By: Ninozka Rodríguez


In 1990, petitioner Stephen Kimble (“Kimble”) patented a toy glove that allowed users to shoot foam from the palm of their hands as “spider webs,” and in doing so mimic the beloved comic book character, Spider Man.[1] That year, Kimble met with respondent, Marvel Entertainment, LLC (“Marvel”), well known for producing and marketing various products featuring comic-book characters, seeking to sell or license his patent.[2] Soon after the meeting, Marvel began to market its “Web Blaster” toy, which similar to Kimble’s patented glove, allowed its user to mimic Spider Man by shooting “webs” out of a canister of foam.[3] In 1997, Kimble sued Marvel for patent infringement and the two parties subsequently settled.[4] The settlement agreement stipulated that Marvel would purchase Kimble’s patent and in exchange Kimble would receive 3% royalty of the Web Blaster’s and similar product’s future sales.[5]

Over 10 years after the settlement, Marvel sought a declaratory judgment in federal court confirming that it could cease paying the agreed upon royalties to Kimble upon the expiration of the patent’s 20-year term in 2010.[6] In support of its claims, Marvel cited its newly discovered 1954 Supreme Court’s Brulotte decision in which the Court found that any payment of royalties made after such patent’s 20-year expiration was unlawful per se.[7] Arizona’s District Court approved Marvel’s relief, holding that Brulotte made “the royalty provision…unenforceable after the expiration of the Kimble patent.”[8] In 2013, the Court of Appeals for the Ninth Circuit affirmed the decision but noted that the Brulotte decision is “counter effective and its rationale arguably unconvincing.”[9]

In 2015 the Supreme Court granted certiorari to decide whether or not it would overrule its previous Brulotte decision.[10] Kimble urged the court to consider abandoning Brulotte and adopt a more flexible case-by-case standard for the termination of post-expiratory royalties.[11] Kimble argued that the Brulotte decision incorrectly based its decision on the assumption that post-expiratory royalties are anticompetitive, and thus in direct conflict with the policy behind intellectual property laws.[12] In a 6-3 decision the Court affirmed the Ninth Circuits ruling stating that Congress was the correct entity to deal with any necessary changes stemming from the Brulotte decision.[13]

In affirming Brulotte, the Supreme Court’s decision overlooked growing criticism against the economic theory that post-expiration royalty payments would stifle innovation. The Court in Brulotte reasoned that allowing post-expiration royalties would subject “the free market visualized for the post-expiration period…to monopoly influences that have no proper place there.”[14] In this case, the decision released a patent holder’s supposed monopoly into the hands of an extraordinarily larger monopoly. Marvel, now owned by The Walt Disney Company, is a corporate mogul whose profits total upwards of $22 billion dollars per quarter.[15]

American author Mark Twain notably said, “a country without a good patent office and good patent laws is just a crab that couldn’t travel anyway but sideways or backwards.”[16] Patent law must evolve concurrently with the innovation it seeks to protect, or risk becoming stagnant and inapplicable. The Congressional intent behind patent laws was to strike a balance between promoting innovation and ensuring the public’s access to discoveries. Essentially, patent law is meant to incentivize creators while implementing a 20-year patent term to deter the creation of monopolies. However, by upholding Brulotte’s strict standard the Court not only stalled the evolution of patent law, but, most importantly, it opened the door for already existing monopolies to take advantage of laws meant to ensure the introduction of innovation into the public hands. Marvel did not seek to introduce the Spider Man product into the public stream, it merely sought to feed its growing monopoly over this comic book world. To ensure fairness, Congress should address this standard and impose a case-by-case analysis that would allow Courts to distinguish cases aiming to free information from those brought by monopolies merely seeking to use the law for personal gain.


[1] See Kimble V. Marvel Entm’t, LLC, 135 S. Ct. 2401, 2405 (2015).

[2] Id.

[3] Id.

[4] Id.

[5] Id.

[6] See generally Kimble v. Marvel Enterprises, Inc., 692 F. Supp. 2d 1156 (D. Ariz. 2010).

[7] Id. (citing Brulotte v. Thys Co., 379 U.S. 29 (1964)).

[8] Kimble, 692 F. Supp. 2d at 1161.

[9] Kimble v. Marvel Enterprises, Inc., 727 F.3d 856, 857 (9th Cir. 2013).

[10] Kimble V. Marvel Entm’t, LLC, 135 S. Ct. 2401 (2015).

[11] Id. at 2412.

[12] Id. at 2414.

[13] See Kimble V. Marvel Entm’t, LLC, 135 S. Ct. 2401, 2415 (2015) (Alito, J., dissenting).

[14] Brulotte v. Thys Co., 379 U.S. 29, 33 (1964)

[15] See Brooke Barnes, Disney’s Third-Quarter Profits Soar, on Marvel’s Back, NY Times (Aug. 5, 2014)

[16] Mark Twain, A Connecticut Yankee in King Author’s Court, (New York: Harper & Brothers, 1889), 64.

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