## Facts

- DC Comics published Superman stories and used the term “kryptonite” for decades as a key element of the Superman fictional universe and related merchandise.
- Kryptonite Corporation (KC) sold bicycle and motorcycle locks and accessories under the brand name “Kryptonite.”
- After DC challenged KC’s use, the parties entered an agreement allowing KC to use KRYPTONITE for specified goods (primarily locks and related items) while restricting KC from registering KRYPTONITE or “Krypt‑formative” marks for goods beyond the agreement.
- KC later filed trademark applications reflecting intent to use KRYPTONITE and related marks for goods outside the agreement’s scope.
- DC sued for breach of contract and trademark-based claims; KC counterclaimed seeking to rescind the agreement and to negate DC’s asserted trademark rights, including cancellation of DC’s registration.

## Issues

1. Whether KC was entitled to summary judgment on DC’s contract and Lanham Act claims, including on theories that DC lacked protectable rights in KRYPTONITE or that confusion/dilution could not be shown.
2. Whether DC was entitled to partial summary judgment defeating KC’s counterclaims seeking rescission, cancellation of DC’s registration, and a declaration that DC had no trademark rights in KRYPTONITE.

## Decision

- KC’s motion for summary judgment on DC’s claims was denied.
- DC’s cross-motion for partial summary judgment on KC’s counterclaims was granted in part and denied in part.
- The court held that DC had strong, protectable trademark rights in KRYPTONITE based on long-standing, consistent, and widely recognized use associated with Superman.
- The court rejected KC’s efforts, at the summary-judgment stage, to obtain a declaration that DC had no trademark rights in KRYPTONITE and to cancel DC’s registration.
- The court concluded that remaining disputes—including matters relevant to infringement and dilution—were not resolved entirely on summary judgment and required further proceedings.

## Legal Principles

- Long-term, consistent use and strong public association can support protectable trademark rights and a finding that a mark is strong.
- A term closely identified by the public with a single source may be protectable even if it originated in fictional works, and it is not necessarily generic as used for related goods and services.
- Summary judgment is inappropriate where material fact disputes remain on trademark liability questions such as likelihood of confusion and dilution.
- Contractual limitations on trademark use and registration can frame the parties’ rights and may defeat attempts to broaden use beyond agreed categories at the summary-judgment stage.

## Conclusion

The court denied KC’s bid to end the case on summary judgment and held that DC possessed strong, protectable rights in KRYPTONITE, granting DC partial summary judgment to defeat KC’s counterclaims aimed at rescinding the agreement and eliminating DC’s trademark rights and registration.


DC Comics v. Kryptonite Corp., 336 F. Supp. 2d 324 (S.D.N.Y. 2004)