Trademark “El Eternauta”

The Supreme Court of Justice issued on July 10, 2018 a ruling declaring the nullity of the trademark EL ETERNAUTA and EL ETERNAUTA & design owned by Ediciones Record, which enables the authors’ heirs to register identical trademarks in their names.

The play EL ETERNAUTA is an Argentinian serialized science fiction comic strip created in 1957 by the comic scriptwriter Héctor Germán Oesterheld and the cartoonist Francisco Solano López. It was published during two years in the magazine “Hora Cero Semanal”, and it subsequently achieved a large number of sequels and reprints. The plot was centered on an extraterrestrial invasion which took place in the streets of Buenos Aires.

Over the years, the work in question became the symbol of a generation and an emblem of Argentinian culture. There is no doubt about its novelty and originality and at the same time both, the main character (EL ETERNAUTA) and its image, became the distinctive element of this science fiction comic strip.

In the year 1975, Mr. Héctor Oesterheld left his printmakers Rodolfo and Alfredo Seijas 360 original pages of the work EL ETERNAUTA. That same year, Messrs. Seijas sold those pages to Ediciones Record by means of an instrument lacking date and a specific price. On the other hand, Mr. López assigned his rights as cartoonist of the comic strip to Ediciones Record that same year.

During the last Military Government, Mr. Héctor Oesterheld and his four daughters were disappeared in the hands of the Military Regime. Specifically, Mr. Oesterheld’s presumed death was scheduled on April 1, 1978. Four years later, Mrs. Elsa Oesterheld nee Sanchez, as administrator of her husband’s estate, signed a contract in which she assigned her rights on the work “EL ETERNAUTA I and II” to Mr. Alfredo Scutti (agent of Ediciones Record) for an amount of USD 32,000. A short time later, Mr. Scutti assigned the rights for the cinematographic and audiovisual use of the comic strip to a third party for a price around USD 4,000,000.

Aware of this, in 1988, Mrs. Oesterheld filed a lawsuit in order to obtain the nullity of the assignment of rights signed in 1982, on the basis that she had not been able to understand the scope of the contract, alleging that at the time of signing it she was in a state of confusion and economic precariousness as a result of the disappearance of her husband and daughters. She also stated that she had learned that her husband had never assigned his rights on the work, but had only signed an irregular publishing contract with Messrs. Seijas.

On November 28, 1994, the National Court of First Instance in Civil Matters No. 95 upheld the complaint filed by Mrs. Oesterheld and ordered the nullity of the assignment agreement because it considered that the price paid was derisory. Among the arguments put forward, the Judge made special emphasis on the economic disproportion of the consideration and the situation of vulnerability in which Mrs. Oesterheld was. Two years later, Panel M of the Court of Appeals in Civil matters confirmed the ruling.

After Mr. Oesterheld’s heirs recovered the copyright on the work EL ETERNAUTA, they became aware of the existence of trademark registrations for “EL ETERNAUTA” owned by Ediciones Record. Aware of this, they filed together with Mr. Solano López, a complaint requesting the nullity of the trademark to: (i) recover the trademarks “EL ETERNAUTA” and “EL ETERNAUTA & design”, (ii) declare the oppositions filed by Ediciones Record against the plaintiffs’ trademark applications for EL ETERNAUTA groundless (ii) and (iii) declare the opposition filed by the plaintiffs against a new trademark application filed by the defendant for the trademark “EL ETERNAUTA” grounded.

In this context, the parties based their respective ownership on different agreements. On the one side, the plaintiffs argued that the agreement assigning the rights was declared null by the ruling issued in the case “Oesterheld nee Sánchez, Elsa v. Scutti, Alfredo Agustín on nullity of legal act”, which is res judicata. For its part, the defendant argued that they acquired the rights on the work in 1975 when Messrs. Seijas sold them those original pages.

The First Instance Judge in Federal Civil and Commercial Matters dismissed the complaint based on a report from the Copyright Office which informed that the rights on the work EL ETERNAUTA were assigned by Mrs. Oesterheld to Ediciones Record by virtue of an agreement signed in 1982. The Judge did not take into account that after said report, the assignment agreement was declared null and void in a ruling dated December 4, 1996 with hierarchy of res judicata.

In that sense, the First Instance judge argued that the plaintiffs had introduced the exception of res judicata in an inappropriate procedural stage as it is the plea. On August 30, 2011, Panel I of the Federal Court of Appeals on Federal Civil and Commercial matters confirmed the ruling in all its parts.

On November 24, 2011, the extraordinary appeal filed by the plaintiffs for violating their ownership rights which were allocated in a ruling with the hierarchy of res judicata was upheld.

The Deputy Prosecutor of the Supreme Court of Justice issued a report stating that the question about copyright ownership has a relevant role when determining the legitimate interest necessary to obtain the registration of the trademark in the terms of Article 4 of Law 22,362. Moreover, based on the principle of res judicata, whose application can be declared by operation of law in any stage of the proceedings, she understood that Mr. Oesterheld’s heirs were the legitimate copyright holders of the work EL ETERNAUTA. In this sense, the plaintiffs are entitled to refrain a third party from using the title and image of the main character of a work of their creation to distinguish commercial products or services without their consent.

Agreeing with the report issued by the Prosecutor, on July 10, 2018, the Supreme Court of Justice issued an unanimous ruling as to the admissibility of the extraordinary appeal and with a majority vote decided to revoke the appealed judgment, upholding the complaint filed and (i) declaring the nullity of the trademark applications EL ETERNAUTA No. 1,686,993 and EL ETERNAUTA & design No. 1,765,499 both in class 16 owned by Ediciones Record, (ii) declaring the oppositions filed by the defendant against the trademark application filed by the plaintiffs for EL ETERNAUTA in classes 16, 25 and 28 groundless, and (iii) declaring the opposition filed by the plaintiffs against the trademark application EL ETERNAUTA in class 38 groundless.