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Media Alerts - DC Comics v. Towle - Ninth Circuit
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November 29, 2015
  DC Comics v. Towle - Ninth Circuit
Headline: The Ninth Circuit creates a new three-prong test for determining whether a character in a comic book is entitled to copyright protection.

Areas of Law: Copyright and Trademark Law

Issues Presented: Whether an automobile, as it appeared in the comic books, television series, and motion picture is a character entitled to copyright protection where: (1) the automobile has physical and conceptual qualities; (2) is recognizable as the same character whenever it appears due to its consistent identifiable character traits and attributes, but does not have the same physical appearance in every context; and (3) the character is especially distinctive and is not a stock character.

Whether a manufacturer of replica automobiles violated exclusive copyrights when: (1) the material copied was of an authorized derivative work rather than the underlying work; (2) the allegedly infringing replicas look substantially different from any incarnation in the underlying work; and (3) the derivative work was created by third parties rather than the copyright owner.

Whether the doctrine of laches is available in cases of willful trademark infringement.

Brief Summary: Defendant-Appellant in a copyright and trademark infringement matter challenged the district court's entry of summary judgment on grounds that: (1) the Batmobile as it appeared in comic books, television series, and motion pictures was not entitled to copyright protection; (2) Defendant-Appellant's replicas of the Batmobile as it appeared in the 1966 television series and 1989 motion picture did not infringe any copyrights; and (3) Defendant-Appellant was entitled to assert a laches defense. Relying on precedent, including Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213 (9th Cir. 2008), the panel created a new three-prong test to determining whether a character in a comic book, television program, or motion picture is entitled to copyright protection; application of the new test led the panel to conclude that the Batmobile was a character entitled to copyright protection. The panel, guided by its prior decision in Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994) and the First Circuit's decision in Gamma Audio & Video, Inc. v. Ean-Chea, 11 F.3d 1106 (1st Cir. 1993), then determined that Defendant-Appellant's replicas of the Batmobile as it appeared in the 1966 television series and 1989 motion picture infringed DC's copyrights notwithstanding that Defendant-Appellant's replicas were copies of derivative works because the author of an original underlying work has standing to sue a third party who makes an unauthorized copy of an unauthorized derivative work to the extent that the material copied derived from the underlying work. Finally, the panel, applying Evergreen Safety Council v. RSA Network, Inc., 697 F.3d 1221, 1228 (9th Cir. 2012) and Lindy Pen Co., Inc. v. Bic Pen Corp., 982 F.2d 1400, 1406 (9th Cir. 1993), determined that the doctrine of laches cannot be raised in cases of willful infringement.

Significance: The Ninth Circuit created a new three-prong test for determining whether a character in a comic book, television program, or motion picture is entitled to copyright protection. First, the character must generally have "physical as well as conceptual qualities." Second, the character must be "sufficiently delineated" so as to be recognizable as the same character whenever it appears by displaying consistent identifiable character traits and attributes, but it need not have a consistent appearance. Third, the character must be "especially distinctive" and "contain some unique elements of expression," but cannot be a stock character. The Ninth Circuit also reaffirmed that the author of an original underlying work has standing to sue a third party who makes an unauthorized copy of an unauthorized derivative work to the extent that the material copied derived from the underlying work and that the doctrine of laches cannot be raised in cases of willful infringement.

Extended Summary:

Plaintiff-Appellee, DC Comics (DC) is the publisher and copyright owner of the Batman character and Batman's personal crime-fighting vehicle, the Batmobile. Defendant-Appellant, Mark Towle, an individual, DBA Garage Gotham (Towle) manufactured and sold replicas of the Batmobile as it appeared in the 1966 television series and the 1989 motion picture and kits that allowed customers to modify their own cars to look like the Batmobile as it appeared in the 1966 television series and the 1989 motion picture. Towle also advertised each replica as the "Batmobile" and used the domain name batmobilereplicas.com to market his business.

DC sued Towle for, inter alia, copyright infringement, trademark infringement, and unfair competition arising from Towle's business of manufacturing and selling Batmobile replicas. The parties thereafter filed cross motions for partial summary judgment as to DC's infringement and unfair competition claims and Towle's laches defense.

