By: Stephanie Costa

DC Comics is the publisher and copyright owner of the Batman comic books, which, since 1941, included the Batmobile, Batman’s car.[1] Reserving the exclusive merchandising rights to all products manufactured or distributed under the name of any character in the Batman comic books for itself, DC Comics licensed the comic to American Broadcasting Company (“ABC”) to create the 1966 Batman television show and to Batman Productions, Inc. (BPI), who sub-licensed its rights to Warner Bros., Inc., to produce the 1989 movie BATMAN among others.[2] Gotham Garage, owned by Defendant Mark Towle, manufactures and sells replicas of automobiles, including Batmobile replicas, from the 1966 television show Batman and the 1989 film BATMAN for approximately $90,000 each.[3] This raised the issue as to whether the Batmobile is a copyrightable character and whether Mark Towle’s replicas violated DC Comics’ copyright and trademark rights.

The Ninth Circuit Court ruled that the Batmobile is a copyrightable character, affirming the district court’s grant of a summary judgment in favor of DC Comics for copyright and trademark infringement against Mark Towle. Thus, the Court rejected Towle’s argument that his replicas of the Batmobile, as it appeared in the 1966 television series and 1989 movie, did not infringe on DC’s underlying work because the series and movies were produced by third parties, pursuant to licensing agreements with ABC and BPI.[4] The Court did not need to apply the two-part “substantial similarity” test to determine whether a plaintiff had copied the substance of the original work because Towle admitted to copying the design.[5] Thus, the Court affirmed the summary judgment ruling in favor of DC Comics for copyright infringement.[6]

From prior case law, the Court developed a three-part test to help determine whether a character in a comic book, television program, or motion picture is entitled to copyright protections and applied the test to the Batmobile. [7] For a character to be entitled to copyright protections it must: (1) generally have “physical as well as conceptual qualities;” (2) display consistent, identifiable character traits and attributes to be recognizable as the same character whenever it appears in media, even if its appearance varies; and (3) the character must be “especially distinctive” and “contain some unique elements of expression.”[8]

The Court found that the Batmobile satisfied the first prong of the test because its appearance in graphic novels, television shows, and movies gave the Batmobile physical and conceptual qualities.[9] Batmobile was sufficiently delineated and recognizable to satisfy the second prong because it is consistently portrayed as a sleek, powerful, crime-fighting vehicle high-tech gadgets and bat-like qualities. The Court found that because the Batmobile is known as Batman’s sidekick and has a recognizable name, it has the distinctive character traits required to satisfy the third prong of the test.[10] Accordingly, the Court concluded that the Batmobile is a character that qualifies for copyright protection.[11] Because there is no dispute that DC Comics is the original creator of the Batmobile character, the Court held that DC Comics’ ownership of a copyright interest in the 1966 and 1989 depictions of the Batmobile is supported by the Copyright Act, which states “copyright ownership ‘vests initially in the author or authors of the work,’ which is generally the creator of the copyrighted work.”[12]

This decision clarifies the Court’s ambiguity in Halicki Films, LLC v. Sanderson Sales & Marketing regarding whether inanimate objects can be considered characters garnering copyright protection. [13] Entertainment conglomerates such as the Walt Disney Company, who took many of its characters from the Grimm Brothers, have ensured through lobbying and litigation that no one will borrow from Disney as it has from the Grimm Brothers.[14] However, until now, inanimate objects did not seem to garner such stringent protections. By ruling that the Batmobile is a copyrightable character, the Court may have opened up a Pandora’s box of litigation from copyright owners claiming that the objects in their stories are copyrightable as characters too.

The Court will need to draw a line of what objects are no more than props. For example, Thor’s hammer from the Marvel Worldwide Inc., comics and movies has qualities that would fulfill the Court’s three-prong test. However, the hammer also has qualities of an old generic hammer. From this decision, a prediction on whether the sales of an object such as “Rustic Nordic God Hammer” would violate Marvel Worldwide Inc.’s copyright protections cannot be made assuredly. The question of what objects are copyrightable characters remains. This was the decision the Ninth Circuit deserves, but not the one it needs right now. So we’ll contest it. Because the Court can take it. Because it’s not our hero. It’s a silent guardian, a watchful protector. Protecting our copyrights and our rights to fair use.

[1] DC Comics v. Towle, No. 13-55484, 2015 U.S. App. LEXIS 16837, at *2-3 (9th Cir. Cal. Sept. 23, 2015).

[2] Id. at 3, 5-6.

[3] Id. at 7.

[4] Id. at 30-31.

[5] Id. at 31.

[6] Id. at 32.

[7] Id.at 12,13,16 (citing Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213, 1224 (9th Cir. 2008); Walt Disney Prods. v. Air Pirates, 581 F.2d 751 (9th Cir. 1978); Warner Bros. Entm’t, Inc. v. X One X Prods., 644 F.3d 584, 599 n.8 (8th Cir. 2011); Metro-Goldwyn-Mayer, Inc. v. Am. Honda Motor Co., 900 F. Supp. 1287, 1295-96 (C.D. Cal. 1995) (holding James Bond is a copyrightable character regardless of portrayals by different actors)).

[8] Id. at 17-18.

[9] Id. at 18.

[10] Id. at 19.

[11] Id. at 21.

[12] Id. at 23, 27-28.

[13] 547 F.3d 1213, 1225 (9th Cir. Cal. 2008).

[14] See generally Sonny Bono Copyright Term Extension Act, Pub. L. No. 105-298, 112 Stat. 2827 (1998).