No. 15IN THE

Supreme Court of the United States

MARK TOWLE,
Petitioner,
v.
DC COMICS,
Respondent.

ON PETITION FOR A WRIT OF CERTIORARI TO THE UNITED
STATES COURT OF A PPEALS FOR THE NINTH CIRCUIT

PETITION FOR A WRIT OF CERTIORARI
EDWIN F. MCPHERSON
Counsel of Record
TRACY B. RANE
MCPHERSON RANE LLP
1801 Century Park East
24th Floor
Los Angeles, CA 90067
(310) 553-8833
emcpherson@
mcphersonrane.com

LARRY ZERNER
LAW OFFICES OF LARRY ZERNER
1801 Century Park East
Suite 2400
Los Angeles, CA 90067
(310) 773-3623

Counsel for Petitioner
263652

A
(800) 274-3321 • (800) 359-6859

 i
QUESTIONS PRESENTED
The Ninth Circuit, in Halicki Films LLC v. Sanderson
Sales & Mktg., 547 F.3d 1213 (9 th Cir. 2008), and in this
case, held that the design of an automobile, which is not
otherwise subject to copyright, is copyrightable when it
can be construed as a “character” in a fi lm or comic book.
The questions presented, therefore, are:
1. Whether a court may judicially create a subject of
copyright that was specifically and expressly excluded by
Congress as such when Congress enacted The Copyright
Act, thus circumventing the clear mandate of Congress
and the U.S. Copyright Office;
2. Whether an automobile that does not display any
personality traits or any consistent and widely-identifiable
physical attributes can be separately protected by
copyright as a “character”; and
3. Whether a determination of substantial similarity
of protected expression must be made in a copyright case,
independent of proof of copying.

 ii
PARTIES

The parties to this proceeding are Petitioner Mark
Towle and Respondent DC Comics.

iii
TABLE OF CONTENTS
Page
QUESTIONS PRESENTED . . . . . . . . . . . . . . . . . . . . . . i
PARTIES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . ii
TABLE OF CONTENTS. . . . . . . . . . . . . . . . . . . . . . . . . iii
TABLE OF APPENDICES . . . . . . . . . . . . . . . . . . . . . . vi
TABLE OF CITED AUTHORITIES . . . . . . . . . . . . . viii
OPINIONS BELOW. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1
JURISDICTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .1
STATUTES . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2
STATEMENT OF THE CASE . . . . . . . . . . . . . . . . . . . .3
A. Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . .3
B. The Batmobiles . . . . . . . . . . . . . . . . . . . . . . . .6
1.

The Batmobiles That Appear In
DC’s Comic Books . . . . . . . . . . . . . . . . . .6

2. The 1966 Batmobile – Designed
By George Barris . . . . . . . . . . . . . . . . . .11
3. The 1989 Batmobile – Designed By
Anton Furst . . . . . . . . . . . . . . . . . . . . . .12

 iv
Table of Contents
Page
C. Towle And His Replica Cars . . . . . . . . . . . .13
D. The Lawsuit Filed By DC Against
Towle . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .13
E. The District Court’s Order Granting
DC’s Motion For Summary Judgment . . .14
F.

The Ninth Circuit’s Opinion . . . . . . . . . . . .14

REASONS FOR GRANTING CERTIORARI. . . . . . .15
I.

INTRODUCTION. . . . . . . . . . . . . . . . . . . . . . . . .15

II. THE NINTH CIRCUIT’S HOLDING
IMPROPERLY GRANTS DC
COPYRIGHT OWNERSHIP IN
FUNCTIONING AUTOMOBILES. . . . . . . . . .18
III. THE NINTH CIRCUIT IMPROPERLY
CONCLUDED THAT THE 1966 AND
1989 BATMOBILES WERE
DERIVATIVE WORKS. . . . . . . . . . . . . . . . . . . .23
IV. THE NINTH CIRCUIT’S OPINION IS
ALSO FLAWED BECAUSE IT FAILED
TO ANALYZE WHETHER TOWLE’S
AUTOMOBILES COPIED ANY
PROTECTABLE EXPRESSION
FROM DC. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .28

 v
Table of Contents
Page
V.

THE NINTH CIRCUIT’S OPINION
THAT THE BATMOBILE IS A
CHARACTER IMPERMISSIBLY
EXTENDS THE SEPARATE
COPYRIGHT PROTECTION THAT IS
GIVEN TO A CHARACTER BEYOND
WHAT ANY OTHER CIRCUITS HAVE
ALLOWED. . . . . . . . . . . . . . . . . . . . . . . . . . . . . .30

VI. THE POTENTIAL RAMIFICATIONS
OF THIS CASE ARE DRAMATIC
AND PERVASIVE. . . . . . . . . . . . . . . . . . . . . . . .34
CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .37

 vi
TABLE OF APPENDICES
Page
APPENDIX A — OPINION OF THE UNITED
STATES COURT OF APPEALS FOR THE
NINTH CIRCUIT, FILED
SEPTEMBER 23, 2015 . . . . . . . . . . . . . . . . . . . . . . . .1a
APPENDIX B — OPINION OF THE UNITED
STATES DISTRICT COURT FOR THE
CENTRAL DISTRICT OF CALIFORNIA,
FILED FEBRUARY 7, 2013. . . . . . . . . . . . . . . . . . .32a
APPENDIX C — RELEVANT STATUTORY
PROVISIONS . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .80a
APPENDIX D — UNITED STATES
COPYRIGHT OFFICE DEFINITION
OF “USEFUL ARTICLES”. . . . . . . . . . . . . . . . . . .96a
APPENDIX E — PAGES FROM UNITED
STATES COPYRIGHT OFFICE CIRCULAR
40A, DEPOSIT REQUIREMENTS
FOR REGISTRATION OF CLAIMS TO
COPYRIGHT IN VISUAL ARTS
MATERIAL (DECEMBER 22, 2014) . . . . . . . . . . .98a
APPENDIX F — PAGES FROM H.R. REP.
94-1476, 94TH CONG., 2ND SESS. 1976. . . . . . . . .99a
APPENDIX G — THE BATMOBILES
THAT APPEAR IN DC’S COMIC BOOKS. . . . .100a

