Dc Comics v. Mark Towle

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
DC COMICS, No. 13-55484
Plaintiff-Appellee,
D.C. No.
v. 2:11-cv-03934-
RSWL-OP
MARK TOWLE, an individual, DBA
Garage Gotham,
Defendant-Appellant. OPINION
Appeal from the United States District Court
for the Central District of California
Ronald S.W. Lew, Senior District Judge, Presiding
Argued and Submitted
February 5, 2015—Pasadena, California
Filed September 23, 2015
Before: Michael J. Melloy,* Jay S. Bybee,
and Sandra S. Ikuta, Circuit Judges.
Opinion by Judge Ikuta
*
The Honorable Michael J. Melloy, Senior Circuit Judge for the U.S.
Court of Appeals for the Eighth Circuit, sitting by designation.
2 DC COMICS V. TOWLE
SUMMARY**
Copyright / Trademark
The panel affirmed the district court’s 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
defendant’s replica cars infringed on DC Comics’ copyrights.
The panel affirmed the district court’s ruling that the
defendant could not assert a laches defense to DC Comics’
trademark infringement claim because he willfully infringed
DC’s trademarks.
**
This summary constitutes no part of the opinion of the court. It has
been prepared by court staff for the convenience of the reader.
DC COMICS V. TOWLE 3
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.
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.
4 DC COMICS V. TOWLE
Originally introduced in the Batman comic books in 1941,
the Batmobile is a fictional, high-tech automobile that
Batman employs as his primary mode of transportation. The
Batmobile has varied in appearance over the years, but its
name and key characteristics as Batman’s personal crime-
fighting vehicle have remained consistent. Over the past
eight decades, the comic books have continually depicted the
Batmobile as possessing bat-like external features, ready to
leap into action to assist Batman in his fight against Gotham’s
most dangerous villains, and equipped with futuristic
weaponry and technology that is “years ahead of anything
else on wheels.”
Since its creation in the comic books, the Batmobile has
also been depicted in numerous television programs and
motion pictures. Two of these depictions are relevant to this
case: the 1966 television series Batman, starring Adam West,
and the 1989 motion picture BATMAN, starring Michael
Keaton.
The 1966 Batman television series was the product of a
licensing agreement between DC’s predecessor, National
Periodical Publications, Inc. (National Periodical) and the
American Broadcasting Company (ABC). In 1965, National
Periodical entered into a licensing agreement with ABC (the
1965 ABC Agreement) in which it granted ABC “an
exclusive license to produce a series of half-hour television
programs . . . based upon the literary property consisting of
the comic book and comic strip stories entitled ‘Batman’ . . .
including the characters therein.” This exclusive right
included the right to “translate, adapt, [or] arrange” the
Batman literary property “to such extent as ABC may desire”
DC COMICS V. TOWLE 5
in the making of the television programs, and the right to
secure copyrights in the television programs produced. The
agreement also provided that “[a]ll rights in the property not
specifically granted to ABC are hereby reserved to and may
be exercised by National at all times during the term of this
agreement” except as otherwise expressly stated in the
agreement. National Periodical’s reserved rights included
“[a]ll rights of publication,” and the exclusive merchandising
rights to all products manufactured or distributed under the
name of any character in the Batman comic books.
Under this agreement, ABC (through a series of sub-
licensing agreements) produced the 1966 television show
starring Adam West as Batman. In addition to Batman,
Robin, and the use of visual onomatopoeia that flashed on
screen during fight scenes—Pow! Boff! Thwack!—the
television series featured the Batmobile. The design of the
Batmobile did not directly copy any iterations of the
Batmobile as it appeared in the comic books. As in the comic
books, however, the Batmobile in the 1966 television show
maintained a bat-like appearance and was equipped with
state-of-the-art weaponry and technology.1
In 1979, DC again licensed its rights in the Batman
literary property, this time to Batman Productions, Inc. (BPI).
In the agreement (the 1979 BPI Agreement), DC granted BPI
the exclusive right to create a motion picture based on the
“Property,” which was defined to include “[t]he names, titles,
fictional locations and fictional conveyances . . . as depicted
and contained in the comic magazines [published by DC],
1
A photo of the Batmobile depicted in the 1966 television series, as well
as a photo of Towle’s replica of this Batmobile, can be found in Appendix
A.
