Posted On: February 2, 2012 by Melvin N.A. Avanzado

ENTERTAINMENT LITIGATION: HOLY SMOKES!! DISTRICT COURT PERMITS PUBLISHER'S COPYRIGHT LAWSUIT OVER BATMOBILE

DC COMICS DEFEATS MOTION TO DISMISS COPYRIGHT INFRINGEMENT CLAIMS OVER BATMOBILE REPLICA CAR KITS

Original BatmobileDC Comics, publisher of the original Batman comic strip, filed a lawsuit against the manufacturer and seller of vehicle modification kits that allow a consumer to create his or her own "Batmobile." The original Batmobile (pictured on the right) was an integral part of the 1960s television series based upon the DC comic books. "Gotham Garage" sold kits allowing consumers to build and own a replica of the iconic Batmobile. DC Comics sued, alleging that the replicas infringe upon their copyright to the Batmobile.

After the jump, I'll discuss the motion to dismiss proceedings before the Honorable Ronald S.W. Lew in the Central District of California. I'll also provide some insight into the business replica Batmobiles and the potential implications of Judge Lew's ruling upon the auto industry and car design.

WHY SUE TO PREVENT REPLICA BATMOBILE KITS? MONEY

When reading about DC Comics suing a replica car kit maker, the first question that came to mind is: why? Assuming that the quality of the kit cars are acceptable (i.e. the look of the finished vehicles do not tarnish the image of the Batmobile), you would think at first blush that having such replicas running around town would help DC Comics' core business -- selling copies of the television series and the comic books. I previously wrote a post about Pope Benedict's call in 2009 for looser intellectual property enforcement by drug companies and how Coldplay has allowed the free dissemination of its songs as a marketing device.

Apparently, however, DC Comics also has economic interests in replica Batmobiles. A company called "Fiberglass Freaks" sells what it calls "Officially Licensed 1966 Batmobile Replicas" -- complete with DC Comics' logo. You can buy one of these "licensed" replicas for a mere $150,000. Read about them here.

So it comes as no surprise that DC Comics is acting to protect its "official" licensee for Batmobile replicas. However, in asserting a claim for copyright infringement -- essentially over a car design -- DC Comics' lawsuit could have broader implications for the auto industry and auto design generally.

JUDGE LEW'S OPINION ALLOWS COPYRIGHT INFRINGEMENT CLAIM TO STAND

On January 26, 2012, Judge Lew denied a motion to dismiss DC Comics' copyright infringement claim against the manufacturer and seller of the Batmobile replica car kit. Judge Lew's opinion addressed only the copyright infringement claim and did not refer to any other legal claims alleged by DC Comics in its lawsuit -- something which I will address below. You can read Judge Lew's complete (but short) opinion here.

Judge Lew held that DC Comics' copyright infringement claim against Gotham Garage's replica Batmobiles alleged sufficient facts for a "reasonable inference that there may be non-functional artistic elements of the Batmobile that may possibly be separated from the utilitarian aspects of the automobile." In so doing, Judge Lew essentially found that -- at the pleadings stage -- the design (or artistic) elements of the Batmobile might be separable from the car itself and therefore subject to copyright protection. In other words, Judge Lew found that the design of the Batmobile could be viewed independently of the fact that it was a "useful article" -- i.e. a car.

BROADER IMPLICATIONS THAT CAR DESIGN IS SEPARABLE FROM THE CAR ITSELF

Put aside for the moment, the fact that the Batmobile is and was (essentially) a character in a television series/comic books -- works of authorship -- and not just a car. It is well established in copyright jurisprudence that a "work" with "intrinsic utilitarian" functions is deemed to be a "useful article" to be "denied copyright protection for its shape." However, just as Judge Lew did in his opinion, courts have recognized an "exception" (likely based in part on Professor Nimmer's analysis in his treatise) for "artistic features that can be identified separately" and "are capable of existing independently as a work of art." See, e.g., Fabrica Inc. v. El Dorado Corp., 697 F.2d 890, 893 (9th Cir.1983).

If the design of a car can be separated from the car itself for copyright purposes, and the design is not itself a "work," then auto manufacturers theoretically have claims against other car makers whose vehicles look "substantially similar" to their existing designs. Mercedes Benz E ClassHyundai EquusThis would be so even though the car itself cannot be subject to copyright protection. The practical effects of applying the traditional "substantial similarity" analysis to automobiles could be huge.

Compare the pictures of two cars depicted on the left. The car on the far left is a Mercedes Benz E Class, and the one on the right is the Hyundai Equus. Both cars look quite similar. One might even say they look "substantially similar." So if that "look" can be said to be a separable "artistic" design, Mercedes Benz would seem have a claim against Hyundai for copyright infringement (or vice versa).

Kia ForteAcura MDXHow about the new breed of "crossover" sport utility vehicles -- all of which seem to look the same. Take the two SUVs on the right. Can you tell which SUV is manufactured by Kia and which is manufactured by Acura? (The Acura is the SUV on the left.) Does copyright law now extend to all of those vehicles we see that seem to resemble each other? Should it? I think not.

Those implications are for "regular" cars purchased by the general public. Of course, there are countless "replica" cars depicting famous -- and desirable -- cars like the Shelby Cobra or Porsche Speedster. Unique or rare models of other generally available cars -- like the Boss Mustang or Z28 Camaro -- are also being replicated, either through kits or add-on parts. Are all of these vehicles subject to copyright infringement claims by their original designer?

TAKEAWAYS

It seems odd to me that the "artistic" element of a car design can be separated from the utilitarian aspect of the car itself -- which is what Judge Lew's opinion suggests. Applied to the Batmobile -- which was not a vehicle generally available for sale as an automobile -- Judge Lew's opinion makes sense. However, by opining that car design could be separable from the intrinsic utilitarian value of the car itself, and without requiring that this design can stand alone as a "work of art," Judge Lew's analysis potentially opens the door to allowing copyright infringement claims for all designs of otherwise non-copyrightable "useful articles." A uniquely shaped electric can opener, or the new design of a refrigerator . . . the supposedly separable designs could fall within copyright protection such that producing similar looking products would potentially constitute copyright infringement.

The Batmobile's creation was part of a larger work of authorship -- it was a fictional vehicle and essentially a character in the series and comic -- and therefore itself a work of art. That should have been the basis of permitting DC Comics' copyright claim to proceed. Without that limitation, the designs of all objects traditionally excluded from copyright law would be subject to copyright protection.

To me, the more viable claims are under trademark law principles. Obviously, when I see a Batmobile driving down Wilshire Boulevard, my immediate thought is that the vehicle is somehow connected to the Batman franchise. Since the Batmobile has likely acquired secondary meaning under a traditional trademark law analysis, DC Comics would have a trademark infringement claim against the maker of that replica vehicle. (Nothing in Judge Lew's opinion suggests that DC Comics failed to assert trademark-related claims -- as the opinion is limited to a copyright analysis.) At the end of the day, a trademark analysis seems more applicable to car designs than copyright law.

That's my $.02. As a car buff and intellectual property litigator, Judge Lew's opinion provides an interesting confluence of interests for me.

The Entertainment Litigation Blog is published by Melvin N.A. Avanzado, an entertainment litigator and civil trial lawyer in Los Angeles. Mel is an accomplished trial lawyer with over 20 years experience. Mel's practice includes extensive experience representing plaintiffs and defendants in complex disputes, including the representation of motion picture studios, television networks, media companies, and significant individuals in the entertainment and sports industries.

View Mel's complete biography