 vii
Table of Appendices
Page
APPENDIX H — THE 1966 BATMOBILE
DESIGNED BY GEORGE BARRIS. . . . . . . . . . . 101a
APPENDIX I — DESIGN PATENT NO.
205,998 (OCTOBER 18, 1966) . . . . . . . . . . . . . . . . .102a
APPENDIX J — THE 1989 BATMOBILE
DESIGNED BY ANTON FURST. . . . . . . . . . . . .103a
APPENDIX K — DESIGN PATENT NO.
311,882 (NOVEMBER 6, 1990) . . . . . . . . . . . . . . .104a
APPENDIX L — PAGES FROM UNITED
STATES COPYRIGHT OFFICE CIRCULAR
40, COPYRIGHT REGISTRATION
FOR PICTORIAL, GRAPHIC, AND
SCULPTURAL WORKS (REVISED
SEPTEMBER 2015). . . . . . . . . . . . . . . . . . . . . . . . .105a

 viii
TABLE OF CITED AUTHORITIES
Page
Cases
Apple v. Microsoft,
35 F.3d 1435 (9th Cir. 1994). . . . . . . . . . . . . . . . . . . . .29
Carol Barnhart Inc. v. Econ. Cover Corp.,
773 F.2d 411 (2d Cir. 1985) . . . . . . . . . . . . . . . . . . . . .21
ELTRA Corp. v. Ringer,
579 F.2d 294 (4th Cir. 1978). . . . . . . . . . . . . . . . . . . . .22
Esquire, Inc. v. Ringer,
591 F.2d 796 (D.C. Cir. 1978). . . . . . . . . . . . . . . . . . . .21
Feist Publications, Inc. v.
Rural Telephone Serv Co.,
499 U.S. 340 (1991) . . . . . . . . . . . . . . . . . . . . . . . . . . . .27
Halicki Films LLC v. Sanderson Sales & Mktg.,
547 F.3d 1213 (9th Cir. 2008) . . . . . . . . . . . . . .4, 16, 32
Harper & Row Publishers v. Nation Ents.,
471 U.S. 539 (1985). . . . . . . . . . . . . . . . . . . . . . . . . . . .27
Leicester v. Warner Bros.,
232 F.3d 1212 (9th Cir. 2000) . . . . . . . . . . . . . . . . . . .21
Newton v. Diamond,
388 F.3d 1189 (9th Cir. 2004) . . . . . . . . . . . . . . . . . . .29

 ix
Cited Authorities
Page
Nichols v. Universal Pictures Corp.,
45 F.2d 119 (2d Cir. 1930) . . . . . . . . . . . . . . . . . . . . . .30
Norris Indus. v. Int’l Tel & Tel. Corp.,
696 F.2d 918 (11th Cir. 1983) . . . . . . . . . . . . . 22, 26, 30
Olson v. National Broadcasting Co.,
855 F.2d 1446 (9th Cir. 1988). . . . . . . . . . . . . . . . .30, 33
Reyher v. Children’s Television Workshop,
533 F.2d 87 (2d Cir. 1976) . . . . . . . . . . . . . . . . . . . . . .25
Rice v. Fox Broad. Co.,
330 F.3d 1170 (9th Cir. 2003). . . . . . . . . . . . . . . . . . . .30
Varsity Brands, Inc. v. Star Athletica, LLC,
799 F.3d 468 (6th Cir. 2015). . . . . . . . . . . . . . . . . . 21-22
Walt Disney Productions v. Air Pirates,
581 F.2d 751 (9th Cir. 1978). . . . . . . . . . . . . . . . . . .5, 33
Warner Bros. Pictures, Inc. v.
Columbia Broadcasting System,
216 F.2d 945 (9th Cir. 1954). . . . . . . . . . . . . . . . . . . . .33
Statutes and Rules
17 U.S.C. § 101 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . passim
17 U.S.C. § 102 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2, 27
17 U.S.C. § 102(a)(5). . . . . . . . . . . . . . . . . . . . . . . . . . . . . .19

 x
Cited Authorities
Page
17 U.S.C. § 103(a) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3
17 U.S.C. § 103(b). . . . . . . . . . . . . . . . . . . . . . . . . . . . . .3, 25
28 U.S.C. § 1254(1). . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .2
Other Authorities
Copyright Office Circular 40 Copyright
Registration For Pictorial, Graphic and
Sculptural Works, Compendium of U.S.
Copyright Office Practices (3d Ed.,
December 2014) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .21
Copyright Office Circular 40A Deposit
Requirements For Registration Of Claims To
Copyright In Visual Arts Material
(December 22, 2014). . . . . . . . . . . . . . . . . . . . . . . . . . .32
H.R. Rep. No. 1476, 94th Cng., 2nd Sess. 54,
reprinted in 1976 U.S. Code Cong. & Admin.
News 5659 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 18-19, 20
1 Melville B. Nimmer & David Nimmer, Nimmer
on Copyright (“Nimmer”) (Matthew Bender,
Rev. Ed.)
§ 3.01 at 3-3 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 24, 25
§ 3.04 at 3-22.9 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .25
“Useful Articles,” United States Copyright
Office, http://www.copyright.gov/register/vauseful.html . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .16