6 DC COMICS V. TOWLE
which are identifiable with or associated with the fictional
character known as ‘Batman,’ such as . . . that certain
conveyance known as the ‘Batmobile.’” The 1979 BPI
Agreement also granted BPI the right to “adapt, use, . . .
modify, [or] alter . . . the Property” for the purpose of
producing the motion picture. Like the 1965 ABC
Agreement, the 1979 BPI Agreement provided that “[a]ll
rights in the Property not specifically granted to” BPI under
the agreement “are reserved to DC and may be exercised by
DC at all times without any limitation or restriction
whatsover except as specifically set forth herein.” These
reserved rights included “[a]ll rights of publication in and to
the Property,” as well as “[a]ll ‘merchandising rights’” in
“products manufactured or distributed under the name of or
using a representation of ‘Batman’ or any other character or
thing included in the Property . . . or under a name which
incorporates any phrase, clause or expression used in DC’s
comic strips or comic magazines . . . .”
BPI subsequently sub-licensed its rights to Warner Bros.,
Inc., who eventually (through a number of additional sub-
licensing agreements) produced the 1989 motion picture
BATMAN, starring Michael Keaton as Batman. Like the 1966
television series, the 1989 motion picture featured a
Batmobile that was physically distinct from the Batmobile
portrayed in the comic books and the 1966 television series.
Nonetheless, the Batmobile as portrayed in the motion picture
retained a bat-like physical appearance and was again
equipped with futuristic technology and crime-fighting
weaponry.2
2
A photo of the Batmobile depicted in the 1989 motion picture, as well
as a photo of Towle’s replica of this Batmobile, can be found in Appendix
B.
DC COMICS V. TOWLE 7
Defendant Mark Towle produces replicas of the
Batmobile as it appeared in both the 1966 television show and
1989 motion picture as part of his business at Gotham
Garage, where he manufactures and sells replicas of
automobiles featured in motion pictures or television
programs. Towle concedes that these replicas copy the
designs of the Batmobile as depicted on television and in the
motion picture, though they do not copy every feature. Towle
then sells these vehicles for approximately $90,000 to “avid
car collectors” who “know the entire history of the
Batmobile.” Towle also sells kits that allow customers to
modify their cars to look like the Batmobile, as it appeared in
the 1966 television show and the 1989 motion picture.
Before DC brought this lawsuit, Towle advertised each
replica as the “Batmobile,” and used the domain name
batmobilereplicas.com to market his business. He also
advertised that the replicas included such features as “custom
bat insignias, wheel bats, [and a] bat steering wheel,” and
would attract attention due to the fame of the Batmobile. By
his own admission, Towle is not authorized by DC to
manufacture or sell any products bearing DC’s copyright or
trademark.
In May 2011, DC filed this action against Towle, alleging,
among other things, causes of action for copyright
infringement, trademark infringement, and unfair competition
arising from Towle’s manufacture and sale of the Batmobile
replicas.3 Towle denied that he had infringed upon DC’s
3
DC clearly asserted in both its original and amended complaint that
the Batmobile in all of its forms, including the 1966 television program
and 1989 motion picture, is copyrightable subject matter owned by DC.
8 DC COMICS V. TOWLE
copyright. He claimed that the Batmobile as it appeared in
the 1966 television show and 1989 motion picture was not
subject to copyright protection. Alternatively, Towle argued
that DC did not own the copyright in the Batmobile as it
appeared in either production. Towle also asserted the
affirmative defense of laches. The parties subsequently filed
cross motions for partial summary judgment as to DC’s
trademark, copyright, and unfair competition claims, and as
to 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. DC
Comics v. Towle, 989 F. Supp. 2d 948 (C.D. Cal. 2013).
First, the district court held that the Batmobile was a
character entitled to copyright protection. In reaching this
conclusion, the district court made a number of findings.
Among other things, it found that the Batmobile “is known by
one consistent name that identifies it as Batman’s personal
vehicle,” and, although some of its physical traits have
changed over time, several have remained consistent,
including its “high-tech gadgets and weaponry,” “bat-like
motifs,” and its jet black color. Additionally, the district
court found that the Batmobile is always “depicted as being
swift, cunning, strong and elusive,” and is even portrayed as
a “superhero” and “Batman’s sidekick, if not an extension of
Batman’s own persona.”4
We thus reject Towle’s argument that DC has failed to identify the
copyrights at issue in this case.
4
The district court also concluded, in the alternative, that the 1966 and
1989 Batmobiles were entitled to copyright protection as a sculptural work
DC COMICS V. TOWLE 9
Second, the district court held that DC maintained a
copyright in the Batmobile as it appeared in both the 1966
television show and the 1989 motion picture based on its
ownership of the merchandising rights. Alternatively, the
district court concluded that DC owns a copyright in the
Batmobile as it appeared in each production because the
appearance of the Batmobile in each production was derived
from the Batmobile depicted in DC’s comic books. Finally,
the district court concluded that Towle infringed upon DC’s
copyright because he copied the Batmobile as it appeared in
the 1966 and 1989 productions in his replicas. Accordingly,
the district court granted summary judgment on the copyright
infringement claim to DC.
