Barry Allen in the first season of The Flash took to wearing a red speed resistant uniform with a lightning bolt on the chest and sides of his head. The Flash became a symbol of hope that saved people from accidents, stopped crime, and foiled terrorist plans.
Enter the Reverse Flash. Technically, Barry saw the “man in yellow” in the past when the Reverse Flash murdered Barry’s mother. However, Barry was the only person who saw “the man in yellow” fourteen fictional years ago.
The Reverse Flash’s uniform is the same design as Barry Allen’s uniform with the red and yellow inverted. One change is the glowing red eyes.
The Reverse Flash’s public debut had police officers confused by another “speedster” in town who killed security guards and attempted to steal scientific equipment. Moreover, this “yellow blur” acted exactly the “reverse” of the Flash’s heroic nature.
Can the Flash enjoin the Reverse Flash from wearing a uniform that is the same design as the Flash’s uniform? There is case law where an alleged infringing party wore uniforms with the logos of their competitors that caused actual customer confusion. W. Wis. Water, Inc. v Quality Bevs. of Wis., Inc., 305 Wis 2d 217, 226. Could the Flash prevail in such a case?
As a preliminary matter, to bring a case for trademark infringement under Section 32 of the Lanham Act, a plaintiff must prove:
(1) That it [the plaintiff] possesses a mark;
(2) That the defendant used the mark;
(3) That the defendant’s use of the mark occurred in commerce;
(4) That the defendant used the mark in connection with the sale, offering for sale, distribution, or advertising of goods or services; and
(5) That the defendant used the mark in a manner likely to confuse consumers.
Hershey Co. v. Friends of Steve Hershey, 2014 U.S. Dist. LEXIS 97366, 6-7 (D. Md. July 17, 2014).
The Flash could prove that he possessed the mark (the uniform with design), that the Reverse Flash also used the same design on his uniform, with the colors reversed, and that there was actual confusion between the Flash and Reverse Flash. However, the challenge in prevailing is over using the mark in “commerce,” because there was no use of the mark in commerce for the sale, offering for sale, distribution, or advertising of goods and services. For this action to survive, a Court would have to find pro bono super-hero work (opposed to vigilantism) is a “service,” which is not outside of the realm of possibility.
The Flash might argue that his super-hero services are in commerce and similar to being a volunteer firefighter. There certainly is a good argument that The Flash is a Good Samaritan who volunteers his time for the public good, like a volunteer firefight. In one New York case, volunteer firefighters were able to to enjoin a school from using the firefighters acronym in the school logo. However, the volunteer firefighters had been in existence since the 1870s, with 43,000 members, an operating budget of $11,000,000, plus operating a home for retired firefighters, a firefighting museum, and sold merchandise. Matter of Fireman’s Assn. of State of NY v French Am. Sch. of N. Y., 41 AD3d 925, 925-926 [3rd Dept 2007].
While The Flash’s Scubby Gang do maintain an illegal prison and conduct police actions in violation of law, this is still a long way off from operating a Flash Museum or providing nursing home facilities for the Golden Age Flash Jay Garrick.
Barry Allen other has legal remedies he can seek to protect his Flash trademark.
The Reverse Flash is constantly moving, thus a blur. As such, the Flash might be successful in suing Reverse Flash for Dilution by Blurring or Tarnishment. The law states:
(1) Injunctive relief. Subject to the principles of equity, the owner of a famous mark that is distinctive, inherently or through acquired distinctiveness, shall be entitled to an injunction against another person who, at any time after the owner’s mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark, regardless of the presence or absence of actual or likely confusion, of competition, or of actual economic injury.
15 USCS § 1125(c)(1).
The fact the Reverse Flash murdered police officers and committed other crimes would unquestionably tarnish the Flash’s mark. The issue again would turn on “commerce.”
Depending on what state Central City is located in, there could be a cause of action for the Flash’s right to publicity. In states such as California, a plaintiff can bring a right to publicity claim if the plaintiff can show that his or her name or likeness was appropriated without consent. Nurmi v. Peterson, 1989 U.S. Dist. LEXIS 9765. While use in commerce is one possible cause of action, California law states the following: “damages may be recovered from any person who knowingly uses another’s name, voice, signature, photograph or likeness in any manner or for commercial purposes, without permission.” California Civil Code section 3344(a), emphases added.
The Reverse Flash has used the Flash’s likeness in having the same uniform with the colors changed in a manner inconsistent with how the Flash’s public image as a hero, irregardless of whether the Flash’s likeness was used in commerce. Moreover, the biggest infringement is also in plain sight with the villain’s name: Reverse Flash.
Time travel makes causality paradoxes that echo in proximate cause and who was first to wear the uniform. Given the fact Reverse Flash is from the future, whose uniform is based of the Flash’s uniform, the fact the Reverse Flash appeared in the past does not mean Reverse Flash was the first to wear the uniform design by killing Barry’s mother fourteen years ago.
There is no question the Reverse Flash has similar powers to the Flash, wears a similar uniform to the Flash, and whose high speed appearance could be confused with the Flash. As such, Barry Allen/the Flash could bring a civil action for infringement with a high likelihood of success on the merits.
