Can you trademark a character from a public domain story?

Hold on to your loincloths! Last week, it was announced that Edgar Rice Burroughs, Inc. is suing Dynamite Entertainment over its Lord of the Jungle and Warlord of Mars comics. ERB Inc., which represents the Burroughs family, accuses Dynamite of violating the trademark for characters like Tarzan and John Carter. And they say that Dynamite's cover art is too sexy and lowers the moral tone of these characters, because apparently they've never seen any other John Carter art.

Burroughs' earliest works are in the public domain, including Tarzan of the Apes, The Return of Tarzan, A Princess of Mars and The Warlord of Mars. That's why The Asylum was able to make that ludicrous Princess of Mars movie, starring Traci Lords, which aired on Syfy last year.

So how can ERB, Inc. possibly have a leg to stand on, when the earliest works featuring John Carter, Dejah Thoris and Tarzan are in the public domain in the United States now? A very helpful (and thought-provoking) article over at IP Brief, written by American University law student Caroline Gousse, explains:

The protection of a character as separate from the protection of the surrounding work of fiction could sound surprising at first. If one were to write a story about a teenage magician with jet-black hair and a lightning-shaped scar on his forehead, one would likely be sued over copyright infringement of J.K. Rowling's Harry Potter books, more so than over the trademark infringement of its main character. However, one could also be sued for trademark infringement of the character of Harry Potter. Both ways, intellectual property protection of fictional characters may indeed turn these pieces of imagination into very lucrative creations. Although ERB, Inc. is arguing that the company still owns copyrights over Tarzan and John Carter of Mars in certain countries and that the distribution of Dynamic comic-books in those countries would result in copyright infringement under foreign laws, ERB, Inc. mainly bases its claim of infringement on Tarzan's and John Carter of Mars' trademarks. The strategy surely has to do with the difficulty of proving copyright infringement of a fictional character. It is by nature so ambiguous to define most characteristics of a fictional character, besides physical or general descriptions (e.g., jet black hair, light green eyes, lightning-shape scare on forehead). However, it does not appear that showing trademark infringement would be an easier way in this case.

The whole piece is worth reading — but in a nutshell, it sounds as though it's much easier to defend a trademark when you have a particular product associated with that trademark, which ERB, Inc. doesn't in the case of "Tarzan" or "Warlord of Mars." And also, as though it's a lot easier to go after people for copying a story than for a character in that story — unless the character is the story, as in the case of, say, Batman. [IP Brief]