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Home , Batman (franchise), Batman (serial), Batman (truck), Batman Returns, Batmobile, Burt Ward

Holy Copyright Infringement, !

by David Baker

atman. The name conjures so many tires, and the ever-important seat belts. The Bam! Ka-Pow! Biff! iconic images. There’s the Caped V version of the was replete with In May 2011, DC Comics filed suit Crusader and the Boy Wonder, gadgets such as the Batcomputer and the against Mr. Towle and Garage in played to campy perfection by Batphone, but the versions that made it into U.S. District Court for the Central District and in the ’s Batman and of and the case was assigned to B1966 television series. There’s and the trilogy of Judge Ronald S.W. Lew. DC Comics v. Towle, and the Bat Signal. There’s Cesar Romero, films Batman( Begins, The Dark Knight, and CV 11-3934 RSWL OPx, 2013 WL 541430 , and , each of ) were more lethal and (C.D. Cal. Feb. 7, 2013). Towle had been whom portrayed the in his unique way. intimidating. operating Gotham Garage as an automobile There’s and the Bat Cave. Unfortunately for Mr. Towle, DC Comics, workshop, creating and selling vehicle There’s the black cowl, the flowing cape, and Inc., a Warner Bros. subsidiary, owns the modification kits and full-size replicas of the utility belt. There’s and exclusive rights to all things Batman, including the 1966 and 1989 Batmobile. The replicas the entire Dark Knight series. Through it all, the Batmobile designs, and the were made to look just like the originals, and there has always been Batman’s distinctive publisher is very protective of its intellectual included well-recognized trademarks from ride, the Batmobile. property. Historically, DC Comics has franchise such as the distinctive And, who wouldn’t want to drive the recognized the value of the designs (an bat silhouette. However, the replicas were Batmobile or, at least, a replica of the famed original 1966 Batmobile (Barris built a total not licensed by DC Comics, and in the vehicle? Santa Ana entrepreneur Mark of four) recently sold at auction to a private complaint the company alleged copyright Towle thought the same thing and set out to collector for more than $4,600,000) and has infringement, trademark infringement, and manufacture and sell replicas of the classic allowed only very limited reproductions of the unfair competition. 1966 version and the exotic 1989 version Batmobile. Likewise, DC Comics has been In December of last year, Towle and DC through his company, Gotham Garage. The protective of the Batman name and the logos Comics filed dueling motions for partial problem? He didn’t own the intellectual associated with the fictional crime fighter. summary judgment seeking summary property rights associated with the Batmobile. judgment as to DC Comics’ trademark, copyright, and unfair competition causes of To the Batpoles! action, and on Towle’s laches defense. And, in From its humble beginnings as a plain March of this year, Judge Lew considered and on the pages of Detective ruled on the motions. Comics No. 27 in May 1939, the Batmobile has been reimagined and In the End, Veracity and Rectitude reengineered in a myriad of ways, but Always . ever since Batman and responded The core of DC to Commissioner Gordon’s first call for Comics’ argument was help on the 1966 Batman Television that Towle had infringed series, the Batmobile has upon a valid copyright in the always been as recognizable designs of the . DC as the man himself. Comics argued that the 1966 The Batmobile leapt onto and 1989 Batmobile vehicles television screens in 1966 as constituted a protectable a highly modified concept character in the fictional (designed by George Barris) Batman universe. Towle countered based on a , that the elements he had copied were sporting a glossy, jet-black not protectable under the Copyright Act paint job highlighted by because they were functional. Further, Towle “fluorescent cerise” with dual disputed that DC Comics had established Plexiglass canopies, chrome ownership of valid copyrights to the 1966 exhausts sprouting from the and 1989 Batmobiles. rear deck, Mickey Thompson In order to establish copyright