The district court also granted summary judgment to DC
on Towle’s affirmative laches defense to the trademark
infringement claim. The court found that Towle admitted that
he knew of the Batman property and the various bat emblems
and symbols, and did not dispute “that he intentionally copied
the designs” of the Batmobile as it appeared in the 1966
television show and 1989 motion picture, which included
DC’s Batman trademarks. He also intentionally referred to
his replicas as “Batmobiles.” Therefore, the court concluded
that Towle acted in bad faith and intentionally copied DC’s
trademarks “so as to associate his products with the Batman
films and television show.”
Finally, the court denied DC’s summary judgment motion
on Towle’s laches defense to the copyright infringement
claim because it determined that there was a genuine dispute
of fact as to whether Towle was aware that copying the
under 17 U.S.C. § 102(a)(5). Because we agree that the Batmobile is a
character entitled to copyright protection, we need not reach this issue.
10 DC COMICS V. TOWLE
Batmobile as it appeared in the 1966 television show and
1989 motion picture constituted copyright infringement.
After the district court issued its decision, the parties
entered into a joint stipulation in which they agreed that the
district court would enter a judgment against Towle on DC’s
copyright infringement and other claims. They also agreed
that, except as provided in the stipulation, all claims were to
be dismissed with prejudice. The district court entered a
judgment consistent with this stipulation on February 22,
2013, and Towle timely appealed.
Because the parties entered into a stipulation that
finalized the district court order, we have jurisdiction over
this appeal under 28 U.S.C. § 1291. See Dannenberg v.
Software Toolworks Inc., 16 F.3d 1073, 1074–75 (9th Cir.
1994).
II
In order to prevail on its claim for copyright infringement,
DC must prove that it owns a copyright in the Batmobile as
it appeared in the 1966 television series and 1989 movie, and
that Towle infringed that copyright by creating unauthorized
replicas. See Entm’t Research Grp., Inc. v. Genesis Creative
Grp., Inc., 122 F.3d 1211, 1217 (9th Cir. 1997).
To the Batmobile!
A
We begin with the question whether the Batmobile, as it
appears in the comic books, television series, and motion
picture, is entitled to copyright protection. See Ets-Hokin v.
DC COMICS V. TOWLE 11
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 Disney’s
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
5
We later indicated that the analysis in Warner Bros. Pictures, Inc. v.
Columbia Broad Syst., Inc., regarding the noncopyrightability of literary
characters was dicta or an alternative holding. See Walt Disney
12 DC COMICS V. TOWLE
(citing Detective Comics, Inc. v. Bruns Publications Inc.,
111 F.2d 432 (2d Cir. 1940) (holding that comic book
characters are copyrightable); Fleischer Studios v.
Freundlich, 73 F.2d 276 (2d Cir. 1934) (same); King
Features Syndicate v. Fleischer, 299 F. 533 (2d Cir. 1924)
(same)). We subsequently held that characters in a television
series or a motion picture may also be entitled to copyright
protection. See Olson v. National Broadcasting Co., 855 F.2d
1446 (9th Cir. 1988).
Not every comic book, television, or motion picture
character is entitled to copyright protection. We have held
that copyright protection is available only “for characters that
are especially distinctive.” Halicki, 547 F.3d at 1224. To
meet this standard, a character must be “sufficiently
delineated” and display “consistent, widely identifiable
traits.” Rice v. Fox Broadcasting Co., 330 F.3d 1170 (9th
Cir. 2003) (citing Toho Co., Ltd. v. William Morrow & Co.,
Inc., 33 F. Supp. 2d 1206, 1215 (C.D. Cal.1998) (Godzilla)).
A masked magician “dressed in standard magician garb”
whose role “is limited to performing and revealing the magic
tricks,” for example, is not “an ‘especially distinct’ character
differing from an ordinary magician in a manner that warrants
copyright protection.” Id. Further, characters that have been
“lightly sketched” and lack descriptions may not merit
copyright protection. Olson, 855 F.2d at 1452–53.
We have previously determined that an automotive
character can be copyrightable. See Halicki, 547 F.3d at
Productions, 581 F.2d at 755 n.10; see also Olson v. National
Broadcasting Co., 855 F.2d 1446, 1452 n.6 (9th Cir. 1988) (same).
DC COMICS V. TOWLE 13
1224. In Halicki, we considered whether “Eleanor,” a car
that appeared in both the original 1971 and 2000 remake
motion picture Gone in 60 Seconds, could be entitled to
copyright protection as a character. Id. at 1224–25.
