Dc Comics v. Mark Towle
802 F.3d 1012
| 9th Cir. | 2015Background
- DC created the Batmobile character in comic books (first appeared 1941) and licensed TV (1966) and film (1989) adaptations; those productions depicted distinctive, bat‑themed, gadget‑equipped vehicles.
- DC licensed production rights to ABC (1965) and to BPI (1979) but expressly reserved all rights not granted, including merchandising and publication rights.
- Towle (Gotham Garage) built and sold high‑priced replica cars and kits copying the Batmobile as it appeared in the 1966 TV series and 1989 film, advertised them as "Batmobile(s)," and used related trademarks; he was not authorized by DC.
- DC sued Towle for copyright and trademark infringement and unfair competition; the district court found the Batmobile copyrightable as a character (and alternatively as a sculptural work), held DC owned the relevant rights, and granted summary judgment for DC on copyright infringement and on laches as to the trademark claim. Towle appealed.
- The Ninth Circuit affirmed: (1) the Batmobile is a copyrightable character; (2) DC owns copyright interests in the Batmobile as depicted in the 1966 and 1989 productions; and (3) Towle infringed by producing and selling replicas. The court also upheld denial of laches for trademark because Towle willfully exploited DC marks.
Issues
| Issue | Plaintiff's Argument (DC) | Defendant's Argument (Towle) | Held |
|---|---|---|---|
| 1. Is the Batmobile (comic/onscreen) copyrightable as a character? | Batmobile has physical and conceptual qualities, consistent traits (bat motifs, gadgets, crime‑fighting persona), and is especially distinctive. | Batmobile varies in appearance across media and thus is not a consistently delineated, copyrightable character. | Yes. The Batmobile is a copyrightable character under the three‑part test (physical + conceptual, sufficiently delineated, especially distinctive). |
| 2. Does DC own copyrights in the Batmobile as depicted in the 1966 TV show and 1989 film? | DC retained underlying rights in the Batmobile; derivative productions do not divest DC of its copyright in the character. | The TV/film producers (and sublicensees) hold the copyrights to their versions; DC lacks ownership/standing for those specific depictions. | DC owns a copyright interest in the Batmobile as depicted in those productions to the extent those depictions derive from DC’s underlying work; licenses did not transfer underlying rights. |
| 3. Did Towle’s replicas infringe DC’s copyrights? | Towle admitted copying the 1966 and 1989 Batmobile designs; copying derivative works that draw from DC’s underlying work infringes DC’s rights. | Replicas differ from comic depictions and were based on third‑party production designs; no infringement of DC’s underlying work. | Yes. Towle’s admitted copying of the productions’ Batmobiles infringed DC’s exclusive right to prepare derivative works of its character. |
| 4. Is laches available to Towle against DC’s trademark claim? | DC: Towle willfully used DC trademarks to exploit the marks; laches is unavailable for willful infringement. | Towle: lacked subjective intent to confuse buyers; laches should apply. | Laches barred because undisputed facts show Towle willfully exploited DC’s trademarks; laches unavailable for willful infringement. |
Key Cases Cited
- Walt Disney Prods. v. Air Pirates, 581 F.2d 751 (9th Cir. 1978) (comic‑book characters have physical and conceptual qualities supporting copyrightability)
- Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213 (9th Cir. 2008) (automotive character can be copyrightable; three‑part distinctiveness analysis)
- Olson v. Nat’l Broad. Co., 855 F.2d 1446 (9th Cir. 1988) (television characters may be copyrightable)
- Rice v. Fox Broad. Co., 330 F.3d 1170 (9th Cir. 2003) (character must be sufficiently delineated and have consistent identifiable traits)
- Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435 (9th Cir. 1994) (owner of underlying work may sue for copying of derivative works)
- Gamma Audio & Video, Inc. v. Ean‑Chea, 11 F.3d 1106 (1st Cir. 1993) (copying a derivative work can infringe the underlying work)
- Stewart v. Abend, 495 U.S. 207 (U.S. 1990) (derivative‑work copyright principles; underlying owner retains rights in derivative works)
- Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905 (9th Cir. 1980) (three‑dimensional toys based on cartoon characters are derivative works)
- Funky Films, Inc. v. Time Warner Entm’t Co., 462 F.3d 1072 (9th Cir. 2006) (substantial similarity test framework for infringement)