12 Orange County Lawyer infringement, two elements must be proven: determining whether visually depicted Towle never denied that he had copied the (1) ownership of a valid copyright, and (2) characters are subject to copyright protection. Batmobile vehicles, but he did argue that copying protected elements of the original Olson v. Nat’l Broad. Co., 855 F.2d 1446, 1452 the copying of a two-dimensional Batmobile work. Copying is established under the (9th Cir. 1988). character into three-dimensional forms is not “substantial similarity” test by showing that Judge Lew wrestled with copyright infringement. He was wrong. Judge the works in are “substantially this question and ultimately applied the Lew noted that “copyright in a work protects similar in their protected elements” and “character delineation” test articulated by the against unauthorized copying, not only in that the infringing party had access to the Ninth Circuit in Rice v. Fox Broadcasting the original medium in which the work was copyrighted work. Co., 330 F.3d 1170 (9th Cir. 2003). In Rice, produced, but also in any other medium as Generally, “substantial similarity” is the the Ninth Circuit explained that “characters well.” Id. at *15. Towle’s manufacturing of more difficult element to prove. A court must that are ‘especially distinctive’ or ‘the story an unauthorized three-dimensional copy of first distinguish between the protectable and being told’ receive protection apart from the a two-dimensional comic book character still unprotectable material and then, as established copyrighted work.” Rice, 330 F.3d at 1175. constituted copyright infringement. in Apple v. Microsoft, the court must apply a “Especially distinctive” fictional characters Towle’s argument that the Batmobile is two-part “intrinsic versus extrinsic” test that have received copyright protection are only a car and that the design of a car is not to determine whether the two works are those that have displayed consistent, widely protectable under copyright law also did not substantially similar. Apple v. Microsoft, 35 identifiable traits, such as Godzilla, James hold purchase with Judge Lew. Instead, the F.3d 1435, 1442 (9th Cir. 1994). Bond, and Rocky Balboa. court found that the Batmobile is a “pictoral, On the issue of ownership, Judge Lew graphic, and sculptural work” entitled found that DC Comics had reserved all rights to copyright protection and courts have to the characters and elements depicted in the DC Comics traditionally accorded copyright protection Batman television series and the 1989 Batman to such works incorporated within a useful through licensing agreements. Further, article when those works can be identified the court found that DC Comics clearly argued that the separately from, and are capable of existing owned copyrights to the original comic book independently of, the utilitarian aspects of series in which the Batmobile originally 1966 and 1989 the useful article. Judge Lew commented that appeared. And, as the copyright holder to Towle “did not copy the design of a mere car; he the Batman comic books, Towle had the Batmobile vehicles copied the Batmobile character.” And, “[t]he exclusive right to prepare derivative works. fact that the unauthorized Batmobile replicas This right extends beyond mere protection constituted a that [d]efendant manufactured—which are against unauthorized copying to include the derivative works—may be ‘useful articles’ is right to assert copyright infringement of the protectable irrelevant. A derivative work can still infringe derivative work. the underlying copyrighted work even if the Judge Lew reasoned that each of the character in the derivative work is not independently entitled Batmobiles at issue was a derivative work to copyright protection.” Id. at *17. of DC Comics’ Batman comic book series fictional Batman In ruling on the motions, the court held and the Batman television series, and that that “all of the features that distinguish Towle had copied those vehicles. Thus, the universe. the Batmobile from any other car—the court held that DC Comics had standing to fantastical elements that feature bat design, sue Towle for copyright infringement. DC Judge Lew found that the Batmobile such as the bat tailfin and the various gadgetry Comics, 2013 WL 541430 at *13. was “sufficiently delineated” to constitute that identify the vehicle as the Batmobile— On the issue of validity, Towle argued that a character entitled to copyright protection are protectable elements.” Id. at *18. Thus, the Batmobile should not be entitled to any because it conveys a set of distinct the Batmobile was subject to copyright copyright protection because it is a functional characteristics. The court reasoned that “[i]t protection, Towle infringed that copyright, vehicle. DC Comics countered, arguing is undeniable that the Batmobile is a world- and DC Comics’ motion was granted. that the Batmobile is entitled to copyright famous conveyance in the Batman franchise, protection because it is a “character” in the exhibiting a series of readily identifiable and Curses! Foiled by the Bat and His Boy fictional Batman universe. distinguishing traits.” DC Comics, 2013 WL Wonder Again! As established in the case, 541430 at *13. The court also found that In marketing his replica vehicles, Towle Warner Bros. Inc. v. American Broadcasting Co. the case is analogous to one which involved had included the words “Batman” and Inc., 720 F.2d 231, 235 (2d Cir. 1983), and the the “Godzilla” character, Toho Co., Ltd. v. “Batmobile,” and had used at least three Freddy Krueger case, New Line Cinema Corp. William Morrow and Co., Inc., 33 F. Supp. versions of the bat symbol. DC Comics v. Bertlesman Music Group, Inc., 693 F. Supp. 2d 1206, 1215 (C.D. Cal. 1998). As with contended that this caused consumer 1517, 1521 n.5 (S.D.N.Y. 1988), the owner of Godzilla, “[e]ven though the Batmobile is confusion about the source of the vehicles and a copyright in various works embodying a not identical in every comic book, film, or thus constituted trademark infringement. character (such as a television series or movie) , it is still widely recognizable A claim for trademark infringement can acquire copyright protection for the because it often contains bat-like motifs, such requires that a plaintiff show: (1) that it character itself. The Ninth Circuit recognized as a bat-faced grill or bat-shaped tailfins in has valid trademark rights, and (2) that this interpretation in Olson v. National the rear of the car, and it is almost always jet defendant’s use of a similar mark is likely to Broadcasting Co., but never established a black.” DC Comics, 2013 WL 541430 at *15. cause confusion. Id. at *3. The determination clear legal standard for courts to apply in On the issue of “substantial similarity,” of the likelihood of confusion lies within the www.ocbar.org