Considering Eleanor’s persistent attributes in both the
original and remake of Gone in 60 Seconds, we concluded
that Eleanor met some of the key factors necessary to qualify
for copyright protection. Id. at 1225. We first noted that
Eleanor was more like a comic book character than a literary
character given Eleanor’s “physical as well as conceptual
qualities.” Id. We also stated that Eleanor “displays
consistent, widely identifiable traits and is especially
distinctive.” Id. (alteration, citation, and internal quotation
marks omitted). We gave several examples of these traits.
First, we noted that “[i]n both films, the thefts of the other
cars go largely as planned, but whenever the main human
character tries to steal Eleanor, circumstances invariably
become complicated.” Id. Second, we noted that in the
original, “the main character says ‘I’m getting tired of
stealing this Eleanor car,’” and in the remake “the main
character refers to his history with Eleanor.” Id. Despite this
evidence of distinctive traits, we were sensitive to the fact
that the district court had implied that Eleanor was deserving
of copyright protection, but had not directly examined this
“fact-intensive issue.” Id. Therefore, we remanded the issue
to the district court to decide in the first instance. Id.
As indicated in Halicki, a character may be protectable if
it has distinctive character traits and attributes, even if the
character does not maintain the same physical appearance in
every context. As the Eighth Circuit has recognized, “the
presence of distinctive qualities apart from visual appearance
can diminish or even negate the need for consistent visual
appearance.” Warner Bros. Entm’t, Inc. v. X One X Prods.,
14 DC COMICS V. TOWLE
644 F.3d 584, 599 n.8 (8th Cir. 2011). For example, in
Halicki, Eleanor’s 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
Eleanor’s 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 Metro-
Goldwyn-Mayer, Inc. v. Am. Honda Motor Co., 900 F. Supp.
1287, 1295–96 (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 *3–4 (S.D.N.Y. Mar. 29,
2002) (Batman). In each instance, courts have deemed the
persistence of a character’s 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, fire-
breathing, gigantic dinosaur alive and well in the modern
world.” Toho Co., 33 F. Supp. 2d at 1216. In short, although
James Bond’s, Godzilla’s, and Batman’s “costume and
DC COMICS V. TOWLE 15
character have evolved over the years, [they have] retained
unique, protectable characteristics” and are therefore entitled
to copyright protection as characters. Sapon, 2002 WL
485730, at *3–4.
We read these precedents as establishing a three-part 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” to be
recognizable as the same character whenever it appears. See
Rice, 330 F.3d at 1175. Considering the character as it has
appeared in different productions, it must display consistent,
identifiable character traits and attributes, although the
character need not have a consistent appearance. See Halicki,
547 F.3d at 1224. Third, the character must be “especially
distinctive” and “contain some unique elements of
expression.” Halicki, 547 F.3d at 1224. It cannot be a stock
character such as a magician in standard magician garb. Rice,
330 F.3d at 1175. Even when a character lacks sentient
attributes and does not speak (like a car), it can be a
protectable character if it meets this standard. Halicki,
547 F.3d at 1224.
We now apply this framework to this case. Because
(unlike in Halicki) the district court here addressed this
question in detail, we consider its factual findings in
analyzing this issue. Cf. Halicki, 547 F.3d at 1225. First,
because the Batmobile has appeared graphically in comic
books, and as a three-dimensional car in television series and
motion pictures, it has “physical as well as conceptual
qualities,” and is thus not a mere literary character. Air
Pirates, 581 F.2d at 755.
16 DC COMICS V. TOWLE
Second, the Batmobile is “sufficiently delineated” to be
recognizable as the same character whenever it appears. See
Rice, 330 F.3d at 1175. As the district court determined, the
Batmobile has maintained distinct physical and conceptual
qualities since its first appearance in the comic books in 1941.
In addition to its status as “a highly-interactive vehicle,
equipped with high-tech gadgets and weaponry used to aid
Batman in fighting crime,” the Batmobile is almost always
bat-like in appearance, with a bat-themed front end, bat wings
extending from the top or back of the car, exaggerated
fenders, a curved windshield, and bat emblems on the vehicle.
This bat-like appearance has been a consistent theme
throughout the comic books, television series, and motion
picture, even though the precise nature of the bat-like
characteristics have changed from time to time.
The Batmobile also has consistent character traits and
attributes. No matter its specific physical appearance, the
Batmobile is a “crime-fighting” car with sleek and powerful
characteristics that allow Batman to maneuver quickly while
he fights villains. In the comic books, the Batmobile is
described as waiting “[l]ike an impatient steed straining at the
reins . . . shiver[ing] as its super-charged motor throbs with
energy” before it “tears after the fleeing hoodlums” an instant
later. Elsewhere, the Batmobile “leaps away and tears up the
street like a cyclone,” and at one point “twin jets of flame
flash out with thunderclap force, and the miracle car of the
dynamic duo literally flies through the air!”6 Like its comic
book counterpart, the Batmobile depicted in both the 1966
television series and the 1989 motion picture possesses “jet
engine[s]” and flame-shooting tubes that undoubtedly give
6
This episode causes Robin to exclaim “Whee! The Batplane couldn’t
do better!”
