Posted by Kelly Griffiths ● Partner: Paul Kallenbach
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| Image courtesy of scottjlowe |
The proceedings
On 6 May 2011, DC Comics commenced trademark and copyright infringement proceedings against Mark Towle, owner of "Gotham Garages". Mr Towle's business builds custom cars from popular films and television shows, including two models of the Batmobile.
On 25 January 2012, Mr Towle brought a motion to dismiss DC Comics' copyright infringement proceedings, arguing that the US Copyright Act affords no protection to "useful articles" or items with an intrinsic utilitarian function such as automobiles.
Judge Lew denied the motion, finding that there may be 'non-functional artistic elements of the Batmobile that may possibly be separated from the utilitarian aspect of the automobile' and protected by copyright.
Does copyright subsist in the Batmobile?
Judge Lew's decision sparked hysteria in the blogosphere – the word was out that copyright subsists in the Batmobile! In fact, we don't yet have an answer to that question. Judge Lew's decision was limited to determining whether DC Comics had pleaded sufficient facts to support its claim of copyright infringement. Whether copyright does subsist in the Batmobile is a question for trial, including whether there are non-functional or artistic elements of the Batmobile that are protected by US copyright law.
Meanwhile, in a courtroom far, far away...
The Batmobile litigation is not the first of its kind (nor is it likely to be the last). In 2006, Lucasfilms sued Shepperton Design Studios for copyright infringement in the Californian District Court over its reproductions of the "Star Wars" Stormtrooper helmets. The defendant, who lived in the United Kingdom, did not defend the proceedings in the United States, and the District Court awarded Lucasfilms US$20 million in compensation.
Unable to enforce the judgement against the English defendant in the United States, Lucasfilms commenced copyright infringement proceedings in the United Kingdom. At all levels of appeal, the United Kingdom courts held that, under English law, the Stormtrooper helmets were not artistic sculptures or works of artistic craftsmanship subject to the protection of English copyright law.[1] However, in an associated ruling in July 2011, the British Supreme Court did recognise that Lucasfilms' copyright had been infringed in the United States, and that the Californian judgement was enforceable in the United Kingdom.
Whilst the decision of the British Supreme Court finding that no copyright subsists in the Stormtrooper helmet is certainly not binding on courts in the United States, it will be interesting to see if the Californian court in the Batmobile litigation is influenced by the approach of the English Courts in relation to industrial items and artistic works.
Where to from here?
Film merchandising is a multi-billion dollar industry. In 2003, film and media merchandising generated US$16 billion in revenue in the United States alone.[2] It's no surprise, then, that rights owners will look to the courts to protect their lucrative merchandising income streams. However, relying on copyright law to do the job may be fraught, particularly in jurisdictions such as England and Australia where copyright protection doesn't usually extend to artistic works that have been applied industrially.
Thousands upon thousands of Batmobile model toys have been sold worldwide under licence from DC Comics. Under Australian copyright law, the reproduction of Batmobile toys may well be considered the industrial application of the Batmobile design. Accordingly, in the absence of a current Australian design registration, the reproduction of the Batmobile design may not amount to copyright infringement (although, in a future post, we'll consider whether trade mark law might step in here). Holy loophole, Robin!
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[1] Lucasfilm v. Ainsworth [2011] UKSC 39.
[2] G. Saradhi Kumar and Sumit Kumar Chaudhur, 'Film Merchandising: The Hollywood Style' (2004) IBS CDC, available here.
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