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Tucson inventor’s Spider-Man toy lands in Supreme Court
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Tucson inventor’s Spider-Man toy lands in Supreme Court

  • A costumed Spider-Man character in web-shooting pose. The Supreme Court heard a case Tuesday to determine if a Tucson inventor who devised a web-shooting toy is still entitled to royalties.
    Senpai27/FlickrA costumed Spider-Man character in web-shooting pose. The Supreme Court heard a case Tuesday to determine if a Tucson inventor who devised a web-shooting toy is still entitled to royalties.
  • Tucson resident Stephen Kimble outside the Supreme Court, which considered his legal battle with Marvel Entertainment over royalties to a toy he patented.
    Andrew Romanov/Cronkite NewsTucson resident Stephen Kimble outside the Supreme Court, which considered his legal battle with Marvel Entertainment over royalties to a toy he patented.
  • Drawings from Tucson inventor Stephen Kimble’s 1991 patent for a “toy web-shooting glove,” which was later bought by Marvel Enterprises.
    U.S. Patent and Trademark OfficeDrawings from Tucson inventor Stephen Kimble’s 1991 patent for a “toy web-shooting glove,” which was later bought by Marvel Enterprises.

WASHINGTON – More than 20 years ago, Tucson resident Stephen Kimble was spending some quality time with his son, reading comic books and looking to “make something cool.”

Out of that came a Spider-Man-themed web shooter toy – and a Supreme Court case.

“Boy, that was the last thing in my mind,” Kimble said Tuesday as he stood in front of the court.

That’s where attorneys for Kimble and for Marvel Entertainment LLC squared off over a decades-old ruling by the court under which the comic company has stopped paying royalties for the web-shooter to Kimble, whose patent on the toy expired.

Kimble secured patent No. 5,072,856 for his toy, which shoots foam string from a wristband, in 1991, according to court documents. Marvel later designed and marketed a similar gadget, the “Web Blaster.”

In 2001, after years of court battles, Marvel agreed to purchase Kimble’s patent for $516,214.62 and to pay him a 3 percent royalty on “net product sales” of the toy.

In another round of legal wrangling between the two in 2006, Marvel asked a federal court to declare that the company would not have to pay royalties once Kimble’s patent expired in 2010. They cited a 1964 Supreme Court decision that said it is unlawful to require payment of royalties on products sold after a patent expires, and lower courts agreed.

That decision, Brulotte v. Thys Co., was the center of Tuesday’s hearing. Kimble’s attorney, Roman Melnik, asked the justices to overrule their previous ruling, which would in turn require Marvel to continue making royalty payments to his client.

“Brulotte is widely recognized as an outdated and misguided decision that prohibits royalty arrangements that are frequently socially beneficial,” Melnik told the justices.

But Justice Elena Kagan said the court typically does not stray from precedent unless it can be shown that a previous decision is either “unworkable” or a “relic of a past system that is utterly out of kilter.”

“It may or may not be right, but there’s nothing incredibly sort of weird and anomalous about it,” Kagan said. “I mean, usually we look for things like that. And where are those things?”

Kagan suggested that even if the previous decision has created poor economic consequences, “it’s Congress that’s better positioned to assess the real-world impact, and it’s Congress that’s better positioned to say whether these economic theories are indeed so naive.”

Marvel’s attorney, Thomas Saunders, argued that the justices should stick with precedent.

But Chief Justice John Roberts was quick to remind Saunders that the court has often overruled previous decisions – a number of them from the 1960s, just like Brulotte v. Thys Co.

He also noted that “economists are almost unanimous that this is a very bad rule.”

After the hearing, Melnik said he was “cautiously optimistic.” The court will likely release a decision before its recess in July.

Kimble was beaming.

Outside the court, he called the hearing “a day for inventors, for innovators, for the little guy.”

“Where else but in America can a little guy have his day in court against a big giant company?” Kimble said. “So, however it turns out I’m pleased that we had a chance to really voice our side.”

And regardless of the outcome of the case – your friendly neighborhood inventor has a public service announcement.

“I think you should still buy those Spider-Man toys, though,” Kimble said.

Spinning a legal web

A timeline of the legal battle between Tucson inventor Stephen Kimble and Marvel Enterprises over Kimble’s patent for a Spider-Man-themed toy:

  • Around 1990: Stephen Kimble invents and files for a patent for a “toy web-shooting glove.”
  • December 1990: Kimble meets with a Marvel executive on his toy. The executive reportedly says Marvel will compensate Kimble if it uses any of his ideas, but later takes a pass on the toy.
  • Mid-1990s: Kimble learns from a friend that Marvel is selling the Web Blaster, a glove with a web-shooting toy.
  • 1997: Kimble sues Marvel for patent infringement and breach of contract. He loses the patent claim and wins the contract claim; appeals follow.
  • 2001: Marvel agrees to buy the patent for more than $515,000 and to give Kimble 3 percent of “net product sales.”
  • 2006: Kimble files a new suit over royalties after Marvel gives another company the right to make toys based on its characters. Marvel countersues.
  • 2010: Kimble’s patent on the toy expires. A magistrate judge agrees with Marvel’s claim that it no longer has to pay royalties to Kimble after the patent expiration.
  • July 16, 2013: A federal appeals court “reluctantly” upholds hearing citing a 1964 Supreme Court ruling.
  • Tuesday: Case argued before the Supreme Court. A decision is expected before the court recess in July.

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