n DC Comics v. Towle, 2013 WL 541430, __ F. Supp. 2d __ (C.D. Cal. Feb. 7, 2013) (“Towle”), the U.S. District Court for the Central District of California found that a vendor of car kits and customization accessories modeled after the famous Batmobile vehicle from the Batman comics, TV shows and movies infringed on DC Comics’ copyrights and trademarks. The decision, which holds that the Batmobile vehicle is a protectable character much like its fictional owner, has significant repercussions for copyright law as well as for several nascent business sectors within the entertainment, digital media and manufacturing industries.
DC Comics, publisher of various comic book titles featuring the Batman character, brought suit against Defendant Mark Towle and his business “Gotham Garage” for copyright infringement, trademark infringement, and unfair competition based on the production of various replica vehicles and vehicle parts based upon DC Comics’ intellectual property. Through various websites (several featuring the trademarked terms “gotham” and “batmobile” in their URLs), Towle sold parts, accessories and car kits that permitted consumers to customize their vehicles to resemble the Batmobile. Specifically, Towle produced and sold replica parts based upon the Batmobile vehicle as expressed in both the 1966 Adam West Batman TV series and the 1989 Batman movie starring Michael Keaton.
DC Comics filed its initial complaint in May 2011 and amended it in November 2011. After Towle’s initial Motion to Dismiss DC Comics’ claim of copyright infringement was denied in January 2012, he filed an Answer asserting several affirmative defenses including laches, unclean hands and fair use. In December 2012, both parties moved for partial summary judgment on the issues of trademark infringement, copyright infringement, and unfair competition, in addition to Towle’s laches defense.
While the court granted DC Comics’ motion for summary judgment with regard to trademark infringement, finding likelihood of confusion and no triable issue of fact with regard to DC Comics’ ownership of the marks at issue, the Towle case is most noteworthy for the court’s analysis of whether the Batmobile is a “character” for the purposes of copyright law. While copyright typically applies to creative works, the owner of a copyright in various works embodying a character may, under certain circumstances, acquire copyright protection for the character separate and apart from the protection of the creative work in which the character appears. For instance, the Southern District of New York found that because New Line Cinema owned valid copyrights in the Nightmare on Elm Street movie series, it acquired copyright protection for the central character of Freddy Krueger as well (New Line v. Bertlesman Music Group, 693 F. Supp. 1517 (S.D.N.Y. 1988)).
The Central District conducted an extensive analysis to determine whether the Batmobile can be considered a protectable character under copyright law. Pointing to the Ninth Circuit decisions in Walt Disney v. Air Pirates (581 F.2d 751 (9th Cir. 1978) and Rice v. Fox Broadcasting (330 F.3d 1170 (9th Cir. 2003)), the Central District held that characters that are “especially distinctive” are more likely to receive copyright protection separate and apart from the works they are derived from. Moreover, characters are more likely to receive copyright protection if they are expressed as possessing “consistent, widely identifiable traits” across various works, appearances and media platforms. The court cited cases involving Godzilla, James Bond and Rocky Balboa to exemplify this notion.
Rejecting the defendant’s argument that the Batmobile cannot be protected because it is a car, the court held that the central question is not whether the “character” is an object, but rather whether the character conveys a set of distinct characteristics. Here, the court determined that the Batmobile is world-famous, known by a single name and displaying “a series of readily identifiable and distinguishing traits.” While the Batmobile was not identical in every iteration of the Batman property across various platforms, the court remarked that “it is still recognizable because it 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. ”Moreover, aside from its physical characteristics, the court described the Batmobile’s personality (“swift, cunning, strong and elusive”), which it characterized as a consistent and identifiable “extension of Batman’s own persona. ” For those reasons, the court found the Batmobile to be a character entitled to copyright protection.
Alternatively, the court found the Batmobile was entitled to copyright protection as a “pictorial, graphic, and sculptural work”. The Copyright Act protects pictorial, graphic and sculptural works incorporated into a useful article (for example, a statuette that is used as a lamp base); however, the creative elements must be separately identifiable and be capable of existing independently from the utilitarian aspects of the useful article. The court rejected defendant’s arguments that the Batmobile was just a car and a “useful article” not entitled to copyright protection, explaining that Defendant’s argument “failed to capture the creativity and fantastical elements that stand apart from the fact that the Batmobile also happens to look like a car.”
Further, the court noted in rendering its decision that Towle’s transposition of the Batmobile from its two dimensional comic book form/three dimensional television and movie forms to a three dimensional road vehicle was not an impediment to a finding of copyright infringement. Pointing to Universal Studios, Inc. v. J.A.R. Sales, Inc., 216 U.S.P.Q. 679 (C .D. Cal. 1982), where a doll modeled after Universal’s E.T. character was found to have infringed upon E.T.’s physical characteristics and personality, the court in Towle held that “where defendant’s work is adapted for use in a medium different than that of plaintiff’s, the test for infringement is the same” and also that protection extends to expressions of a character “in other media as well, including three-dimensional expressions such as dolls and other forms of sculpture.”
Because the court found the Batmobile to be protectable under copyright law and because defendant Towle did not deny copying the Batmobile, the court granted summary judgment in favor of DC Comics on the issue of copyright infringement.
In addition to being an important victory for DC Comics, the decision in Towle has important repercussions for all owners seeking to protect their intellectual property across platforms and product lines, and wishing to prevent others from encroaching upon valuable sources of consumer products revenue. In particular, the Towle Decision has knock-on repercussions for two areas generating a great deal of hype and excitement in entertainment and technology: 3-D printing and user generated content.
3-D printing promises to revolutionize manufacturing by allowing users to download designs from the internet and create three dimensional, physical objects at home using a 3-D printer. While the creative and business opportunities are self-evident, 3-D printing also stands to cause similar problems for rightsholders as people begin to design and share 3-D models of characters and/or objects from their favorite movies, television shows, comics and/or books. The Towle Decision, which extends copyright protection for characters to particularly identifiable “objects” derived from various entertainment brands, puts those who create and share 3-D designs taken from copyrighted entertainment properties on notice, as well as those who attempt to “print” and sell various collectables to others.
Intellectual property owners can now pursue alleged infringers who create and sell unlicensed replications of objects, artifacts and characters on multiple copyright theories, in addition to on trademark grounds. Indeed, HBO recently issued a cease-and-desist letter to an individual who was selling a 3-D printed iPhone dock modeled after the famous Iron Throne as depicted in the HBO series Game of Thrones. As 3-D printing becomes more sophisticated and accessible to the public, we are likely to see many more similar actions.
A similar legal analysis may also apply to the trend of “user-generated content” in video games that allow users to create their own in-game objects for use and sharing within the game. For example, users of the sandbox game Minecraft have created worlds based upon properties such as The Simpsons and HBO’s Game of Thrones. Of course, the Towle Decision does not comment on the legal repercussions of users adding original elements to the copyrighted objects or characters. Towle and Gotham Garage apparently were focused on an authentic replication of the two iterations of the Batmobile. However, online users often add new assets and attributes or “remix” content by mixing in elements from other properties and their own imaginations. At what point does such a work become transformative fair use?
Either way, as the line between creator and consumer blurs, copyright law will have to adapt quickly, and the Towle Decision appears to have opened up a brand new theory of protection for rightsholders.