Itβs easy for anyone in Tucson to see what the Spider-Man Web Blaster has brought us.
Steve Kimble, the inventor of the toy, built the nearly one-acre Metal Arts Village, 3230 N. Dodge Blvd., with some of the $6 million-plus in royalties heβs taken in as the toyβs inventor.
Marvel Entertainment stopped paying Kimble royalties in 2008, but now the Web Blaster is poised to leave a whole different sort of impact around the country. It could even help the creation of life-saving drugs.
Thatβs because last Friday the U.S. Supreme Court accepted an appeal that Kimble filed over the toy-maker ceasing to pay him. It turns out, the case law that allowed Marvel to stop paying after Kimbleβs patent expired has bothered quite a few people involved in patenting and licensing inventions to companies that want to produce them.
To understand, though, you have to go back to earlier in Kimbleβs story. As a young lawyer, in 1990, Kimble discussed with Toy Biz Inc., a toy he and his son had dreamed up, then hired local engineer Frank Tinker to design. They patented the key idea for the toy, which would let kids shoot a βwebβ of sorts from their wrists, like Spider-Man does in the comic books and movies.
Toy Biz said no thanks. But later, they went ahead and made the toy anyway, calling it the Web Blaster.
βBeing a lawyer β if youβre a hammer everything looks like a nail β I sued them,β Kimble told me this week at his Art Inc. studio in the Metal Arts Village.
After a trial and appeals by both sides, Kimble and Marvel settled: Kimble would get 3 percent of the net sales of the toy. The agreement had no end date, so he thought it was in perpetuity.
Then Marvel, after being purchased by another company, stopped paying.
It turns out, Kimbleβs original patent expired in 2008. The 1964 Brulotte decision by the U.S. Supreme Court says that licensees, such as Marvel, need not pay any royalties to patent-holders after the patent expires.
βWhen it was decided in 1964, the idea was that if you have a patent, we need to rein you in because youβre a dangerous monopolist,β said Roman Melnik, Kimbleβs Los Angeles-based attorney.
When Melnik, who specializes in intellectual-property law, heard of Kimbleβs predicament, he asked to take on the case. He had had a previous case, representing the inventor of climbing equipment, that had left him unhappy with the Brulotte decision.
βIt stuck in my craw because I felt it was an injustice,β Melnik told me. βItβs unjust because the rule is based on the notion, in vogue in the β50s and β60s, that if you have a patent, you can exert leverage on the side youβre negotiating with.β
The truth, he said, is that many patent-holders affected by the decision are less powerful than the licensees paying them royalties β as with Kimble and Marvel.
Another group of patent-holders who want to see the law changed is academic researchers in biomedical fields. New York attorney Harvey Stone filed a friend-of-the-court brief on behalf of Memorial Sloan-Kettering Cancer Center and other medical-research organizations.
His main argument: The Brulotte decision puts unnecessary restrictions on licensing deals that could prevent them from occurring altogether. Academic researchers and the companies to which they license patented inventions may prefer to spread the payment of royalties over a long period in order to limit risk or ease the financial burden, Stone argued.
In legalese, this is how he put it in his brief: βBy making the payment of royalties that extend beyond the life of the patent per se illegal, Brulotte prohibits an important financial arrangement that may be preferred by both patent owner and licensee, and may deter the formation of agreements through which commercial actors transform scientific research into pharmaceutical products that benefit society as a whole.β
The Intellectual Property Law Association of Chicago filed a friend-of-the-court brief as well. Attorney David Applegate told me he wrote the brief because heβs studied economics and practices intellectual-property law β and because heβs an old comic collector who at one point owned a complete run of 30 years of Spider-Man comic books.
βItβs one thing for Congress to define a term of the patent,β he said this week. βBut to say over what time you can collect royalties for use during the patented term is an economic question that shouldnβt necessarily be determined by the length of the patent.β
So, it turns out, the Spider-Man Web Blaster is interesting in itself. And the 12-studio metal artistsβ compound that itβs built in Tucson is a great place.
But people really see in this Spider-Man case the opportunity to overturn laws they say are holding back American inventions.