 1
Petitioner Mark Towle respectfully requests this
Court to grant a Writ of Certiorari to review the opinion
of the United States Court of Appeals for the Ninth
Circuit on the issues of whether: (1) the Ninth Circuit has
improperly afforded copyright protection to the design of
a functioning automobile, in contravention of Congress’s
express intention; (2) the Ninth Circuit has impermissibly
extended to an inanimate object the copyright protection
that is afforded to “characters,” by holding that an
automobile, which does not display any personality traits
or consistent and widely-identifiable physical attributes
independent of the context in which it appears in a creative
work, is entitled to separate copyright protection.
OPINIONS BELOW
The Order of the District Court granting in part
and denying in part the motion for summary judgment
of Respondent DC Comics is reported at DC Comics v.
Towle, 989 F. Supp. 2d. 948 (C.D. Cal. 2013). The Order is
attached as Appendix “B” to Petitioner’s Appendix.
The Opinion of the Ninth Circuit, affi rming the Order
of the District Court is reported at DC Comics v. Towle,
802 F.3d 1012 (9 th Cir. 2015). The opinion is attached as
Appendix “A” to Petitioner’s Appendix.
JURISDICTION
The opinion of the Court of Appeal for the Ninth
Circuit was dated on September 23, 2015. On December
15, 2015 Justice Anthony Kennedy granted an extension
until January 22, 2016.

 2
The jurisdiction of this Court is invoked pursuant to
28 U.S.C. § 1254(1).
STATUTES
17 U.S.C. §102 protects “original works of authorship
fi xed in any tangible medium of expression,” and specifies
the following categories:
(1) literary works;
(2) musical works, including any accompanying
words;
(3) dramatic works, including any accompanying
music;
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works; and
(7) sound recordings.
Pursuant to Section 101 of the Copyright Act, the
statutory definition of “pictorial, graphic, and sculptural
works” states that:
The design of a useful article, as defined in this
section, shall be considered a pictorial, graphic,
or sculptural work only, if, and only to the extent
that, such design incorporates pictorial, graphic

 3
or sculptural features than can be identified
separately from, and are capable of existing
independently of, the utilitarian aspects of the
article.
17 U.S.C. § 101.
17 U.S.C. §101 provides that “useful items” are only
eligible for copyright protection if and to the extent that
the design “incorporates pictorial, graphic, or sculptural
features that can be identified separately from, and
are capable of existing independently of, the utilitarian
aspects of the article.”
17 U.S.C. §103(a) provides that the subject matter of
copyright as specified in Section 102 included derivative
works. 17 U.S.C. §103(b) provides: “[t]he copyright in a
compilation or derivative work extends only to the material
contributed by the author of such work, as distinguished
from the pre-existing material employed in the work.
The copyright in such work is independent of, and does
not affect or enlarge the scope, duration, ownership
or subsistence of, any copyright protection in the preexisting material.”
STATEMENT OF THE CASE
A.

Introduction

Petitioner Mark Towle (hereinafter “Towle”) has
established a reputation over the past twelve years as
one of the finest designers of replica batmobiles in the
world. Towle’s replicas are not based upon any comic book
version of the batmobile, but are created from the design

 4
patents of George Barris and Anton Furst, which patents
expired and fell into the public domain many years ago.
Those “batmobiles” were depicted in the 1966 “Batman”
television show and the 1989 “Batman” fi lm, respectively.
Towle was very careful not to design or build the replica
batmobiles until the respective patents on each of Barris’s
and Furst’s automobiles had expired.
DC Comics (hereinafter “DC”) owns copyrights to
various comic books depicting the fictional character,
Batman, and over 100 separate versions (different makes,
models, colors, shapes, and sizes) of automobiles that
DC calls “batmobiles.” DC sued Towle for copyright
and trademark infringement notwithstanding that: (1)
Congress expressly and specifically excluded automobile
design as the subject of copyright protection; (2) Towle
did not copy any material from a DC comic book; and (3)
DC never obtained any rights from Barris or Furst to
their car designs.
Congress made it very clear, when it enacted the
Copyright Act, that automobiles and other “useful items”
are not copyrightable. Moreover, the U.S. Copyright
Office has indicated, quite unequivocally, that automobile
designs are not copyrightable. Yet, the Ninth Circuit has
circumvented these very clear edicts, in this case and in
Halicki Films LLC v. Sanderson Sales & Mktg., 547 F.3d
1213 (9 th Cir. 2008), by simply holding, as a matter of law,
that an automobile – in this case the “batmobile” – is a
character.1
1. In Halicki, the Ninth Circuit held that an automobile may
be construed as a character, and remanded the case to the District
Court for the jury to make that determination. In this case, the

 5
As a result of this ruling, Towle has been permanently
enjoined from manufacturing, displaying, exhibiting, or
selling any version of any automobile that DC labeled
a “batmobile,” whether or not he calls it a “batmobile.”
By this ruling, DC, which is not in the business of
manufacturing automobiles, effectively has been granted
the exclusive right to manufacture automobiles featuring
any of the more than 100 designs of the batmobile.
It is Towle’s position that: (1) it is improper for the
courts arbitrarily to create an exception to such a very
clear mandate by Congress; and (2) even if this exception
properly exists, the batmobile could not be a character
because, among other reasons, DC created over 100
“batmobiles,” with very different characteristics, 2 and
no consistent, widely-identifiable traits, as is required
in order to achieve the status of a character. See Walt
Disney Productions v. Air Pirates, 581 F.2d 751 (9 th Cir.
1978).
Finally, the Ninth Circuit’s analysis was flawed
because the court failed to fi lter out the unprotectable,
functional elements of the automobiles before it conducted
its infringement analysis, and erroneously found that the
1966 and 1989 batmobiles (and Towle’s replicas thereof)
were derivative of the batmobiles that appeared in DC’s
comic books.
court goes one step further by making its own determination, as
a matter of law, that the dozens of diverse automobiles that were
drawn by DC constitute one composite “character,” worthy of
copyright protection.
2. Most, if not all, of these were based upon the designs of
existing automobiles to which DC certainly does not own the
copyrights.

