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“Holy Schnikes Batman!” The Batmobile Is Protected By Copyright!

To the Batmobile, but only the authentic one!  Batman’s Batmobile is subject to copyright protection because it is an especially distinctive character in the Batman world, according to the District Court of the Central District of California.  D.C. Comics v. Towle, Case No. CV11-3934 RSWL (OPX) (C.D. Cal. February 7, 2013) (“Towle”) (available here).

D.C. Comics (D.C.) publishes the Batman comic books, which include illustrations of the world-famous Batmobile.  D.C. owns the copyright registrations to the Batman comic books, as well as Batman-related trademarks, such as “BATMOBILE”, the BAT emblem design mark, and “BATMAN.”  D.C. licenses its rights out to television stations and movie production companies to use in their creations of Batman series and movies.  Television studios ABC and Fox produced a 1960s Batman series starring Adam West that included a Batmobile (“the 1966 Batmobile”).  In 1989, Warner Bros. Inc. produced a Batman film that also included a Batmobile (“the 1989 Batmobile”).  Towle, Slip Op. Pp. 1-4.

Mark Towle owns, operates, and manages a business that makes custom cars based off of cars found in movies and television shows.  Towle has sold replicas of the 1966 and 1989 Batmobiles, and car kits that allows the customers to customize their cars into the Batmobile.  Towle’s business also offers automobile parts and accessories featuring Batman trademarks and offers his services on a variety of websites.  Towle, Slip Op. P. 4.  D.C. sued Towle alleging copyright infringement of the 1966 and 1989 Batmobiles, trademark infringement, and unfair competition.  Towle asserted several affirmative defenses, including unclean hands, fair use, and laches.  D.C. and Towle both filed Motions for Partial Summary Judgment regarding D.C.’s claims and Towle’s laches affirmative defense.  Towle, Slip Op. P. 7.

Trademark infringement requires D.C. to show (1) that it has valid trademark rights; and (2) that Towle’s use of a similar mark is likely to cause confusion among consumers.  Applied Info. Sci. Corp. v. eBAY, Inc., 511 F.3d 966, 969 (9th Cir. 2007).  The District Court employed the Sleekcraft test, which courts may consider in determining the likelihood of confusion.  The Sleekcraft test is a set of 8 factors: (1) strength of Plaintiff’s mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) type of goods and the degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and the (8) likelihood of expansion of the product lines.  AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979).  The District Court found that D.C. had valid trademark rights and that Towle presented no evidence to demonstrate otherwise.  Towle, Slip Op. P. 11.  The District Court noted that even though D.C. did not own the “BATMOBILE” mark in the automobile class for trademarks at the time of the suit, it did not matter because all D.C. had to show was that it owned the trademark in any class.  Id.  The District Court then determined that Towle does not dispute that he used D.C.’s trademarks, and that this unauthorized use is likely to cause confusion.  Towle, Slip Op. Pp. 12-13.

Turning to D.C.’s claim of unfair competition, the District Court applied the likelihood of confusion test.  Towle, Slip Op. P. 21.  “The likelihood of public confusion, although innocently created, will warrant injunctive relief against unfair competition.”  Tomlin v. Walt Disney Prods., 18 Cal. App. 3d 226, 231 (1971).  Thus, the District Court simply extended its reasoning on the trademark infringement claim because “a finding of likelihood of confusion under Plaintiff’s
trademark infringement claim also supports a finding of likelihood of confusion under Plaintiff’s common law unfair competition claim.”  Towle, Slip Op. P. 22.

D.C.’s claim of copyright infringement requires D.C. to prove (1) its ownership of a valid copyright; and (2) Towle copied protected elements of D.C.’s work.  See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361 (1991).  This can be proved by showing that the two works are “substantially similar in their protected elements,” and by showing that Towle had access to the copyrighted work.  Metcalf v. Bochco, 294 F.3d 1069, 1072 (9th Cir. 2002).  To do this, the District Court first must separate the protectable elements of D.C.’s copyrights from the unprotectable material.  Then, the District Court must use the two-step extrinsic and intrinsic test.  “[T]he extrinsic test now objectively considers whether there are substantial similarities in both
ideas and expression, whereas the intrinsic test continues to measure expression subjectively.”  Apple Computer v. Microsoft Corp., 35 F.3d 1435, 1442 (9th Cir. 1994).  Towle argued that D.C. does not own the copyright registrations to the 1966 Batman show and 1989 Batman film, and thus does not own any interest in the 1966 and 1989 Batmobiles.  Towle, Slip Op. P. 25.  It is true that D.C. does now own the copyrights to the show or movie, but D.C. reserved all rights to the characters and elements in the show and movie in the licensing agreements.  In addition, D.C. also obtained exclusive merchandising rights to the show and movie.  These rights include rights to the Batmobiles.  As such, the District Court determined that D.C. had standing to sue for copyright infringement.  Towle, Slip Op. Pp. 25-26.

