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Character Copyright After DC Comics V. Towle Missy G Santa Clara Law Review Volume 57 | Number 2 Article 5 10-5-2017 Shadow of the Bat[mobile]: Character Copyright After DC Comics v. Towle MIssy G. Brenner Follow this and additional works at: http://digitalcommons.law.scu.edu/lawreview Part of the Law Commons Recommended Citation MIssy G. Brenner, Comment, Shadow of the Bat[mobile]: Character Copyright After DC Comics v. Towle, 57 Santa Clara L. Rev. 481 (2017). Available at: http://digitalcommons.law.scu.edu/lawreview/vol57/iss2/5 This Comment is brought to you for free and open access by the Journals at Santa Clara Law Digital Commons. It has been accepted for inclusion in Santa Clara Law Review by an authorized editor of Santa Clara Law Digital Commons. For more information, please contact [email protected], [email protected]. SHADOW OF THE BAT[MOBILE]: CHARACTER COPYRIGHT AFTER DC COMICS V. TOWLE Missy G. Brenner* Introduction ................................................................................ 482 I. Background ............................................................................. 483 A. The Scope of Copyrightable Subject Matter ............. 483 1. Requirements of Copyrightability ...................... 483 2. Key Limitations on Copyrightable Subject Matter ................................................................. 484 a. Useful Articles .............................................. 484 b. The Idea/Expression Dichotomy ................... 485 II. Character Copyright ............................................................. 486 A. An Overview of the Doctrine .................................... 486 1. “Sufficiently Original” ........................................ 486 2. Applying the Idea/Expression Dichotomy .......... 487 B. The Evolution of Character Copyrightability ............ 489 1. Judge Learned Hand’s Influence ........................ 489 2. A Tale of Two Tests ........................................... 490 a. The “Sam Spade Test” .................................. 490 b. The Delineation Test ..................................... 492 C. Data Points in an Unpredictable Doctrine ................. 493 III. Batman and Friends . and Their Cars? ............................ 500 A. Superheroes and the Delineation Test ....................... 500 B. But . A Car? ........................................................... 502 IV. Analysis ............................................................................... 505 A. Forcing the Suit ......................................................... 506 B. Misplaced Reliance on Halicki ................................. 506 C. Flaws in the Test Itself .............................................. 507 * Missy Brenner is Managing Editor of Santa Clara Law Review Volume 57 and President of the first student chapter of ChIPs, a national nonprofit for the advancement of women in intellectual property fields. She thanks Professor Tyler Ochoa for his mentorship in writing this Comment. In addition, she thanks her husband, their families, and their two chinchillas for their support. 481 482 SANTA CLARA LAW REVIEW [Vol:57 D. “Hard Cases Make Bad Law” ................................... 511 V. Proposal ................................................................................. 513 A. The Judicial Fix ......................................................... 513 B. Reserving Character Copyright to Characters ........... 514 C. Giving In to the Silent Trend: Use Trademark Law Explicitly .................................................................. 515 Conclusion ................................................................................. 517 INTRODUCTION For a world constantly trying to make sense of its own struggles, comic book writers’ ability to divide reality into boxes and speech bubbles is as refreshing as it is entertaining. In comics, villains are identifiable external sources of chaos which routinely are brought to justice by an array of heroes—some of whom are relatably conflicted, others idealistically noble. A steady stream of reboots, film and television adaptations, and superhero-themed merchandise allow us to follow unending variations on our favorite theme. Given that superhero characters work as hard for the success of their franchises as they do for their beloved cities, it is surprising how much intellectual property law struggles with the protection of characters. Any new hero on the scene must not be too similar to those who have gone before, as claims for copyright infringement of famous characters are perhaps harder to defeat than the notorious Bane.1 Our intuition tells us that a character like Superman feels protectable.2 But what about Spiderman’s Aunt May? Intuition is less helpful. Does the copyright in the comics in which she appears also protect her image when used in a different work? Characters cannot be registered separately for copyright,3 but that does not exclude them from copyright protection. 