DC COMICS V. TOWLE 17
the Batmobile far more power than an ordinary car.
Furthermore, the Batmobile has an ability to maneuver that
far exceeds that of an ordinary car. In the 1966 television
series, the Batmobile can perform an “emergency bat turn”
via reverse thrust rockets. Likewise, in the 1989 motion
picture, the Batmobile can enter “Batmissile” mode, in which
the Batmobile sheds “all material outside [the] central
fuselage” and reconfigures its “wheels and axles to fit
through narrow openings.”7
Equally important, the Batmobile always contains the
most up-to-date weaponry and technology. At various points
in the comic book, the Batmobile contains a “hot-line
phone . . . directly to Commissioner Gordon’s office”
maintained within the dashboard compartment, a “special
alarm” that foils the Joker’s attempt to steal the Batmobile,
and even a complete “mobile crime lab” within the vehicle.
Likewise, the Batmobile in the 1966 television series
possesses a “Bing-Bong warning bell,” a mobile Bat-phone,
a “Batscope, complete with [a] TV-like viewing screen on the
dash,” and a “Bat-ray.” Similarly, the Batmobile in the 1989
motion picture is equipped with a “pair of forward-facing
Browning machine guns,” “spherical bombs,” “chassis-
mounted shinbreakers,” and “side-mounted disc launchers.”
Because the Batmobile, as it appears in the comic books
as well as in the 1966 television show and 1989 motion
picture, displays “consistent, identifiable character traits and
attributes,” the second prong of the character analysis is met
here.
7
Towle submitted a chart to the district court setting forth these features.
18 DC COMICS V. TOWLE
Third, the Batmobile is “especially distinctive” and
contains unique elements of expression. In addition to its
status as Batman’s loyal bat-themed sidekick complete with
the character traits and physical characteristics described
above, the Batmobile also has its unique and highly
recognizable name. It is not merely a stock character.
Accordingly, applying our three-part test, we conclude
that the Batmobile is a character that qualifies for copyright
protection.
Towle raises two arguments against this conclusion.
First, he points out that the Batmobile has at times appeared
without its signature sleek “bat-like” features. He notes that
in a 1988 comic book rendition, the Batmobile appears as a
heavily armored tank with large tires and a rocket launcher.
The Batmobile portrayed in the 1989 motion picture could
also transform into a Batmissile. As we have noted, however,
a consistent appearance is not as significant in our analysis as
consistent character traits and attributes. The changes in
appearance cited by Towle resemble costume changes that do
not alter the Batmobile’s innate characteristics, any more than
James Bond’s change from blue swimming trunks (in Casino
Royale) to his classic tuxedo affects his iconic character. In
context, the depictions of the Batmobile as a tank or missile
promote its character as Batman’s crime-fighting super car
that can adapt to new situations as may be necessary to help
Batman vanquish Gotham City’s most notorious evildoers.
See Halicki, 547 F.3d at 1224–25.
Second, Towle argues that a jury should decide the
question whether the Batmobile displayed unique elements of
expression and consistent, widely identifiable traits. We
disagree. We have previously recognized that “[w]hether a
DC COMICS V. TOWLE 19
particular work is subject to copyright protection is a mixed
question of fact and law subject to de novo review.” Societe
Civile Succession Guino v. Renoir, 549 F.3d 1182, 1185 (9th
Cir. 2008). Neither party disputes the relevant facts regarding
the Batmobile here. Accordingly, we are well-equipped to
determine whether, as a matter of law, these undisputed facts
establish that the Batmobile is an “especially distinctive”
character entitled to copyright protection.
B
Having concluded that the Batmobile is a copyrightable
character, we next consider whether Towle’s copies of the
Batmobile as it appeared in the 1966 and 1989 productions
infringed on DC’s copyright. Here, Towle does not contest
that his replicas copy the Batmobile as it appeared in the 1966
and 1989 productions, even if they do not copy every feature.
Rather, Towle’s main argument is that DC does not own any
copyright interest in the 1966 and 1989 productions and
therefore lacks standing to pursue its copyright infringement
claim against Towle.
To analyze Towle’s argument, we begin with the
applicable legal framework. Under the Copyright Act,
“copyright ownership ‘vests initially in the author or authors
of the work,’ which is generally the creator of the copyrighted
work.” U.S. Auto Parts Network, Inc. v. Parts Geek, LLC,
692 F.3d 1009, 1015 (9th Cir. 2012) (quoting 17 U.S.C.
§ 201(a)). The owner of a copyright has a number of
exclusive rights, including the right “to prepare derivative
works” based on its original work of authorship, 17 U.S.C.
