LOS ANGELES www.dailyjournal.com MONDAY, OCTOBER 12, 2015 Batmobile ruling not new, but the testContent is Matters By Andrew J. Thomas Godzilla were protectable, even though cluding Superman, Batman, Tarzan and, CONTENT MATTERS both had changed significantly across most recently, Holden Caulfield. ecognizing that characters often the numerous films in which they ap- The 9th Circuit initially took a much This is a monthly column devoted to matters are as valuable to content cre- peared. The court explained that the fact narrower approach to the issue in a of interest to those who create content of all kinds(entertainment, news,software, advertis- ators as plots and stories, courts R that “many actors can play Bond is a tes- case involving the iconic detective Sam ing, etc.) and bring that content to market. Our have long held that fictional characters tament to the fact that Bond is a unique Spade. In Warner Bros. Pictures v. CBS, hope is to shed light on key issues facing the may be independently protected under character whose specific qualities re- 216 F.2d 945 (9th Cir. 1954), the court creative content community. If you have ques- copyright law. The scope of that protec- main constant despite the change in announced that a literary character gen- tions, comments or topic ideas, let us know at tion can become murky when fictional actors.” MGM v. American Honda, 900 erally will not qualify for copyright pro- [email protected]. Because content matters. characters, like real-world individuals, F. Supp. 1287, 1296 (C.D. Cal. 1995). tection but that it might be protected if it change over time — altering their ap- Even transforming from a malevolent “really constitutes the story being told.” pearance or evolving new traits. Last monster to a benevolent one did not By contrast, the court said, if the charac- prong mainly differentiates purely liter- month, the 9th U.S. Circuit Court of change the fact that “Godzilla is always ter “is only the chessman in the game of ary characters from the visually depicted Appeals sought to bring clarity to this a pre-historic, fire-breathing, gigantic telling the story,” it will not be protected. characters present in comic books, tele- question in resolving an unusual case dinosaur alive and well in the modern Owing in part to the posture of the case, vision shows, and films — since, asAir involving claims that an inanimate ob- world.” Toho Co. v. William Morrow & the court held there was no copyright in Pirates recognized, visually represented ject — the Batmobile — is a “character” Co., 33 F. Supp. 2d 1206, 1216 (C.D. the Sam Spade character separate from characters present many more opportu- subject to copyright protection. Cal. 1998). In Towle, the court found the copyright in the “Maltese Falcon” nities for delineation. The second prong In DC Comics v. Towle, the 9th Cir- that the Batmobile’s core attributes had story. of the 9th Circuit’s formulation is the cuit affirmed a district court summary been sufficiently delineated in comic Subsequent courts have questioned Nichols “character delineation” test. judgment ruling that defendant Mark books to be a protectable character, even whether the story-being-told test is dicta And the third prong merely underscores Towle infringed DC Comics’ rights un- before DC Comics licensed others to or an alternative holding, since the 9th that “sufficiently delineated” means “re- der copyright law when he built and sold create the derivative television show and Circuit’s interpretation of the contract ally quite delineated.” replica cars that imitated the Batmobile 1989 movie. that purportedly assigned the “Maltese One question left open is how far as it appeared in the 1966 “Batman” What is new about the 9th Circuit’s Falcon” rights appeared to fully resolve courts will go in according copyright television show and the 1989 “Batman” decision in Towle — or at least what the issue. Plainly motivated by a desire protection to inanimate objects. Will motion picture. In finding the Batmobile is presented as new — is the opinion’s to protect the original author’s ability every unique prop get its own copyright to be a copyrightable character, the court three-part test that aims to distill a gen- to reuse his main character, even after — at least where it appears in multiple emphasized the vehicle’s “unique and eral rule for all situations where copy- he had assigned his story to the studio, films or TV shows? That seems unlikely, highly recognizable name,” its consis- right is claimed in a fictional character the court in Warner Bros. v. CBS rather especially where a prop serves primarily tent “bat-like” appearance, and