Professional Documents
Culture Documents
FOR PUBLICATION
DC COMICS,
No. 13-55484
Plaintiff-Appellee,
v.
D.C. No.
2:11-cv-03934RSWL-OP
OPINION
The Honorable Michael J. Melloy, Senior Circuit Judge for the U.S.
Court of Appeals for the Eighth Circuit, sitting by designation.
DC COMICS V. TOWLE
SUMMARY**
Copyright / Trademark
The panel affirmed the district courts summary judgment
in a copyright and trademark infringement action brought by
DC Comics against a maker of Batmobile replicas.
The panel held that the Batmobile, as it appeared in the
Batman comic books, television series, and motion picture,
was entitled to copyright protection because this automotive
character was a sufficiently distinctive element of the works.
The panel held that DC Comics owned a copyright interest in
the Batmobile character, as expressed in the 1966 television
series and the 1989 motion picture, because it did not transfer
its underlying rights to the character when it licensed rights
to produce derivative works. The panel held that the
defendants replica cars infringed on DC Comics copyrights.
The panel affirmed the district courts ruling that the
defendant could not assert a laches defense to DC Comics
trademark infringement claim because he willfully infringed
DCs trademarks.
**
DC COMICS V. TOWLE
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 PlaintiffAppellee.
OPINION
IKUTA, Circuit Judge:
We are asked to decide whether defendant Mark Towle
infringed DC Comics exclusive rights under a copyright
when he built and sold replicas of the Batmobile, as it
appeared in the 1966 television show Batman and the 1989
film BATMAN. Holy copyright law, Batman!
I
DC Comics (DC) is the publisher and copyright owner of
comic books featuring the story of the world-famous
character, Batman. Since his first comic book appearance in
1939, the Caped Crusader has protected Gotham City from
villains with the help of his sidekick Robin the Boy Wonder,
his utility belt, and of course, the Batmobile.
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The district court also concluded, in the alternative, that the 1966 and
1989 Batmobiles were entitled to copyright protection as a sculptural work
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Skyy Spirits, Inc., 225 F.3d 1068, 1073 (9th Cir. 2000). In the
context of copyright law, where, as here, the question
requires us to consider legal concepts in the mix of fact and
law and to exercise judgment about the values that animate
legal principles, . . . the question should be classified as one
of law and reviewed de novo. Harper House, Inc. v. Thomas
Nelson, Inc., 889 F.2d 197, 201 (9th Cir. 1989).
Courts have recognized that copyright protection extends
not only to an original work as a whole, but also to
sufficiently distinctive elements, like comic book
characters, contained within the work. Halicki Films, LLC v.
Sanderson Sales & Mktg., 547 F.3d 1213, 1224 (9th Cir.
2008). Although comic book characters are not listed in the
Copyright Act, we have long held that such characters are
afforded copyright protection. See Walt Disney Productions
v. Air Pirates, 581 F.2d 751 (9th Cir. 1978). In Air Pirates,
for instance, we considered a number of subversive comic
books that portrayed well-known Disney characters as being
active participants in a free thinking, promiscuous, drug
ingesting counterculture. Id. at 753. In holding that the
Disney characters were copyrightable (and that Disneys
copyright in those characters had been infringed), we
distinguished a prior decision suggesting that literary
characters ordinarily are not copyrightable, id. at 755
(citing Warner Bros. Pictures, Inc. v. Columbia Broad. Sys.,
Inc., 216 F.2d 945 (9th Cir. 1954)), on the grounds that a
comic book character has physical as well as conceptual
qualities and is more likely to contain some unique
elements of expression than a purely literary character. Id.5
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644 F.3d 584, 599 n.8 (8th Cir. 2011). For example, in
Halicki, Eleanors ability to consistently disrupt heists by her
presence was more pertinent to our analysis of whether the
car should qualify as a sufficiently distinctive character than
Eleanors make and model. 547 F.3d at 1225. Indeed,
Halicki put no weight on the fact that Eleanor was a
customized yellow 1971 Fastback Ford Mustang in one film,
and a silver 1967 Shelby GT-500 in another.
Similarly, district courts have determined that James
Bond, Batman, and Godzilla are characters protected by
copyright, despite their changes in appearance. See MetroGoldwyn-Mayer, Inc. v. Am. Honda Motor Co., 900 F. Supp.
1287, 129596 (C.D. Cal. 1995) (James Bond) (cited with
approval in Rice); Toho Co. v. William Morrow & Co., 33 F.
Supp. 2d 1206, 1216 (C.D. Cal. 1998) (Godzilla) (cited with
approval in Rice); Sapon v. DC Comics, No. 00 CIV.
8992(WHP), 2002 WL 485730, at *34 (S.D.N.Y. Mar. 29,
2002) (Batman). In each instance, courts have deemed the
persistence of a characters traits and attributes to be key to
determining whether the character qualifies for copyright
protection. The character James Bond qualifies for
copyright protection because, no matter what the actor who
portrays this character looks like, James Bond always
maintains his cold-bloodedness; his overt sexuality; his love
of martinis shaken, not stirred; his marksmanship; his
license to kill and use of guns; his physical strength; [and]
his sophistication. Metro-Goldwyn-Mayer, 900 F. Supp. at
1296. Similarly, while the character Godzilla may have a
different appearance from time to time, it is entitled to
copyright protection because it is always a pre-historic, firebreathing, gigantic dinosaur alive and well in the modern
world. Toho Co., 33 F. Supp. 2d at 1216. In short, although
James Bonds, Godzillas, and Batmans costume and
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Towle submitted a chart to the district court setting forth these features.
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8
Indeed, DC expressly retained all rights not specifically granted to the
licensees, including the merchandising rights to all of if its characters in
both the 1965 ABC Agreement and the 1979 BPI Agreement. See supra,
at 5, 6. As a result, DC retained the exclusive right to produce threedimensional expressions of the Batmobile character. See Durham Indus.,
630 F.2d at 909; see also Halicki, 547 F.3d at 1218, 122324 (concluding
that because a party retained the exclusive merchandising rights in a
derivative work, she could assert a claim for copyright infringement
against a party producing vehicles resembling the 1967 Shelby GT-500
Eleanor character that appeared in the Remake Gone in Sixty Seconds).
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III
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APPENDIX A
Towle Replica
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APPENDIX B
Towle Replica
This Court has filed and entered the attached judgment in your case.
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A.
B.
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(2)
See Advisory Note to 9th Cir. R. 40-1 (petitions must be received on the
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Statement of Counsel
(4)
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