to see a generic type of Superman come through.

"And they might even lose some of that power they have of their brand identity, if they allow other people to start using things that look and feel like Superman."

Dr Hook said small businesses should consider potential trademark issues before investing heavily in a brand.

"The problem is that businesses will go and get advice about things like trademarks after they've already created their brand, their logos, or painted their vans," she said.

She recommended businesses search IP Australia's free trademark register for similar names and imagery early in the process.

How close is too close?

Mr McKay has engaged a lawyer to contest the allegations, with no plans yet to retire Fanman or delete the content at the centre of the dispute.

He said he understood why major companies protected their intellectual property, but questioned the decision to pursue a small regional business.

"You've got to pick your battles," he said.

"We're not in the same industry. No-one thinks I'm affiliated with them. There's no way their sales are being affected by me."

Dr Hook said operating in a completely different industry did not necessarily protect a business from a trademark dispute.

While Australian trademark law did not provide a specific parody exception, she said a court would consider how closely the branding resembled registered trademarks and whether consumers could be confused about an association between the businesses.

"It may or may not be a trademark infringement. It would depend on how close it looks to Superman's trademarks," she said.

"If he had used different colours, he probably would have been able to get away with this a bit more. The red and blue superhero imagery might be too far."