In a published order, the District Court granted in part and denied in part, DC's motion for summary judgment and denied Towle's cross motion for summary judgment. Specifically, the District Court held that: (1) the Batmobile was a character entitled to copyright protection; (2) DC maintained a copyright in the Batmobile as it appeared in both the 1966 television show and the 1989 motion picture based on DC's ownership of the merchandising rights; (3) DC owned a copyright in the Batmobile as it appeared in the 1966 television show and the 1989 motion picture because each was derived from the Batmobile depicted in DC's comics; (4) Towle infringed upon DC's copyright because his replicas copied the Batmobile as it appeared in the 1966 television show and the 1989 motion picture; (5) Towle acted in bad faith and intentionally copied DC's trademarks to associate his replicas with the Batman franchise; and (6) DC was not entitled to summary judgment on Towle's laches defense as to the copyright infringement claim because there was a genuine issue of material fact as to whether Towle was aware that copying the Batmobile as depicted in the 1966 television show and the 1989 motion picture constituted copyright infringement.

The first issue raised on appeal was whether the Batmobile, as it appeared in the comic books, television series, and motion picture was entitled to copyright protection. Towle argued that the Batmobile was not a character that qualified for copyright protection because in previous incarnations, the Batmobile appeared without its signature "sleek 'bat-like' features," the panel noted that copyright protection extends to "sufficiently distinctive" elements like comic book characters, contained within an original work.

To determine whether an automotive character that appeared in comic books, on television, and in a motion picture was entitled to copyright protection, despite changes in appearance, the panel was guided by its prior decision in Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213 (9th Cir. 2008).
The Halicki court stated that a character may be afforded copyright protection if it has distinctive character traits and attributes, even if the character's physical appearance is not the same in every context and that Eleanor: (1) was more like a comic book character than a literary character because of Eleanor's physical and conceptual qualities and (2) displayed "widely identifiable" traits and was "especially distinctive." Id. at 1225.

Relying on Halicki and other precedents, the panel established a three-prong test for determining whether a character in a comic book, television program, or motion picture is entitled to copyright protection. First, the character must generally have "physical as well as conceptual qualities." Air Pirates, 581 F.2d at 755. Second, the character must be "sufficiently delineated" so as to be recognizable as the same character whenever it appears by displaying consistent identifiable character traits and attributes, but it need not have a consistent appearance. Rice v. Fox Broadcasting Co., 330 F.3d 1170, 1175 (9th Cir. 2003); and Halicki, 547 F.3d at 1224. Third, the character must be "especially distinctive" and "contain some unique elements of expression" (id.), but cannot be a stock character (Rice, 330 F.3d at 1175).

Applying this three-prong test to the present matter, the panel held that: (1) the Batmobile is not a mere literary character because by appearing graphically in comic books and three-dimensionally on television and in motion pictures, the Batmobile has both physical and conceptual qualities; (2) the Batmobile is "sufficiently delineated" to be recognizable as the same character whenever it appears and has consistent character traits and attributes, such as its bat-like appearance with sleek and powerful crime-fighting characteristics and up-to-date weapons and technology; and (3) the Batmobile is "especially distinctive" and is not a mere stock character because it contains unique elements of expression due to its status as Batman's "loyal bat-themed sidekick," unique character traits and physical elements, and unique and highly recognizable name. Thus, the panel concluded that the Batmobile was entitled to copyright protection.

As to Towle's second and third arguments that he did not infringe on DC's underlying work because the Batmobile as it appeared in the 1966 television series and the 1989 motion picture look substantially different from any particular depiction of the Batmobile in the comic books and the Batmobile as it appeared in the 1966 television series and the 1989 motion picture were produced by third parties pursuant to sub-licensing agreements with ABC and BPI, respectively, the panel dismissed both arguments on grounds that: (1) as a copyrightable character, the Batmobile need not have a consistent appearance in every context, so long as it has distinctive character traits and attributes; (2) since Towle produced an entire three-dimensional expression of the entire Batmobile character as it appeared in the 1966 television series and the 1989 motion picture, Towle necessarily copied some aspects of DC's underlying works; (3) DC retained its rights to the underlying Batmobile character; and (4) DC's licensing agreements with ABC and BPI cannot deprive DC of its rights to the underlying Batmobile character.