§ 106. A derivative work is a “work based upon one or more
preexisting works that recasts, transforms, or adapts the
preexisting work,” Parts Geek, 692 F.3d at 1015–16
20 DC COMICS V. TOWLE
(alterations omitted) (quoting 17 U.S.C. § 101), such as a
motion picture that is based on a literary work, see, e.g.,
Stewart v. Abend, 495 U.S. 207, 212–14 (1990), a three-
dimensional costume based upon two-dimensional cartoon
characters, see Entm’t Research Grp., 122 F.3d at 1218, or
three-dimensional figurines based on cartoon characters,
Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 909 (9th
Cir. 1980). If an unauthorized third party prepares a
derivative work, the copyright owner of the underlying work
can sue for infringement. See Silvers v. Sony Pictures Entm’t,
Inc., 402 F.3d 881, 885 (9th Cir. 2005) (en banc) (citing
17 U.S.C. § 501(b)); see also, e.g., Air Pirates, 581 F.2d at754–55; Durham Indus., 630 F.2d at 909.
A copyright owner also has the exclusive right to
“authorize others to prepare derivative works based on their
copyrighted works.” Lewis Galoob Toys, Inc. v. Nintendo of
Am., Inc., 964 F.2d 965, 967 (9th Cir. 1992). When a
copyright owner authorizes a third party to prepare a
derivative work, the owner of the underlying work retains a
copyright in that derivative work with respect to all of the
elements that the derivative creator drew from the underlying
work and employed in the derivative work. See Stewart,
495 U.S. at 223. By contrast, the creator of the derivative
work has a copyright only as to those original aspects of the
work that the derivative creator contributed, and only to the
extent the derivative creator’s contributions are “more than
trivial.” Parts Geek, 692 F.3d at 1016; see also Stewart,
495 U.S. at 223. Moreover, a copyright in a derivative work
“must not in any way affect the scope of any copyright
protection in that preexisting material.” Id.; see 17 U.S.C.
§ 103(a) (“The copyright in a . . . derivative work . . . is
independent of, and does not affect or enlarge the scope,
duration, ownership, or subsistence of, any copyright
DC COMICS V. TOWLE 21
protection in the preexisting material.”). Logically, therefore,
if a third party copies a derivative work without authorization,
it infringes the original copyright owner’s copyright in the
underlying work to the extent the unauthorized copy of the
derivative work also copies the underlying work.
We reached a similar conclusion in Apple Computer, Inc.
v. Microsoft Corp., 35 F.3d 1435, 1447–48 (9th Cir. 1994).
There, Apple alleged that Microsoft infringed its copyright in
the graphical user interface called the Lisa Desktop, as well
as its copyright in a graphical user interface called the
Macintosh Finder Desktop, which was a derivative work
based on the Lisa Desktop. Id. at 1438 & n.1. Because the
Finder Desktop did not contain any separately copyrightable
original elements, the district court concluded that Apple
could not bring a copyright infringement claim for
Microsoft’s alleged infringement of that work. Id. at 1447.
We reversed, holding that Apple could bring a copyright
infringement suit for the alleged copying of both the Lisa
Desktop and the derivative Finder Desktop, because of
Apple’s copyright in the underlying work. Id. at 1447–48. In
reaching this conclusion, we cited with approval the First
Circuit’s conclusion in Gamma Audio & Video that the owner
of an exclusive right in an underlying work could “base [an]
infringement suit on derivative works.” Id. (citing Gamma
Audio & Video, Inc. v. Ean-Chea, 11 F.3d 1106, 1111–12 (1st
Cir. 1993)).
Our sister circuits also agree with this conclusion. See,
e.g., Montgomery v. Noga, 168 F.3d 1282, 1293 (11th Cir.
1999); Gamma Audio & Video, Inc., 11 F.3d 1106. In
Gamma Audio & Video, the owner of a copyright in a
Chinese language television program had authorized a party
to produce a derivative work, a Cambodian language version
22 DC COMICS V. TOWLE
of the program. 11 F.3d at 1110. When an unauthorized
third party copied this Cambodian language version (the
derivative work), the First Circuit concluded that the owner
of the copyright in the Chinese language version (the
underlying work) could sue the third party for copyright
infringement because “[a]ny elements that the author of the
derivative work borrowed from the underlying work, such as
the video images in the Chinese language episodes . . . remain
protected by the copyrights in the underlying work.” Id. at
1112. Accordingly, it was “irrelevant that what was actually
distributed by [the unauthorized third party] was the
derivative and not the underlying work.” Id.In sum, as a leading copyright commentator explained, “if
the material copied was derived from a copyrighted
underlying work, this will constitute an infringement of such
work regardless of whether the defendant copied directly
from the underlying work, or indirectly via the derivative
work.” 1 Melville B. Nimmer & David Nimmer, Nimmer on
Copyright § 3.05, at 3-34.31 (Matthew Bender, Rev. Ed.)
