By Stephen L. Grant, Sr. Atty, Standley Law Group LLP
"In our well-ordered society, protection of private property is essential." This is how a panel of the Ninth Circuit started its conclusion in DC Comics v. Mark Towle (Case 13-55484, September 23, 2015), quoting a statement by Batman to his trusty sidekick Robin in an episode of the Batman television show. We certainly strive to keep our society "well-ordered." As a result, Mark Towle’s replica Batmobiles, sold at about $90,000 each, are infringements of DC Comics’ copyright in the Batman comic books.
Does it make sense to consider the Batmobile a "character"? I think that the Court’s decision in affirming a summary judgement at the district court is well-reasoned and correct. In deciding the case, however, the Court reveals once again that copyright law, while appearing quite rudimentary and logical, can occasionally exhibit some unexpected depth.
Defendant Mark Towle had several good arguments for why he was able to convert automobiles into replicas of the Batmobile without having any authority from anyone. He also had arguments as to why he could sell kits for the customers to do the conversion themselves. Unfortunately, he didn’t pick the right arguments, but DC Comics chose wisely.
The Batmobile was introduced in 1941 in the original comic book series, the copyrights for which are owned by DC Comics. The Batmobile was depicted in the comics as having a bat-like appearance and was equipped with state of the art weapons and technology. When ABC was licensed to make a 1966 television series, the producers created a car that included these features. A license to Warner Brothers in 1989 resulted in a Batmobile that was consistent with the times, but which was consistent in bat-like appearance and state of the art weapons and technology. It was these "real life" automobiles, "useful articles" that they were, that Towle admits to copying. Towle’s error, as it turns out, is that he thought that the Batmobile was only subject to the thin or non-existent copyright protection afforded to non-fictional or factual things. It looks as if he forgot the broad protection for fictional works and characters.
The Ninth Circuit has an interesting history with regard to protection of characters. In 1954, they held that a literary character is ordinarily not copyrightable, in a case involving the Sam Spade character of the novel The Maltese Falcon, famously portrayed in film by Humphrey Bogart. In 1978, the Court had to carefully step around that holding by distinguishing a comic book character from a literary character, protecting Mickey Mouse from being depicted in a "free thinking, promiscuous, drug ingesting counterculture" series of comic books. Subsequently, the protection has been extended to characters in television series and in motion pictures. In all cases, the visualization of the character has been critical. However, visualization is not enough.
In our well-ordered society, protection of private property is essential.Batman
Precedential cases in the Ninth Circuit set out a three-part test that is applied to characters from a comic book, television program or motion picture. First, the character must generally have "physical as well as conceptual qualities." Second, the character must be "sufficiently delineated" with consistent, identifiable character traits and attributes, but the character’s appearance can vary somewhat. Third, the character must be "especially distinctive" and "contain some unique elements of expression," a test that is intended to strain out stock character, such as a Jewish mother or Irish father in the famous case involving Abie’s Irish Rose.
Here, the Batmobile has appeared both graphically in the comics and in three-dimensional embodiments, so it is not "merely a literary character." We have already described the characteristic features of bat-like appearance and state of the art weapons and technology, which can evolve in time. The Batmobile is "especially distinctive" and its unique elements of expression make its reaction to situations somewhat predictable, but it is not a "stock character."
Notice that the Batmobile does not need to be a human or even an animal, although it would seem that it needs to have some anthropomorphic characteristics. Stated a bit differently, don’t count on the Ghostmobile from the movie Ghost Busters to qualify for "character" protection, although the car "Eleanor" in the 1971 and 2000 movies Gone in 60 Seconds received character protection in Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213 (9th Cir 2008). Certainly no one would question that Thomas the Tank Engine is a "character."
One holding of the district court is not decided on appeal. The district court held that the Batmobile cars from the 1966 television show and the 1989 movie were "sculptural works" entitled to copyright protection. Because of the "character" holding, the Ninth Circuit panel declined to decide this issue. Towle also argues that there can be no copyright in the television and movie versions of the Batmobile, as the producers of these vehicles obtained design patent protection on them, which is now clearly expired. However, and citing US Auto Parts Network, Inc v. Parts Geek, 692 F.3d 1009 (9th Cir 2012), the Court notes that parties can now obtain both a design patent and copyright in a work, relying upon 60 Fed. Reg. 15605-01, 15605 (March 24, 1995).