 6
It is apparent that both the District Court and the
Ninth Circuit, having found that Towle infringed DC’s
trademark by calling his automobiles “batmobiles,” and
affi xing bat logos onto the vehicles, made up their minds
about this case early in the process. However, if one were
to eliminate all of the trademark issues (as Towle would
like to do by continuing to manufacture these automobiles
without using any of DC’s trademarks), what is left is
nothing more than a murky chain of title and serious
questions concerning the copyrightability of automobiles
in general and of specific automobile parts.
B. The Batmobiles
1.

The Batmobiles That Appear In DC’s
Comic Books

DC is engaged in the business of publishing comic
magazines. A draw ing of an automobile called a
“batmobile” was originally introduced in a comic book by
DC in 1941.
Since the fi rst batmobile appeared in 1941, DC has
created, in its comic books, dozens of automobiles, with
different makes, models, colors, shapes, and sizes, that
it has called “batmobiles.” As demonstrated below, the
Batmobiles that appear in the DC comic books vary
dramatically in appearance and style:

 7
Detective Comics # 48
• Red Car
• Convertible
• No Bat Motif
• No fins
• 1940’s style car
Petitioner’s Supplemental Appendix (hereinafter “SA”)
12.

Detective Comics #156
• Very large bat face on car’s front hood
• Single large fin at back of car - not a convertible
• 1940’s Packard style car
SA 13.

 8
Batman #164
• Convertible car
• Round headlights
• White-walled tires
• Two fins at back of car
• Rounded hood
• Bat face on car’s hood
• 1960’s Corvette style car
SA. 14.

Detective Comics #341
• Two severe looking bat fins at car’s rear
• White wall tires
• Front of car not displayed in comic
• Appears to be 1960’s Corvette style car
SA 15.

 9
Batman #20
• Appears similar to Batmobile in #156
• Large bat on front of hood
• One large fin on car’s rear
• 1940’s Packard style car
SA 16.

Batman #5
• Bat face appears in front of car
• No headlights
• Tank looking wheels
• One large fin at car’s rear
SA 17.

 10
Batman: The Cult #4
• Large tractor-looking vehicle
• Large tractor-type tires
• Clear bubble at top of car where passenger sits
• Mechanical arm that sticks out of car
SA 18.

Batman #408 cover
• Two doors
• Muscle-type car
• No fins
• Not a convertible
• Batman logo license plate
• Black hood with design of two white triangle-looking
wings on hood
SA 19.

 11
2.

The 1966 Batmobile – Designed By George
Barris

The 1966 batmobile was designed by George Barris.
Barris built the 1966 batmobile in 15 days, using a oneof-a-kind 1955 Lincoln Futura as the base.
The 1955 Lincoln Futura (SA 20):

Barris’s 1966 Batmobile (SA 21):

When Barris was designing the 1966 batmobile, he did
not review any drawings, photographs, or comic books.
Instead, he visualized the design completely by himself,
and built the 1966 batmobile based completely on his own
design, which was not based on any of DC’s comic books,
or on anyone else’s drawings. Barris obtained a design
patent on the 1966 batmobile (Patent No. 205,998) on
October 18, 1966. SA 22.

 12
The copyright claimants for the “Batman” television
episodes, which display the 1966 Barris batmobile, are
“Greenway Productions, Inc. & Twentieth Century Fox
Television, Inc.” (significantly not DC). The registrations
do not indicate that the “works” are derivative works or
compilations.
3.

The 1989 Batmobile – Designed By Anton
Furst

The 1989 batmobile was designed and built by Anton
Furst, pursuant to a work for hire agreement with Warner
Bros. Productions, Limited (again, significantly not DC).
Furst obtained a design patent on the 1989 Batmobile on
November 6, 1990 (Design No. 311,882). SA 24-28. Furst is
the only person listed on the design patent as the inventor
of the 1989 Batmobile. SA 24.
Furst’s 1989 Batmobile (SA 23):

 13
C.

Towle And His Replica Cars

Towle owns and operates Gotham Garage, which
specializes in the manufacture of replicas of automobiles
featured in motion pictures and television programs.
Towle has been in the business of making replica cars since
2001. Towle has made replicas of famous cars such as the
Mach 5 from the “Speed Racer” cartoon, “The Munsters”
coach, and “The Flinstones” car.
Although Towle builds other replica cars, about 60%
of the replicas that he creates are batmobile replicas.
Towle only manufactures batmobiles that are replicas of
the 1966 Barris batmobile and the 1989 Furst batmobile.
He purposely did not begin manufacturing the replicas
based on these two cars until after the respective patents
on each of the automobiles had expired.
Although Towle’s replica 1966 batmobile is based on
Barris’s 1966 batmobile, the two vehicles are not identical.
Similarly, although Towle’s replica 1989 batmobile is
based on Furst’s 1989 batmobile, those two automobiles
are not identical either.
D.

The Lawsuit Filed By DC Against Towle

DC fi led a complaint against Towle on May 16, 2011
for, among other claims, copyright infringement and
trademark infringement. With respect to the copyright
infringement claim, DC alleged that Towle infringed
22 of DC’s copyrights that were listed in Exhibit “A” to
the Complaint. On November 22, 2011, DC fi led a First
Amended Complaint that was virtually identical to the

 14
original Complaint, except that DC added 13 additional
comic books to the list of works that were allegedly
infringed.
Nowhere in the First Amended Complaint does DC
allege infringement of the 1966 “Batman” television series
or the 1989 “Batman” motion picture, which depicted the
1966 batmobile and the 1989 batmobile, respectively.
E. The District Court’s Order Granting DC’s
Motion For Summary Judgment
On December 26, 2012, the parties each fi led motions
for partial summary judgment. By his motion, Towle
sought an order determining that he did not infringe DC’s
copyrights or trademarks. By its motion, DC sought an
order determining that Towle infringed DC’s copyrights
and trademarks, and that Towle engaged in unfair
competition.
On February 7, 2013, the District Court entered an
order granting DC’s motion for partial summary judgment
as to DC’s claims for trademark infringement, copyright
infringement, and unfair competition, and denying Towle’s
motion. Petitioner’s Appendix (hereinafter “Pet. App.”)
at 74a.
A Judgment and Order Re Permanent Injunction were
entered by the District Court on February 22, 2013.
F.