Having established that: (1) the Batmobile character is entitled to copyright protection and (2) DC owns a copyright to the Batmobile character as it appeared in the 1966 television series and the 1989 motion picture, the panel concluded that Towle's replicas infringed upon DC's copyrights and that the two-prong "substantial similarity" test used to determine whether a plaintiff has established "copying of constituent elements of the work that are original" was unnecessary where Towle admitted to the copying of the entire work. Narell v. Freeman, 872 F.2d 907, 910 (9th Cir. 1989) (holding that a substantial similarity analysis was unnecessary because the copying of the substance of the entire work was admitted). The panel thereby affirmed the District Court because there was no genuine issue of material fact as to whether Towle infringed DC's copyright and DC was entitled to summary judgment as a matter of law.

The final issue on appeal was whether the District Court's ruling that Towle could not assert a laches defense as a matter of law was proper when Towle willfully infringed on DC's trademarks. The panel noted that while the doctrine of laches is a valid defense to trademark infringement claims, it is inapposite in cases of "willful infringement." Evergreen Safety Council v. RSA Network, Inc., 697 F.3d 1221, 1228 (9th Cir. 2012). Furthermore, "willful infringement" occurs when the defendant's actions are "willfully calculated to exploit the advantage of an established mark. Lindy Pen Co., Inc. v. Bic Pen Corp., 982 F.2d 1400, 1406 (9th Cir. 1993), superseded by statute on other grounds, Trademark Amendments Act of 1999, Pub. L. No. 106 - 43, 113 Stat. 218.

Applying Evergreen Safety Council and Lindy Pen Co. to the present matter, the panel found that the undisputed facts establish that Towle availed himself of DC's trademarks to exploit them to his benefit because Towle's advertisements recognized the value of the Batmobile's fame and his website intentionally advertised his products as replica Batmobiles to attract his customer base, which was comprised of Batman fans. The panel thereby held that no reasonable juror could find that Towle's use of DC's trademarks was for any reason other than to exploit them and the District Court was correct in its conclusion that Towle was barred from asserting a laches defense because Towle willfully infringed DC's trademarks.

To read the full opinion, please visit:

http://cdn.ca9.uscourts.gov/da...15/09/23/13-55484.pdf

Panel: Michael J. Melloy, Senior Circuit Judge for the U.S. Court of Appeals for the Eighth Circuit, sitting by designation, Jay S. Bybee and Sandra S. Ikuta, Circuit Judges.

Argument Date: February 5, 2015

Date of Issued Opinion: September 23, 2015

Docket Number: 13-55484

Decided: Affirmed the District Court's summary judgment in a copyright and infringement action brought by DC Comics against a manufacturer of Batmobile replicas on grounds that: (1) the Batmobile was entitled to copyright protection because it embodies sufficiently distinctive elements of the Batman comic books, television series, and motion pictures; (2) DC Comics owned a copyright interest in the Batmobile as depicted in the 1966 television series and the 1989 motion picture because DC Comics did not waive its rights to the Batmobile when DC Comics licensed rights to produce derivative works; (3) the manufacturer of Batmobile replicas infringed on DC Comics' copyrights; and (4) the manufacturer of Batmobile replicas was not entitled to raise a laches defense because the doctrine of laches is inapposite in cases of willful infringement.

Case Alert Author: Ryan Arakawa

Counsel:
Larry Zerner (argued), law offices of Larry Zerner, Los Angeles, California; Edwin F. McPherson and Tracy B. Rane, McPherson Rane LLP, Los Angeles, California, for Defendant-Appellant.

James D. Weinberger (argued), Roger L. Zissu and Leo Kittay, Fross, Zelnick Lehrman & Zissu, P.C., New York, New York; J Andrew Coombs, J Andrew Coombs, A Professional Corporation, Glendale, California, for Plaintiff-Appellee.

Author of Opinion: Judge Ikuta

Circuit: Ninth Circuit

Case Alert Supervisor: Professor Ryan T. Williams

    Posted By: Ryan Williams @ 11/29/2015 12:04 AM     9th Circuit  

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