4 Our Aunt May’s exact visual depiction, straight out of the comic book cell, is protected as part of the copyrighted comic.5 However, if another depiction is less exact, the law struggles to 1. Bane is counted among Batman’s most challenging villains—he is generally known as “The Man Who Broke the Bat” after snapping Batman’s back across his knee. See DOUG MOENSCH (w), JIM APARO (p) & DICK GIORDANO (i), BATMAN VOL. 1 SER. NO. 497: THE BROKEN BAT (1940). 2. See, e.g., Detective Comics v. Bruns Publ’ns, 111 F.2d 432 (2d Cir. 1940) (holding Superman copyrighted). 3. U.S. COPYRIGHT OFFICE, COMPENDIUM OF U.S. COPYRIGHT OFFICE PRACTICES § 313.4(H) (3d ed. 2014). 4. COPYRIGHT ACT OF 1976, 17 U.S.C. § 408 (West 2017). (“[R]egistration is not a condition of copyright protection.”). 5. See discussion infra Part II. 2017] SHADOW OF THE BAT[MOBILE] 483 determine at what point that depiction shows an older woman, not Aunt May. Without her name, would she even be recognizable? And since names cannot be protected by copyright,6 why does the name seem important to the analysis? Courts have attempted to articulate a test for when the copyright in an original work should also shield characters from copying7—essentially, trying to determine whether an Aunt May should be treated like a nameless background character, or like a Superman. Unfortunately, the result is an unsatisfying scattershot of case law that creates unpredictable results for authors.8 In a recent addition to this cluster of cases, DC Comics v. Towle,9 the Ninth Circuit took an expansive view of character copyright that declared Batman’s gadget-equipped vehicle, the Batmobile, protectable as a character.10 This Comment analyzes the reasoning and policy repercussions of the Towle decision and its inadministrable “gut feeling” protection scheme. Part I provides brief background information regarding modern copyright law. Part II traces the history and expansion of character copyright, including problematic precedents created throughout the doctrine’s development. Part III explores the culmination of these precedents in the Towle decision. Part IV analyzes the legal repercussions involved in the Towle reasoning and current state of character copyright law. Finally, Part V offers a proposal for a new character copyright test, or, better, a switch to trademark law that uses overtones already present in character cases to alleviate future uncertainty. I. BACKGROUND A. The Scope of Copyrightable Subject Matter 1. Requirements of Copyrightability Copyright arises in any original work of authorship that is fixed in a tangible medium.11 An author is a person “to whom anything owes its 6. Copyright Protection Not Available for Names, Titles, or Short Phrases, United States Copyright Office Circular 34, https://www.copyright.gov/circs/circ34.pdf; see, e.g., Downing v. Abercrombie & Fitch, 265 F.3d 994, 1004 (9th Cir. 2001). 7. See discussion infra Part II. 8. See discussion infra Parts II, III, IV. 9. DC Comics v. Towle, 802 F.3d 1012 (9th Cir. 2015). 10. Id. at 1022–23. The court employed a three-part test for character copyrightability, relying heavily on a single precedent for the proposition that a car could be a character. See discussion infra Parts IV, V. 11. 17 U.S.C. § 102 (2017). Eight potential categories are enumerated, but the list is non-exhaustive and the statute contemplates new methods of expression. 17 U.S.C. § 102(a) (2017). The work is fixed when it is embodied with the author’s authority in either a copy or 484 SANTA CLARA LAW REVIEW [Vol:57 origin; originator; maker.”12 The originality requirement entails at least some “intellectual invention.”13 Still, the degree of originality required is low—independent creation by an author with minimal creativity is sufficient.14 Even a selection or arrangement of individually non- copyrightable elements may give rise to a copyright, albeit only in the creative arrangement.15 In contrast, when telephone books containing non-copyrightable factual information are arranged in the standard way (alphabetically by last name), there is no originality.16 The Supreme Court has rejected the historic “sweat of the brow” doctrine, which emphasized that copyright was the reward for an author’s time, effort, and expense.17 Copyright must have some limits: “not all copying . is copyright infringement.”18 As copyright arises automatically in all works of authorship that are fixed in a tangible medium, it is important that the doctrine maintains existing limitations to avoid impoverishing the public domain. The doctrines to follow provide some of these limitations. 2.
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