The Ninth Circuit’s Opinion

Towle appealed the District Court’s judgment to the
United States Court of Appeals for the Ninth Circuit. On

 15
September 23, 2015, the Ninth Circuit issued an opinion
affi rming the order of the District Court. Pet. App. at 29a.
The court held that the batmobiles that appeared in the
Batman comic books collectively were entitled to copyright
protection as a character because they were a sufficiently
distinctive element of the work. Pet. App. at 18a.
Upon concluding that the batmobile was a “character,”
entitled to full copyright protection, and that the
batmobiles from the 1966 television series and the 1989
motion picture were derivative of DC’s works, the Ninth
Circuit concluded that Towle infringed its copyright when
he produced replicas of these two automobiles. Pet. App.
at 26a.
The court, rather than applying its traditional twopart “substantial similarity” test to determine whether a
plaintiff has established copying of constituent elements
that are original, it chose not to apply any such substantial
similarity test because Towle had already admitted that
he copied portions of the 1966 and 1989 batmobiles. Pet.
App. at 26a.
REASONS FOR GRANTING CERTIORARI
I.

INTRODUCTION

The law in every circuit except for the Ninth
Circuit is that the design of an automobile, like the
design of any other utilitarian object, is not eligible for
copyright protection. “Useful items” are only eligible for
copyright protection if, and to the extent that, the design
“incorporates pictorial, graphic, or sculptural features
that can be identified separately from, and are capable of

 16
existing independently of, the utilitarian aspects of the
article.” 17. U.S.C. §101. Congress has expressed that it
specifically intended not to grant copyright protection to
automobile designs. Moreover, the U.S. Copyright Office
has confi rmed this mandate by announcing that, although
“a drawing or photograph of an automobile . . . may be
copyrighted . . . that does not give the artist the exclusive
right to make automobiles . . . of the same design.” http://
www.copyright.gov/register/va-useful.html.
The Ninth Circuit has completely ignored this mandate,
conjuring up an exception to this non-copyrightability
rule. Indeed, it has arbitrarily slapped the imprimatur
of a “character” onto an inanimate object, an automobile
(or, in this case, several automobiles) called a “batmobile,”
holding that such “character” status renders the design
of an automobile subject to copyright.
Moreover, the court engages in this tortured analysis
while abusing its own test for the determination of a
“character.” In order to achieve “character” status,
the so-called character must have consistent, widelyidentifiable, physical attributes. Yet, the Ninth Circuit
in this case has made a factual determination that a
batmobile is a character, and that DC owns that character,
notwithstanding that the various batmobiles that were
depicted in DC’s comic books have no consistent or widelyidentifiable physical traits or attributes whatsoever. 3
Significantly, once the Ninth Circuit made the
erroneous fi nding that the dozens of different makes,
3. At the very least, that factual determination should have
been made by the jury, as in Halicki.

 17
models, colors, shapes, and sizes of batmobiles in DC’s
comic books collectively constituted one composite,
protectable “character,” it then summarily concluded that
the batmobiles that were depicted in the 1966 “Batman”
television show (to which DC does not own the copyright)
and the 1989 “Batman” motion picture (to which DC
does not own the copyright), were derivative works. The
court then made the further leap that Towle’s functional
automobiles are infringing works 4 of DC’s drawings. 5
The court did so without conducting any analysis as to:
(1) what, if any, similarities existed between any one of
those dozens of automobiles and Towle’s batmobiles, the
fi rst of which was a pre-existing (Lincoln) automobile and
the second of which had a Chevrolet chassis; or (2) whether
Towle’s batmobiles contained any new, original expression.

4. Neither the District Court nor the Ninth Circuit indicated
which specific copyrights were infringed. DC did not attach any
copyright certificates to the complaint, and identified only 35
copyrights, out of the thousands of Batman-related copyrights
that it claims to own, during the entire litigation. It is impossible
to ascertain which one of those copyrights could possibly have
been infringed.
5. It is inconceivable that, by drawing images in a comic book
that are patterned after real automobiles, DC could suddenly
own the copyright to those automobiles. If an automobile may
be copyrighted, then it was DC that actually infringed the
copyrights of many, many automobile manufacturers, in which
case its own works constituted unauthorized derivative works. DC
claims, and the Ninth Circuit has held, that, by drawing various
existing automobiles, DC not only owns the copyright to its comic
book pages, but also to the (pre-existing) automobiles depicted
thereon, to the exclusion of everyone who would manufacture such
automobiles – presumably including the original manufacturers.

