1 October, 2015
Every comic buff is besotted with Bruce Wayne a.k.a. Batman from the very popular D.C. Comics, having to his credit superhero abilities as well as ‘batman gadgets’, including the extravagant and indispensable Batmobile, a car that includes everything under the sun: weapons, futuristically smart computers, wing-shaped tail fins and an assortment of gadgets that suited perfectly Batman’s diverse crime-fighting needs, which was introduced in 1941 by the DC Comics.
These batman collectibles, memorabilia, etc. are sold over the world in the common practice of making copies, knockoffs and counterfeits causing losses to the rightful owners. The Batmobile added another elevation; getting intellectual property (IP) protection by way of copyright and trademark, showing vigilance by DC comics for their IP.
DC Comics sued the Mark Towle and his business “Gotham Garage” for copyright infringement, trademark infringement and unfair competition based on production of various replicas of Batmobile. DC Comics had filed its original complaint in May 2011, amending it in November 2011. After Towle’s preliminary motion to dismiss the claim of copyright infringement being denied in January 2012, he filed an answer asserting several affirmative defenses encompassing unreasonable delay, tainted hands and fair use. Finally in December 2012, both parties moved for partial summary judgment on issues of trademark infringement, copyright infringement and unfair competition, in addition to Towle’s defense of laches/delay.
Recently the above matter, DC Comics vs Mark Towle,[i] came to a conclusion whereby, the Hon’ble California District Court, U.S., ruled against Mark Towle,manufacturer of replicas of the Batmobiles, selling them for US$ 90,000 each, through various websites, featuring the trademarked terms “Gotham” and “Batmobile” in their URLs. He also sold vehicle parts, accessories and car kits that allowed buyers to modify their vehicles to resemble the Batmobile as expressed in Batman comics and movies.
The Court added that the replica’s “bat-like” appearance and other distinct traits, counting its high-tech weaponry, made it a character that could not be copied without authorisation from the DC Comics, the copyright holders. Being miffed with this course of action, the defendant argued that he had ‘merely copied the cars design’. He went on to add that characters existed in comic books, movies and TV shows, and not in the real world, as in the real world it was just a car. There have been legal precedents emphasizing the curious issue of whether and when fictional characters – being distinct from the works they occupy – are accorded copyright protection. Courts have developed a three-part test to define whether characters are suitable for getting copyright protection status.
- Firstly, the character must have “physical and conceptual qualities.”
- Secondly, it has to be “sufficiently delineated” so people recognize it as the same character across time periods.
- Thirdly, the character has to be “distinctive.”
As per the case in question, DC Comics were to prove the aforementioned in order to validate that the versions of the cars sold by Towle were infringing products. In the case Nichols vs. Universal Pictures Corporation, the Hon’ble court held that, standard characters are free for anyone to use, but characters that are sufficiently delineated are protected from copying/imitation: “the less developed the characters, the less they can be copyrighted; that is the penalty an author must bear for making them too indistinctly.”[ii] Similarly in Warner Bros. Pictures v. Columbia Broadcasting System, it was held that characters are copyrightable only if they “constitute the story being told,” as opposed to “only a chessman in the game of telling the story.”[iii]
The Court disagreed with the defendant’s argument and found that the Batmobile car was suitably demarcated for copyright protection having physical as well as conceptual qualities, further adding that the Batmobile, in its various avatars, was a highly-interactive vehicle, armed with high-tech gadgets and armaments aiding Batman against crime. Despite the Batmobile not being identical in every comic book or film, or television show, it was recognizable extensively due to it often containing the bat-like traits and features with its omnipresent jet black colour. The functional elements associated with it and other features, incorporated fantasy traits that did not appear on the real-world automobiles or vehicles thereby being functional to the degree that Batmobile’s usefulness could not be done away with.The court went on to add that it had a personality of its own other than just the physical features portrayingit as a distinct superhero.
Hence it was held that that the Batmobile was owned by DC Comics, adding that Towle had infringed upon the same by creating unlicensed derivative works of the Batmobile hence granting a permanent injunction against him. The court further barred him from making production of more replicas, ordered full destruction of all replicas, along with damages to be paid to DC Comics, accruing to the amount of U.S. $ 750,000 per car made and sold!
Batman’s advice to Robin, ‘in our well-ordered society, protection of private property is essential’ seems to hold true in every sense of this case.
[i]DC Comics vs Mark Towle, 2013 WL 541430, F. Supp. 2d.
[ii]Nichols vs. Universal Pictures Corporation, 45 F.2d 119 (2d Cir. 1930).
[iii]Warner Bros. Pictures vs. Columbia Broadcasting System 216 F.2d 945, 950 (9th Cir. 1954).
For further information, please contact:
Divya Srinivasan, LexOrbis
mail@lexorbis.com
