No extension of patent royalty on Spider-Man toy

An advertisement for the Spider-Man Web Blaster set, which can shoot water and web fluid.
An advertisement for the Spider-Man Web Blaster set, which can shoot water and web fluid.PHOTO: YOUTUBE

Washington - Invoking a famous line from Spider-Man lore about great power coming with great responsibility, the United States Supreme Court ruled on Monday in favour of Marvel Entertainment in a patent dispute over a toy that allows users, like the superhero, to shoot webs from the palms of their hands.

Justice Elena Kagan cited the line in explaining why the court, in a 6-3 ruling, declined to overrule a 51-year-old legal precedent concerning patent royalties, rejecting a bid for continued payments sought by the toy's inventor.

The court backed Walt Disney Company's Marvel Entertainment in its legal fight with Stephen Kimble and an associate, Robert Grabb, over royalties on the web-shooting toy called the Spider- Man Web Blaster.

"Marvel is pleased with the Supreme Court's decision, which upholds the court's legal precedent from half a century ago," company spokesman David Jefferson said.

Although the court can overturn its own precedents, this case did not warrant it, Justice Kagan said.

She wrote: "What we can decide, we can undecide, we should exercise that authority sparingly."

She then offered the oft-quoted cautionary line from Spider-Man lore in which the superhero is counselled that "in this world, with great power there must also come - great responsibility".

Mr Kimble had asked the court to overrule the precedent, which said royalty payments generally do not need to be made after a patent has expired, as is the case with the Spider-Man Web Blaster.

Marvel, which has paid Mr Kimble more than US$6 million (S$8 million) over the years to use the patent in the toy, had argued that the precedent set in a 1964 Supreme Court ruling should stand.

Justice Samuel Alito wrote a dissenting opinion noting that the 1964 decision should be overturned because it was "not based on anything that can plausibly be regarded as an interpretation of the Patent Act".

The ruling was "based instead on an economic theory and one that has been debunked", he added.

Mr Kimble obtained a patent for his web-shooting glove in 1991, later assigning it to Marvel in return for a royalty fee.

After he claimed breach of contract in 2008, Marvel argued that the 1964 Supreme Court ruling in the case Brulotte Vs Thys Co involving a harvesting machine meant it would not be required to pay the royalties once the patent expired in 2010.

A federal judge in Arizona agreed.

In 2013, the San Francisco-based 9th US Circuit Court of Appeals upheld the decision, saying it was bound by the Supreme Court precedent.

Mr Kimble's attorney could not immediately be reached for comment.


A version of this article appeared in the print edition of The Straits Times on June 24, 2015, with the headline 'No extension of patent royalty on Spider-Man toy'. Subscribe