 18
Had the entire opinion of the Ninth Circuit not been
infected with the erroneous conclusion that the 1966 and
1989 batmobiles were derivative works that incorporated a
protectable DC “character,” the court typically would have
(and should have) conducted the extrinsic test to determine
whether Towle’s automobiles and DC’s automobiles shared
any substantial similarities of protectable expression.
This analysis would have required the court to fi lter out
all of the unprotectable elements that appear in the DC
automobiles, and would have led to the correct conclusion
that there are no substantial similarities of protectable
expression between Towle’s functioning automobiles and
the DC automobiles.
This case presents substantial issues of law, among
which are: (1) whether the Ninth Circuit has ignored the
express mandate of Congress and the Copyright Office,
as well as the law throughout the circuits, by holding that
functional automobiles are subject to copyright protection;
and (2) whether the Ninth Circuit has impermissibly
extended the protection that is afforded to “characters”
under copyright law by finding that inanimate objects that
do not display any personality traits, or any consistent and
widely-identifiable physical attributes, can be separately
protected as characters.
II. THE NINTH CIRCUIT’S HOLDING IMPROPERLY
GRANTS DC COPYRIGHT OWNERSHIP IN
FUNCTIONING AUTOMOBILES.
In passing the Copyright Act of 1976, Congress
attempted to distinguish between protectable “works
of applied art” and “industrial designs not subject to
copyright protection.” See H.R. Rep. No. 1476, 94th Cng.,

 19
2d Sess. 54, reprinted in 1976 U.S. Code Cong. & Admin.
News 5659, 5667 (hereinafter “H.R. Rep. No. 1476”).
The “works of art” classification that was present in
the Copyright Act of 1909 was omitted, and replaced by
reference to “pictorial, graphic, and sculptural works.” See
17 U.S.C. § 102(a)(5). According to the House Report, the
new category was intended to supply “as clear a line as
possible between copyrightable works of applied art and
uncopyrighted works of industrial design.” H.R. Rep. No.
1476, at 55; U.S. Code Cong. & Admin. News 1976, at 5668.
Pursuant to Section 101 of the Copyright Act, the
statutory definition of “pictorial, graphic, and sculptural
works” states that:
The design of a useful article, as defined in this
section, shall be considered a pictorial, graphic,
or sculptural work only, if, and only to the extent
that, such design incorporates pictorial, graphic
or sculptural features that can be identified
separately from, and are capable of existing
independently of, the utilitarian aspects of the
article.
17 U.S.C. § 101.
Significantly, the legislative history provides the
following with respect to the criteria for separate identity
and independent existence, as used in Section 101:
. . . although the shape of an industrial product
may be aesthetically satisfying and valuable,
the Committee’s intention is not to offer it
copyright protection under the bill. Unless the

 20
shape of an automobile, airplane, ladies’ dress,
food processor, television set, or any other
industrial product contains some element that,
physically or conceptually, can be identified as
separate from the utilitarian aspects of that
article, the design would not be copyrighted
under the bill.
H.R. Rep. No. 1476 at 55; U.S. Code Cong. & Admin. News
1976, at 5668 (emphasis added).
A “useful article” is defined as follows:
A “useful article” is an article having an
intrinsic utilitarian function that is not merely
to portray the appearance of the article or to
convey information. An article that is normally
a part of a useful article is considered a useful
article.
17 U.S.C. § 101 (emphasis added).
Although utilitarian articles are not the subject of
copyright, a pictorial, graphic, or sculptural work within
a useful item, on rare occasion, may be the subject of
copyright protection, but only if it “can be identified
separately from, and are capable of existing independently
of, the utilitarian aspects of the [useful] article.” 17 U.S.C.
§ 101. This is known as “separability.”
The courts have recognized two types of separability:
physical separability, and conceptual separability:

 21
Physical separability means that a “pictorial,
graphic or sculptural feature incorporated into
the design of a useful article . . . can be physically
separated from the article without impairing
the article’s utility, and if, once separated, it
can stand alone as a work of art traditionally
conceived.” Conceptual separability means that
‘a pictorial, graphic or sculptural feature “can
stand on its own as a work of art traditionally
conceived, and . . . the useful article in which it
is embodied would be equally useful without it.”
Leicester v. Warner Bros., 232 F.3d 1212, 1236 n.3 (9 th Cir.
2000) (citations omitted).
In addition, the U.S. Copyright Office has clearly,
consistently, and unambiguously stated that automobile
designs are not copyrightable, and that a drawing of an
automobile does not give the artist the exclusive right
to make automobiles of the same design. See Copyright
Office Circular 40 Copyright Registration For Pictorial,
Graphic and Sculptural Works.
Indeed, the law throughout the circuits is that
“utilitarian objects,” including automobiles, are generally
not afforded copyright protection. Esquire, Inc. v. Ringer,
591 F.2d 796, 803 (D.C. Cir. 1978) (“Unless the shape of
an automobile, airplane, ladies’ dress, food processor,
television set, or any other industrial product contains
some element that, physically or conceptually, can be
identified as separable from the utilitarian aspects of that
article, the design would not be copyrighted under the
bill.”); see also Carol Barnhart Inc. v. Econ. Cover Corp.,
773 F.2d 411, 426, n.3 (2d Cir. 1985); Varsity Brands, Inc.

 22
v. Star Athletica, LLC, 799 F.3d 468, 497, n.6 (6th Cir.
2015); Norris Indus. v. Int’l Tel. & Tel. Corp., 696 F.2d
918, 924, n.8 (11th Cir. 1983); ELTRA Corp. v. Ringer, 579
F. 2d 294, 301, n.10 (4th Cir. 1978).
Notwithstanding the clear weight of authority in
other circuits, the Ninth Circuit’s decision in this matter
affords DC copyright protection in the design of an
automobile. It has done so by improperly injecting the
concept of a “character” into inanimate, functional objects,
without taking into consideration the context in which
the functional items appear, and without making any
determination of separability.
Specifically, after holding that DC owns a character
that is based upon drawings of various automobiles
(that DC calls “batmobiles”) in its comic books, the
Ninth Circuit found, without conducting any analysis or
providing any basis therefor, that the 1966 automobile that
was designed by George Barris, and the 1989 automobile
that was designed by Anton Furst, were derivative works
that stemmed from DC’s more than 100 automobiles,
and therefore necessarily incorporated DC’s batmobile
character. Pet. App. at 23a to 24a. Accordingly, when
Towle created functioning automobiles that were based
on the 1966 batmobile and the 1989 batmobile, the Ninth
Circuit concluded that Towle infringed the DC “batmobile
character” that was incorporated into the 1966 and 1989
batmobiles.
Significantly, however, the 1966 and 1989 batmobiles
– taken out of the context in which they appear – i.e., the
“Batman” television series and motion picture in which
the batmobiles are portrayed – are simply (functioning)