(hereafter Nimmer on Copyright). This conclusion is
consistent with our determination that a copyright in an
authorized derivative work “must not in any way affect the
scope of any copyright protection in” the underlying work.
Parts Geek, 692 F.3d at 1016 (quoting Entm’t Research Grp.,
122 F.3d at 1220 (quoting Durham Indus., 630 F.2d at 909)).
Accordingly, the author of an underlying work is entitled to
sue a third party who makes an unauthorized copy of an
authorized derivative work to the extent that the material
copied derived from the underlying work.
Applying these principles, we conclude that DC owns a
copyright interest in the Batmobile character, as it is depicted
in the 1966 and 1989 productions. There is no dispute that
DC COMICS V. TOWLE 23
DC is the original creator of the Batmobile character. While
DC licensed rights to produce derivative works of this
character in the 1965 ABC Agreement and the 1979 BPI
Agreement, DC did not transfer its underlying rights to the
Batmobile character.8 DC therefore owns the copyright in the
Batmobile character, as expressed in the 1966 and 1989
productions, at least to the extent these productions drew on
DC’s underlying work. Stewart, 495 U.S. at 223.
Accordingly, it is irrelevant that Towle’s replica Batmobiles
were an indirect copy of the Batmobile character, because DC
is entitled to sue for infringement of its underlying work.9
See Apple Computer, 35 F.3d 1447–48; Gamma Audio &
Video, 11 F.3d at 1111–12.
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 three-
dimensional expressions of the Batmobile character. See Durham Indus.,
630 F.2d at 909; see also Halicki, 547 F.3d at 1218, 1223–24 (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).
9
Because DC retains its copyright in the underlying Batmobile
character, we also reject Towle’s argument that the version of the
Batmobile that appeared in the 1966 and 1989 productions cannot be
copyrighted because the third party producers of these vehicles obtained
a design patent on these works. These creators could obtain protection
only for the original, independently copyrightable aspects of their work.
Parts Geek, 692 F.3d at 1016. In any event, parties may now obtain both
a design patent and a copyright in a work. See Registrability of Pictorial,
Graphic, or Sculptural Works Where a Design Patent Has Been Issued,
60 Fed. Reg. 15605-01, 15605 (March 24, 1995).
24 DC COMICS V. TOWLE
Towle argues that his replicas of the Batmobile as it
appeared in the 1966 and 1989 productions do not infringe on
DC’s underlying work because those versions of the
Batmobile look substantially different from any particular
depiction of the Batmobile in the comic books. We reject this
argument. As a copyrightable character, the Batmobile need
not have a consistent appearance in every context, so long as
the character has distinctive character traits and attributes.
See, e.g., Warner Bros. Entm’t, Inc., 644 F.3d at 599 n.8. For
instance, as we explained above, an automotive character may
be copyrightable even if it appears as a yellow Fastback Ford
Mustang in one film, and a silver 1967 Shelby GT-500 in
another. Halicki, 547 F.3d at 1218, 1224. Here, DC retained
its copyright in the Batmobile character even though its
appearance in the 1966 and 1989 productions did not directly
copy any comic book depiction. Because Towle produced a
three-dimensional expression of the entire Batmobile
character as it appeared in the 1966 and 1989 productions,
and the Batmobile character in each of those productions was
derived from DC’s underlying work, we conclude that
Towle’s replicas necessarily copied some aspects of DC’s
underlying works. See e.g., Durham Indus., 630 F.2d at 909
(noting that three-dimensional “small, plastic, wind-up toys”
of Disney characters Mickey, Donald, and Pluto were
derivative works of these characters). Therefore, while we
question whether a derivative work based on a character
could ever have any independently copyrightable elements
that would not “affect the scope of any copyright protection
in that preexisting material,” Parts Geek, 692 F.3d at 1016,
we need not address that issue here.
For the same reason, we reject Towle’s argument that his
replicas of the Batmobile as it appeared in the 1966 television
series and 1989 movie did not infringe DC’s underlying work
DC COMICS V. TOWLE 25
because the series and movies were produced by third parties,
pursuant to sub-licensing agreements with ABC and BPI.