July 2013 13 ON TOPIC exclusive jurisdiction of the found that DC Comics and Comics argued that defendant’s use of bat court and, in the Batmobile 1939 Gotham Garage were in symbols on its replica Batmobiles was likely case, the court found that The Batmobile appears on the direct competition; they to cause confusion for U.S. consumers with DC Comics had valid pages of . directly marketed their the DC Comics’ trademarks and, as such, this trademark rights in the 1966 vehicles online and at likelihood of confusion constituted common trademarks at issue in the The Batmobile debuts on car shows. The greater law unfair competition. case, as all of the marks had the degree of overlap of Courts have uniformly held that trademark the television screen. been properly registered with predominant purchasers of infringement is a specific aspect of unfair the U.S. Patent and Trademark the goods and the more the competition and the ultimate test is whether Office. Id. at *4. respective marketing approaches the public is likely to be deceived or confused “Likelihood of confusion” is the resemble one another, the more likely by the similarity of the marks. The decisive core element of trademark infringement, there is to be confusion. Id. test of common law unfair competition is i.e., whether the similarity of the marks is 6. The Type of Goods or Services and the the same as for false designation of origin: likely to confuse customers about the source Degree of Care Likely to Be Exercised Is the public likely to be deceived by the of the goods or services. And, to determine by the Purchaser in Selecting Them.The infringer’s conduct about the source of goods the likelihood of confusion, courts analyze court considered the type of goods and or services? And whether the likelihood a series of key factors originally set forth in the degree of care likely to be exercised of public confusion, regardless of intent, AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, by the purchasers using the “reasonably warrants injunctive relief. Id. at *8. 348-49 (9th Cir. 1979) (and commonly prudent consumer” standard. Where, In the Batmobile case, Judge Lew held known as the “Sleekcraft test”). In ruling as here, consumers are purchasing more that Towle’s use of bat symbols was likely to on the motions, the court analyzed each expensive items, they are expected to be confuse consumers and cause harm to DC Sleekcraft factor in turn: more discerning. The district court found Comics. Thus, the court granted DC Comics 1. The Strength of Plaintiff’s Mark. The that a reasonably prudent consumer would summary judgment on its unfair competition court found that the strength of the likely be more discriminating and be likely claim. Id. trademarks at issue weighed in favor of to ask questions regarding the Batmobile finding a likelihood of confusion because vehicles. Id. at *7. Tune In Tomorrow—Same Bat-time, Same the DC Comics’ marks, as wholly made-up 7. Defendant’s Intent in Selecting the Bat-channel! terms, were fanciful marks (the strongest Subject Mark. The court found that The case had been set for trial on March type). In addition, the court found that because Towle admitted his knowledge 26. But, as with most of Batman’s foes, Towle the marks were strong because they were of the Batman property including the knew he had been beat when the court granted memorable and the public would likely Batmobile vehicles and the trademarks, summary judgment on the liability claims. associate them with the marks’ owner. DC and because he knowingly copied the He and DC Comics reached a confidential Comics, 2013 WL 541430 at *6. marks, this permitted an inference of settlement that included a stipulated 2. The Proximity of the Goods.Because the intent to deceive the public. Id. injunction against Gotham Garage’s making goods at issue were the same, the proximity 8. The Likelihood of Expansion of the any more replica Batmobiles. or relatedness of the goods favored a Product Lines into New Areas. The court The citizens of Gotham City can now finding of likelihood of confusion. Id. could have considered the likelihood of rest easier, knowing that when they see the Goods are proximate if they are “similar expansion of the product lines, but this Batmobile on the streets it is the real thing in use and function” and “would be was unnecessary as the parties already (or one of the very few licensed replicas) and reasonably thought by the buying public competed to a significant degree because it means Batman is still hard at work fighting to come from the same source if sold under they sell related products and use similar to keep them safe. the same mark.” Sleekcraft, 599 F.2d at marketing channels. Id. 348, 350. Based on this eight-part analysis, the 3. The Similarity of the Marks. The court district court found that the relevant Sleekcraft David Baker is head of the IP practice at found that there was no dispute that factors supported a finding of likelihood of the Orange County law firm of Hart, King & Towle had used marks identical to DC confusion as a matter of law, and because Coldren. He has over 25 years of wide ranging Comics’ registered marks. Thus, there there were no triable issues of fact with experience in intellectual property protection was no genuine issue of fact regarding the regard to the validity of DC Comics’ marks, and enhancement, commercial transactions similarity of the marks. DC Comics, 2013 the court granted DC Comics’ motion and and litigation, and real property litigation. WL 541430 at *8. denied Towle’s motion as to the trademark You can reach Dave at [email protected]. 4. Evidence of Actual Confusion (If Any infringement claim. Id. Exists). The district court acknowledged This article first appeared inOrange County that the Ninth Circuit has recognized that Riddle Me This Lawyer, July 2013 (Vol. 55 No. 7), p. 12. evidence of actual confusion is not required DC Comics included an unfair The views expressed herein are those of the to establish likelihood of confusion. competition claim in its complaint in the Author. They do not necessarily represent the Nevertheless, Towle admitted that “most” hopes of obtaining an injunction against views of Orange County Lawyer magazine, of his potential customers asked if he had Towle’s allegedly infringing activities. Just the Orange County Bar Association, the a relationship with Warner Bros, or was as with the trademark infringement claim, Orange County Bar Association Charitable licensed by Warner Bros. Id. at *6. the element of likelihood of confusion is Fund, or their staffs, contributors, or 5. The Marketing Channels Used for the critical in determining the validity of a claim advertisers. All legal and other issues must be Respective Goods or Services. The court for common law unfair competition. DC independently researched.

14 Orange County Lawyer