“Even if Plaintiff did not expressly reserve rights to the Batman and Batmobile elements appearing in the Batman movie and television show, Plaintiff is also entitled to sue for infringement because it clearly owns copyrights to the original comic book series in which the Batmobile originally appeared.”  Towle, Slip Op. Pp. 30-31.  As the copyright holder to the Batman comic books, D.C. also has the exclusive right to prepare derivative works and to sue for copyright infringement, even if the infringement was only from the derivative work.  Towle, Slip Op. P. 31.  Towle’s replica Batmobiles are derivative works of the original Batmobiles.  The 1966 Batman show and 1989 Batman movie were derivative works of the Batman comic books.  The Batmobiles are derivative works of the Batmobiles found in the comics.  Therefore, the District Court found that Towle’s copying of the Batmobile copied from both the original comic books and the film for the 1989 Batmobile or the television series for the 1966 Batmobile.  Towle, Slip Op. P. 32.

Towle argued that the Batmobile is not entitled to copyright protection.  However, “[t]he owner of a copyright in various works embodying a character can acquire copyright protection for the character itself.”  Towle, Slip Op. P. 33.  In addition, “copyright protection may be afforded to characters visually depicted in a television series or in a movie.” Olson v. Nat’l Broad. Co., 855 F.2d 1446, 1452 (9th Cir. 1988).  Copyright protection is also afforded to characters who are “especially distinctive” under the character delineation test, because “[c]haracters that have received copyright protection have displayed consistent, widely identifiable traits.”  Rice v. Fox Broad. Co., 330 F.3d 1170, 1175 (9th Cir. 2003).  The District Court determined that the Batmobile was a character entitled to copyright protection:

“It is undeniable that the Batmobile is a worldfamous conveyance in the Batman franchise, exhibiting a series of readily identifiable and distinguishing traits. The Batmobile is known by one consistent name that identifies it as Batman’s personal vehicle. It also displays consistent physical traits. The Batmobile, in its various incarnations, is a highlyinteractive vehicle, equipped with high-tech gadgets and weaponry used to aid Batman in fighting crime.  Even though the Batmobile is not identical in every comic book, film, or television show, it is still widely recognizable because it often contains bat-like motifs, such as a bat-faced grill or bat-shaped tailfins in the rear of the car, and it is almost always jet black…  The comic books portray the Batmobile as a superhero. The Batmobile is central to Batman’s ability to fight crime and appears
as Batman’s sidekick, if not an extension of Batman’s own persona.”  Towle, Slip Op. Pp. 37-39.
The District Court also determined that the Batmobile was entitled to copyright protection as a “pictorial, graphic, and sculptural work” under the Copyright Act.  Towle, Slip Op. P. 41.  “Only works that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the useful article qualify for copyright protection.  This is what is known as separability.”  Towle, Slip Op. P. 42.  There are two types of separability: physical and conceptual.  “Physical separability means that a ‘pictorial, graphic or sculptural feature incorporated into the design of a useful article . . . can be physically separated from the article without impairing the article’s utility and if, once separated, it can stand alone as a work of art traditionally conceived.’”  Leicester v. Warner Bros., 232 F.3d 1212, 1219 (9th Cir. 2000).  Conceptual separability means that the work “can stand on its own as a work of art traditionally conceived, and … the useful article in which it is embodied would be equally useful without it.”  Id.

In applying these standards, the District Court stated that “[t]he Batmobile, and the so-called functional elements associated with it, is not a useful object in the real world, and incorporates fantasy elements that do not appear on real-world vehicles.  “[T]he fantastical elements that feature bat design, such as the bat tailfin and the various gadgetry that identify the vehicle as the Batmobile [ ] are protectable elements.”  Towle, Slip Op. P. 46.

Finally, the District Court examined Towle’s affirmative defense of laches, which requires Towle to show (1) that D.C.’s delay in filing the lawsuit was unreasonable, and (2) that the delay would cause Towle to suffer prejudice if the case were to continue.  Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829, 838 (9th Cir. 2002).  However, the defense of laches is barred where defendants purposefully committed the infringing conduct.  Towle, Slip Op. P. 48.  The District Court determined that Towle’s trademark infringement was in bad faith, and therefore he was barred from asserting the defense of laches.  Towle, Slip Op. P. 52.  However, D.C. failed to demonstrate that Towle’s copyright infringement was willful, meaning that D.C. did not show that Towle was aware that his copying constituted copyright infringement.  The evidence suggested that Towle believed that the Batmobile was only protected by a design patent, and that Towle waited for the patent to expire before selling his replica cars.  Therefore, there was a genuine dispute as to whether Towle’s copyright infringement was willful and whether D.C. had knowledge of Towle’s infringement.  Towle, Slip Op. Pp. 52-53.  As such, the District Court denied both D.C.’s and Towle’s Motions on Towle’s laches defense.

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