A locally owned tyre shop in Paeroa has been told by entertainment giant DC Comics to change its branding or risk being taken to court.
Owners of Super Tyre Guy, Marie and Gene Young, were surprised when they received a legal letter from Los Angeles-based DC Comics two weeks ago requesting that they "immediately and permanently stop using the Super Tyre Guy character".
The issue arose after the couple decided to rebranded their business and incorporate a superhero into their branding.
The blue and orange superhero holding a tyre has now been pulled up for similarities to Superman in his outfit, colour and the five-sided diamond pictured on his chest.
The letter requested the couple immediately change their imagery and, in return, DC Comics would forgo any claims to costs or damages.
"Our client is concerned that you are infringing its intellectual property rights in its well-known Superman character by using the Super Tyre Guy character, which is similar to our client's Superman character," the letter reads.
"Superman's appearance is distinctive and iconic; among other things, he has a blue costume, red cape and an 'S' in a five-sided stylised shield on his chest."
Gene Young said the couple had no intention of copying the Superman design when creating their new look.
"I have always loved superheroes and we didn't think of anything based off Superman itself but we just thought of a superhero image and that it was a strong and positive image to portray our business. That is how we do things in our local community," he said.
Young said the couple had been surprised their branding had been noticed by DC Comics.
"I was surprised from the perspective that we are a small rural business but also not surprised as we have a presence online and I understand that intellectual property is huge with any kind of branding."
Law firm AJ Park partner Kim McLeod said intellectual property rights breaches occurred "quite often" in New Zealand.
"Sometimes it is intentional because they want customers to make the connection between what they are doing and these internationally well-known characters.
"And sometimes it is through ignorance but that doesn't change the outcome at the end of the day," he said.
The couple are among a raft of business owners who have been accused of breaching intellectual property laws in New Zealand.
In late 2013, Dutch owned company G-Star Raw took Australian company Jeanswest to court in New Zealand claiming a style of pants it's selling is a copy, or "substantial copy", of a copyrighted design it owns.
Jeanswest were held liable for secondary infringement of G-Star's copyright and ordered to pay G-Star damages of $325.
Meanwhile, lawyers for British billionaire Richard Branson last year asked environmentally friendly jeans label 'I Am Not A Virgin' to reconsider their name.
McLeod said intellectual property breaches could have serious consequences for brand owners.
"It can be very serious because if brand owners let loose usage occur, that can compound itself and people would say 'if he can do it, why can't I?'
"So they do protect their brands and their characters quite jealously and quite rightly I would say. Intellectual property is very valuable. People pay a lot to go and see the movies and get the books."
Intellectual property breaches were most often discovered by companies through their local lawyers or business agents who were on the lookout for these kinds of things, McLeod said.
"[Large companies] have teams who will be checking the internet regularly and in some cases a competitor will complain," he said.
Companies could be found in breach of intellectual property rights for a number of reasons.
"[A breach] could be related to colouring, poses, imagery, all of which may associated with an original character," he said.
Mr McLeod recommended business owners try checking on the internet for any similarities that may occur between their branding designs and that of other companies or ask a lawyer to complete a trademark search to avoid possible breaches.
"Small businesses should always come up with their own original branding and not try and mimic what is well known or famous overseas or in New Zealand," he said.
"You know if you are going to try and use the Superman character that you shouldn't be doing that."
Since receiving the letter, the Youngs have removed images depicting Super Tyre Guy from their Facebook page and have begun the progress of rebranding their business.
"We have to redress him to get away from the case and also change the symbol on his chest. It is better for us to totally redress him and get away from any kind of Superman features.
"We have already spend thousands of dollars on rebranding and now we will have to spend hundreds, going into thousands of dollars to change this.
"It is a huge expense but at the same time it has to be done and it is something we have to accept. I will just have to change more tyres and sell more mags," he said.
"I suppose it is a lesson and a step in our journey into creating our unique identity."
By Regan Schoultz of the New Zealand Herald