 23
automobiles. The batmobile “character” was not portrayed
in the automobiles that were designed for, and used in,
those productions; rather, it is the surrounding context –
the world that was created around those automobiles – in
the series and movie where the attributes of this supposed
“character” are displayed and invoked, i.e., the dramatic
portrayal of the batmobile as “swift, cunning, strong, and
elusive . . . sleek and powerful . . . highly interactive.”
Towle’s automobiles are none of those.6
Accordingly, the Ninth Circuit’s conclusion that
Towle’s automobiles infringed DC’s copyrights because
they incorporate DC’s batmobile “character” is improper,
because it gives DC, the creator of diverse and rudimentary
batmobile comic book drawings, copyright ownership in
designs of automobiles that it did not create, and that are
not protected by copyright.
III. T H E N I N T H C I R C U I T I M P R O P E R LY
CONCLU DED T H AT T H E 19 6 6 A N D 19 8 9
BATMOBILES WERE DERIVATIVE WORKS.
In concluding that the 1966 and 1989 batmobiles
were derivative works (and that Towle’s batmobile was
therefore per se an infringement), the court failed to
conduct any analysis as to which elements of the 1966
6. It is difficult to comprehend how the court could ascribe
these adjectives to a functional automobile, without a script making
it so. Although they look like the 1966 Barris batmobile and the
1989 Furst batmobile, they are not “swift,” “cunning,” “strong,”
“elusive,” “sleek,” “powerful,” or “highly interactive.” In fact,
Towle’s automobiles are just automobiles; they do not display any
of these characteristics – nor could they without a script describing
them as such.

 24
and 1989 batmobiles were new and original, and which
elements were derivative and based on DC’s prior works.
Essentially, the Ninth Circuit made a determination
that the 1966 and 1989 batmobiles were derivative works
simply because they were called “batmobiles.” Under the
Ninth Circuit’s analysis, literally anything that is called
a “batmobile” – a bicycle, a motorcycle, a skateboard, or
even an airplane – would have been a derivative work.
The Ninth Circuit’s presumption that the 1966
and 1989 batmobiles are derivative works is flawed. A
derivative work is defined as:
a work based on one or more pre-existing
works, such as a translation, fictionalization,
motion picture version, sound recording, art
reproduction, abridgment, condensation, or
any other form in which a work may be recast,
transformed, or adapted. A work consisting of
editorial revisions, annotations, elaborations, or
other modifications which, as a whole, represent
an original work of authorship, is a derivative
work.
17 U.S.C. § 101.
The term “derivative work” does not refer to all
works that borrow in any degree from pre-existing
works. Melville B. Nimmer & David Nimmer, Nimmer on
Copyright (hereinafter “Nimmer”), §3.01 at 3-3 (Matthew
Bender Rev. Ed.). Additionally, a work is not derivative
unless it has substantially copied from a prior work. Id.
If what is borrowed consists merely of ideas and not of
the expression of ideas, then, although the work may

 25
have in part been derived from prior works, it is not a
derivative work. Id. (citing Reyher v. Children’s Television
Workshop, 533 F.2d 87 (2d Cir.) (Treatise quoted), cert.
denied, 429 U.S. 980 (1976)).
Copyright in a derivative work covers only those
elements contained therein that are original with the
copyright claimant. Nimmer, §3.04 at 3-22.9. A derivative
work does not per se render protectable the pre-existing
or underlying work upon which the later work is based.
See id. As set forth in Section 103(b):
The copyright in a compilation or derivative
work extends only to the material contributed
by the author of such work, as distinguished
from the pre-existing material employed
in the work. The copyright in such work is
independent of, and does not affect or enlarge
the scope, duration, ownership or subsistence
of, any copyright protection in the pre-existing
material.
17 U.S.C. § 103(b).
If the underlying work is itself protected by copyright,
then the copyright in the derivative work or collective work
neither nullifies nor extends the protection accorded to
the underlying work. Nimmer,§3.04 at 3-22.9 (citing 17
U.S.C. §103(b) (emphasis added)). Thus, the copyright
owner of the underlying work does not as such become
the copyright owner of the material added in a collective
or derivative work incorporating such underlying work.
Id. at n.4 (citations omitted).

 26
In the instant matter, there is no evidence that either
the 1966 or the 1989 batmobile is derivative of DC’s
batmobiles7 – other than the name “batmobile.” Both the
1966 and 1989 batmobiles contain new, original elements
of design that were patented, and are not reflected in any
of DC’s batmobiles. 88
With respect to the 1966 batmobile, Barris used a
one-of-a-kind 1955 Lincoln Futura as the base, and he
independently created all of the elements that he added to
the Futura without reference to any of DC’s comic books
or anyone else’s drawings.
Similarly, there is no evidence that supports a finding
that the 1989 batmobile is derivative of any of DC’s
batmobiles. The 1989 batmobile, which was built on a
Chevrolet Impala chassis, exhibits a long and low, very
futuristic design, and a drill-like device at the front of
the car. The rear of the 1989 batmobile contains two very
7. In fact, it is not even clear that DC’s batmobile designs
in its comic books contain any original expression. Indeed, most,
if not all, of the “batmobiles” that were drawn in DC’s comic
books were based on models of preexisting vehicles. Accordingly,
pursuant to Section 103 of the Copyright Act, DC could only own
the copyright to the original, non-utilitarian features that it added
to the existing vehicles, which were none.
8. Although, for example, the 1966 batmobile and some of the
comic book batmobiles have fi ns and curved windshields, these
elements are not protected by copyright because: (1) many cars
have fi ns and curved windshields; and (2) those characteristics
are functional elements which, on their own, cannot support a
fi nding of substantial similarity. See e.g., Norris Industries, Inc.
v. International Telephone & Telegraph Corp., 696 F.2d 918, 923925 (11th Cir.), cert. den., 464 U.S. 818 (1983).

