By: Scott Hervey
The U.S. District Court for the Central District of California handed a big victory to Warner Bros. when it ruled that Gotham Garage violated Warner Bros.’ intellectual property rights in the iconic Batmobile. There was a question whether Warner Bros.’ rights in the Batman franchise would prohibit the production of an automobile designed like the Batmovile since the Copyright Act does not protect automobile designs. The Court found that the Batmobile was a protectable character of the Batman franchise and the replicas manufactured by defendant were infringing derivative works.
Gotham Garage manufactured and produced custom cars modeled after vehicles found in various television shows and movies. It had been producing and selling replica vehicles based on the 1966 and 1989 Batmobiles. Gotham Garage also manufactured automobile parts featuring the Batman trademarks and did business in a manner utilizing various Batman trademarks. Warner Bros. filed a lawsuit In May 2011 alleging that Gotham Garage infringed the copyrighted versions of the 1966 and 1989 Batmobile and infringed various Batman trademarks in the marketing and selling of its custom vehicles.
The court made easy work of the trademark claims. The Court noted that Gotham Garage did not contest Warner Bros.’ trademark claims, and did not dispute that it manufactured and distributed parts and accessories featuring the Batman trademarks and used the Batman trademarks in connection with the operation of its business. The Court found that Gotham Garage’s use of the Batman trademarks caused a likelihood of confusion; that consumers were likely to be confused as to the source of the products. The defendant admitted that "most of his potential customers ask if he had a relationship with Warner Bros. or was licensed by Warner Bros." The Court found that this initial interest and confusion impermissively capitalizes on the goodwill associated with the Batman trademarks.
As to the plaintiffs copyright claim, the defendants claimed that the Batmobile automobile designs that were allegedly infringed are were copyrightable. The defendant argued that vehicle designs are not copyrightable, and neither are the separate, functional parts of the automobile such as wheels, fins and fenders. Under the copyright act, a "useful article" is not entitled to copyright protection. Items that are normally a part or component of a useful article are themselves considered "useful articles". And so, the defendant argued, any part of the Batmobile allegedly infringed that normally is found on cars such as wheels, fins, and fenders are, by definition, a useful article and not protected by copyright.
The Court found other grounds to support plaintiff’s copyright claim. The Court noted that the owner of a copyright a work embodying a character can acquire copyright protection in the character itself. In determining whether copyright protection may be afforded to characters visually depicted in a television series or in a movie, the Ninth Circuit employed the standard known as the character delineation test. If a character is "especially distinctive" or constitutes "the story being told", the character is entitled receive protection apart from the work in which the character appears. The Court noted that characters that have received copyright protection, Godzilla and Rocky Balboa, have displayed consistent, widely identifiable traits.
The Court then noted the Ninth Circuit reviewed, but did not resolve, whether or not a car known as "Eleanor" that appeared as a 1971 Fastback Ford Mustang in the 1974 film, Gone in 60 Seconds, was entitled to copyright protection. In 2000, Walt Disney Productions released a remake of Gone in 60 Seconds that featured the “Eleanor” vehicle, but this time the vehicle was a 1967 Shelby GT-500. The Ninth Circuit noted that the “Eleanor" character displayed "consistent, widely identifiable traits" and can be seen as more akin to a comic book character than a literary character.” The Ninth Circuit remanded to the district court to determine whether Eleanor’s physical and conceptual qualities, and unique elements of expression qualify Eleanor for copyright protection.
The Batmobile is akin to the “Godzilla” character the Court reasoned. Although Godzilla assumed many shapes and personalities in the various Godzilla films, the Court found that “Godzilla has developed a constant set of traits that distinguish him/her/it from other fictional characters,” meriting it copyright protection.
The Court found that the Batmobile is “sufficiently delineated” to constitute a character entitled to copyright protection. The Court rejected defendant’s argument that the Batmobile is not a character because it is also a car; the central question is not whether the “character” is an object, but rather whether the character conveys a set of distinct characteristics which the Batmobile clealy does. After finding the The Batmobile to be a separately protectable character in plaintiffs work, the court made easy work of finding the defendants reproductions to be infringing derivative works.