Towle argues that while DC had an agreement with ABC and
BPI to retain certain rights, DC failed to show that the
agreements between ABC and BPI and the sublicensees also
protected DC’s interests. This argument fails because DC
retained its rights to the underlying Batmobile character, and
the creation of derivative works by sublicensees cannot
deprive DC of such rights. DC may sue any third party who
infringes on that work, even if the third party copies
“indirectly via the derivative work.” Nimmer on Copyright
§ 3.05.
C
Having established that the Batmobile character is entitled
to copyright protection, and that DC owns a copyright to this
character as it appears in the 1966 television series and 1989
motion picture, we conclude that Towle infringed upon these
copyrights when he produced replicas of the Batmobile.
While we ordinarily apply a two-part “substantial similarity”
test to determine whether a plaintiff has established “copying
of constituent elements of the work that are original,” Funky
Films, Inc. v. Time Warner Entm’t Co., L.P., 462 F.3d 1072,
1076–77 (9th Cir. 2006) (internal quotation marks omitted),
we need not do so where, as here, “the copying of the
substance of the entire work” is admitted, Narell v. Freeman,
872 F.2d 907, 910 (9th Cir. 1989). Based on the undisputed
facts, Towle’s production and sale of replicas of the
Batmobile, as it appeared in the 1966 and 1989 productions,
infringed DC’s exclusive right to produce derivative works of
this character. Therefore, there is no genuine issue of
material fact as to whether he infringed DC’s copyrighted
material. DC is entitled to judgment, and we affirm.
26 DC COMICS V. TOWLE
III
Finally, we must consider Towle’s argument that the
district court erred when it ruled as a matter of law that he
could not assert a laches defense to DC’s trademark
infringement claim because he willfully infringed DC’s
trademarks. We have recognized an intracircuit split on
whether the proper standard of review of a district court’s
laches determination is de novo or for an abuse of discretion.
See Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d
829, 834 (9th Cir. 2002). We need not address this issue in
this case, however, because under either standard of review,
the district court did not err here. See id.“Laches is an equitable time limitation on a party’s right
to bring suit,” and is a valid defense to trademark
infringement claims. Jarrow, 304 F.3d at 835 (internal
quotation marks omitted). This doctrine does not apply,
however, “in cases of willful infringement.” Evergreen Safety
Council v. RSA Network, Inc., 697 F.3d 1221, 1228 (9th Cir.
2012). Willful trademark 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) (internal
quotation marks omitted), superseded by statute on other
grounds, Trademark Amendments Act of 1999, Pub. L. No.
106-43, 113 Stat. 218; see also Conan Props., Inc. v. Conans
Pizza, Inc., 752 F.2d 145, 151 n.2 (5th Cir. 1985) (explaining
that the issue with respect to the availability of a laches
defense in a trademark infringement case is whether the
defendant “intended to derive benefit from and capitalize on
[the plaintiff’s] goodwill” by using the mark).
DC COMICS V. TOWLE 27
Here, the undisputed facts establish that Towle used DC’s
Batman trademarks in order to exploit the advantage of those
marks. Towle’s advertisements recognize that the Batmobile
is a famous vehicle, and boast that crowds will form around
his replicas as a result of the Batmobile’s fame. Additionally,
Towle used DC’s trademarks on his website to promote his
business. He also intentionally referred to his replicas as
“Batmobiles” to attract the attention of the Batman fans who
constitute his customer base. Indeed, by Towle’s own
admission, most of his customers were fans who “usually
know the entire history of the Batmobile.” In light of this
evidence, no reasonable juror could conclude that Towle used
DC’s trademarks for any reason other than to exploit the
advantage of those marks.
Indeed, Towle does not argue otherwise, instead arguing
that he did not knowingly and subjectively intend to confuse
his buyers. Although evidence of intent to confuse buyers
may be relevant to establishing that the defendant’s actions
were willfully calculated to exploit the advantage of an
established mark, Towle points to no authority holding that
such evidence is necessary, nor is the court aware of any such
authority. Accordingly, the district court did not err when it
concluded that Towle was barred from asserting a laches
defense to DC’s trademark infringement claim because he
willfully infringed DC’s trademarks.
IV
As Batman so sagely told Robin, “In our well-ordered
society, protection of private property is essential.” Batman:
The Penguin Goes Straight, (Greenway Productions
television broadcast March 23, 1966). Here, we conclude that
the Batmobile character is the property of DC, and Towle
28 DC COMICS V. TOWLE
infringed upon DC’s property rights when he produced
unauthorized derivative works of the Batmobile as it appeared
in the 1966 television show and the 1989 motion picture.
Accordingly, we affirm the district court.
AFFIRMED.
DC COMICS V. TOWLE 29
APPENDIX A
Batmobile Depicted in the 1996 Television Series
Towle Replica
30 DC COMICS V. TOWLE
APPENDIX B
Batmobile Depicted in the 1989 Motion Picture
Towle Replica