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Supreme Court gives thumbs-down to Tucson inventor of Spider-Man toy

Even superheroes have limits

WASHINGTON – The Supreme Court ruled against the Tucson inventor of a Spider-Man web shooter toy Monday, saying Marvel Entertainment no longer has to pay him royalties on its sale of the toy.

Stephen Kimble had argued that a 1964 court ruling that banned royalty payments after a patent expired was outdated and anti-competitive, and needed to be overturned.

But the court, in a 6-3 decision, said it was bound by precedent, even if that “means sticking to some wrong decisions.” The opinion by Justice Elena Kagan said Congress is the proper venue for Kimble’s complaint.

Kimble said Monday he was disappointed with the ruling.

“It’s as if nobody is really defending this law, but they’re saying, ‘Go to Congress to change it, don’t come to us,’” he said in a phone interview. “It’s disappointing.”

In a dissent, Justice Samuel Alito said the majority opinion leaned on precedent to “reaffirm a clear case of judicial overreach” and in doing so, upheld a “baseless and damaging precedent.”

That precedent is Brulotte v. Thys, a 1964 decision in which the court said that paying royalties to a patent-holder after a patent expires violates the Patent Act.

In an opinion peppered with Spider-Man puns, Kagan said that there is a high bar for overturning a previous court ruling, and that Kimble did not meet it.

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Kagan wrote that as long as there is “a reasonable possibility that parties have structured their business transactions in light of Brulotte, we have one more reason to let it stand.” Overturning it, she said, would upset expectations of parties to patent agreements.

“Patents endow their holders with certain superpowers, but only for a limited time,” Kagan wrote, as most patents are only valid for 20 years before entering the public domain.

But Alito, in a dissent joined by Chief Justice John Roberts and Justice Clarence Thomas, said that Brulotte was based on a now-discredited economic theory.

Preserving Brulotte “interferes with the ability of parties to negotiate licensing agreements that reflect the true value of a patent,” Alito wrote, adding that it is disruptive to contract expectations.

Alito said the court has re-examined antitrust precedents in the past, and sees “no reason why the same approach should not apply where the precedent is at issue.” He called Brulotte an “antitrust decision masquerading as a patent case,” said the court should reconsider that precedent.

The majority said that is not the case.

“When the patent expires, the patentee’s prerogatives expire too, and the right to make or use the article … passes to the public,” Kagan wrote.

Kimble created the Spider-Man web shooter – a toy that, in Kagan’s words, “allows children (and young-at-heart adults) to role-play as a ‘spider person’” – and was granted a patent in 1990. The toy is a glove that lets users shoot foam string from a wrist strap.

Kimble shopped the toy to executives at Marvel, but they said they were not interested. Soon after, the court said, Marvel started marketing “a toy that, like Kimble’s patented invention, enables would-be action heroes to mimic Spider-Man through the use of a polyester glove and a canister of foam.”

Kimble sued Marvel in 1997 for patent infringement. The two sides reached a settlement under which Marvel licensed the web shooter and agreed to pay “a lump sum … and 3 percent royalty” on future sales of Kimble’s toy or similar products, the court said.

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The agreement did not set an end date for royalties, with both sides “apparently contemplating that they would continue for as long as kids want to imitate Spider-Man (by doing whatever a spider can),” Kagan wrote.

But sometime later, Marvel “stumbled across Brulotte” and went to court to end royalty payments with the expiration of Kimble’s patent in 2010. A district court agreed with Marvel, and that decision was reluctantly upheld in 2013 by the 9th U.S. Circuit Court of Appeals.

That sparked the petition to the Supreme Court, which upheld the lower courts’ rulings Monday.

Kimble said that taking the case to Congress, as the court suggested, is still an option.

“We can take this opinion, go to the legislators … and say, ‘Look, the court is saying that if this needs to be changed, you’re the guys to change it,’” Kimble said. “And there is a huge body of evidence out there that this needs to be changed.”

Marvel Entertainment did not immediately respond to requests for comment.

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1 comment on this story

Jun 23, 2015, 11:11 am
-0 +0

I’m not a lawyer, but based on the deal for 3% royalties and no end date, to me that implied the deal is indefinite, or until renegotiated and a new deal being reached.

This is far from the first time I’ve said this, but I think that SCOTUS got this one wrong.

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A costumed Spider-Man character in web-shooting pose. The Supreme Court ruled Monday that a Tucson inventor who devised a web-shooting toy is not still entitled to royalties.

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.
  • March 31, 2015: Case argued before the Supreme Court. A decision is expected before the court recess in July.
  • June 22, 2015: Supreme Court issues a ruling against Kimble.