its status appearing in a comic book, television ironically formulated a test that afforded as an aid in delineating a central human as a highly interactive, sleek and maneu- program or motion picture. First, the only quite narrow copyright protection character — as in the case of Yoda’s verable “crime-fighting car” with “high- character must generally have “physical to literary characters. green light saber, Indiana Jones’s fedo- tech gadgets and weaponry.” as well as conceptual qualities.” Second, The 9th Circuit’s restrictive formula- ra and bullwhip, or Wonder Woman’s The result itself does not break signif- the character must be “sufficiently delin- tion of the story-being-told test was re- golden lasso. This may be where the icant new ground. Federal courts have eated” to be “recognizable as the same laxed somewhat in Walt Disney Produc- first prong of the Towle test makes a held since the early 20th century that character whenever it appears.” Third, tions v. Air Pirates, 581 F.2d 751 (9th real difference — requiring “conceptual fictional characters ranging from Su- the character must be “especially dis- Cir. 1978). That case involved the defen- qualities” on top of the “physical qual- perman and Tarzan to Sherlock Holmes, tinctive” and exhibit “unique elements dants’ use of classic Disney characters ities” that any visually depicted object James Bond and Godzilla may be in- of expression.” Each element of this test in counter-culture cartoons featuring will display. dependently protected under copyright has a familiar ring. drug use, promiscuity and other themes Or perhaps cars are a special case. law. In Halicki Films v. Sanderson Sales The 2nd U.S. Circuit Court of Ap- at odds with Disney’s family-friendly Houses, trees and other items may be & Marketing, 547 F.3d 1213 (9th Cir. peals first addressed copyright protec- image. Holding that the characters in imbued with human-like qualities in 2008), the 9th Circuit even held that an tion of fictional characters in Nichols v. question were copyrightable, the court some works of fiction, but what other iconic car could qualify for a “fictional Universal Pictures, 45 F.2d 119 (2d Cir. distinguished the “Sam Spade” case on objects have been so anthropomorphized character” copyright — in that case, the 1930). Judge Learned Hand explained the grounds that the Disney characters in popular culture — from “Transform- muscle car “Eleanor” that appeared in that a character could be protected by were visually depicted in the works un- ers” to KITT to Herbie the Love Bug, all the 1971 film “Gone in 60 Seconds” and copyright if sufficiently delineated, but der copyright, while Spade had existed the way back to “My Mother the Car”? its 2000 remake and that displayed an that stock or flat characters enjoy no only as a literary creation. Because car- almost emotional dislike to being stolen. such protection. “[T]he less developed toon characters have “physical as well as Andrew J. Thomas is a partner in the Con- The fact that the Batmobile was the characters,” Hand said, “the less they conceptual qualities,” the court reasoned tent, Media and En- tertainment group in protected even though it has varied in can be copyrighted; that is the penalty an they were “more likely to contain some Jenner & Block’s Los appearance over the years likewise is author must bear for marking them too unique elements of expression” than a Angeles office. He consistent with case law holding that fic- indistinctly.” This “character-delineation purely literary character. represents content tional characters may evolve over time, test” is a logical extension of copyright In Towle, the 9th Circuit formulated owners in copyright, yet still merit copyright protection, pro- law’s idea-expression dichotomy: If a its three-part test as a synthesis of these trademark and First vided they retain a core set of distinctive character is too indistinct, it represents decisions. On closer inspection, how- Amendment matters. attributes. a mere idea and not the expression of ever, the three prongs largely collapse He can be reached at In the 1990s, for example, the Cen- an idea. Following Nichols, courts in into two, and the test looks a lot like a (213) 239-5155 or tral District of California found that the 2nd Circuit have upheld copyright repackaged version of the 2nd Circuit’s ANDREW J. THOMAS [email protected]. characters as diverse as James Bond and protection for numerous characters, in- character delineation test. The first Jenner & Block Reprinted with permission from the Daily Journal. ©2015 Daily Journal Corporation. All rights reserved. Reprinted by ReprintPros 949-702-5390..