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 at

754–55; 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