 27
large, gothic bat fins, which (even if fins on a car could be
protected by copyright – which they cannot), are not even
remotely similar to any of the fins that appear on any of
the comic book batmobiles.
In contrast, the comic book batmobiles are primarily
based on either 1940’s or 1960’s-style cars, and they
contain smaller fins, just one fin, or no fins. In fact, one
version even looks like a tractor.
It appears that the only truly shared characteristics
that the 1966 and 1989 batmobiles and Towle’s batmobile
have with any of DC’s batmobiles is that they are all
called “batmobiles,” and they are all driven by Batman.
Significantly, however, because the name “batmobile”
is protected by trademark law, and not copyright law,
the fact that these automobiles are called “batmobiles”
cannot support a finding that the 1966 and 1989 batmobiles
are derivative of the DC batmobile(s), or that Towle’s
automobile, which has never been driven by Batman, is
an infringing work.
Essentially, the Ninth Circuit has predicated liability
on Towle’s use of an idea, which is clearly not the proper
subject of copyright. 17 U.S.C. § 102 (“In no case does
copyright protection for an original work of authorship
extend to any idea, procedure, process, system, method
of operation, concept, principle, or discovery, regardless
of the form in which it is described, explained, illustrated,
or embodied in such work”); see also, Feist Publications,
Inc. v. Rural Telephone Serv. Co., 499 U.S. 340, 351 (1991)
(citing Harper & Row Publishers v. Nation Ents., 471
U.S. 539, 547 (1985) (“No author may copyright facts or
ideas. The copyright is limited to those aspects of the

 28
work – termed ‘expression’ – that display the stamp of
the author’s originality.”).
IV. THE NINTH CIRCUIT’S OPINION IS ALSO
FLAWED BECAUSE IT FAILED TO ANALYZE
WHETHER TOWLE’S AUTOMOBILES COPIED
ANY PROTECTABLE EXPRESSION FROM DC.
Once the Ninth Circuit found that the batmobile
“character” was embodied in the 1966 and 1989
batmobiles, and that Towle’s automobiles were based
on them, it neglected to analyze whether Towle actually
copied any protectable expression from DC, i.e., whether
Towle’s automobiles were substantially similar to any
protected expression by DC. Instead, the court decided
that such an analysis was not necessary:
[h]aving 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 Batmobiles. 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’ ....we need not do
so where, as here, the copying of the substance
of the entire work is admitted.
Pet. App. at 26a.

 29
The flaw in the Ninth Circuit’s approach here is
that its failure to conduct any analysis as to whether
Towle copied any protectable expression was based
on the improper assumption that the 1966 and 1989
Batmobiles were derivative works that contained DC’s
batmobile character. This assumption allowed the court
to impose liability on Towle, without fi rst ascertaining
whether Towle’s functional automobiles even copied any
protectable expression of DC.9
The court should have analyzed whether the works
were substantially similar. The Ninth Circuit’s implication
that a substantial similarity test is only necessary when
attempting to ascertain whether “copying” has occurred
is simply wrong. A determination of substantial similarity
is necessary independent of proof of copying. Indeed,
even where the fact of copying is conceded, no legal
consequences will follow from that fact unless the copying
is substantial. See Newton v. Diamond, 388 F.3d 1189,
1192-93 (9th Cir. 2004).
This would have required the court to first distinguish
between the protectable and unprotectable material that
appeared in the batmobiles, “because a party claiming
infringement may place no reliance upon any similarity in
expression resulting from unprotected elements.” Apple
v. Microsoft, 35 F.3d 1435, 1446 (9 th Cir. 1994).
9. Even if the court were correct that the 1966 and 1989
batmobiles were derivative works (of DC’s comics), it would still
be necessary to determine whether or not there was substantial
similarity of protected expression between Towle’s automobiles
and the 1966 and 1989 automobiles, and between Towle’s
automobiles and DC’s automobiles. Towle’s admission that he
copied portions of the 1966 and 1989 automobiles does not establish
copyright infringement per se.

 30
Of course, any elements that appear in the DC
batmobiles that are functional are not entitled to copyright
protection, and therefore must be fi ltered out before
conducting the extrinsic test. In other words, only those
items that are conceptual and capable of existing on their
own are relevant to the substantial similarity analysis.
See Norris Industries, Inc. v. International Telephone
& Telegraph Corp., supra, 696 F.2d at 923-925.
After fi ltering out the unprotectable elements from
the DC batmobiles, there are no substantial similarities of
protectable expression whatsoever that warrant a finding
of copyright infringement.
V. THE N I N TH CIRCU IT ’ S OPI N ION TH AT
T H E B A T M O B I L E I S A C H A R AC T E R
IMPERMISSIBLY EXTENDS THE SEPARATE
COPYRIGHT PROTECTION THAT IS GIVEN TO
A CHARACTER BEYOND WHAT ANY OTHER
CIRCUITS HAVE ALLOWED.
Although copyright protection has been afforded
to characters since Judge Learned Hand’s decision in
Nichols v. Universal Pictures Corp., 45 F.2d 119 (2d Cir.
1930), the protection has been limited to characters that
are “distinctively delineated,” and “sufficiently delineated
and defined” to merit protection. See Nichols v. Universal
Pictures Corp., 45 F.2d at 121; Olson v. National
Broadcasting Co., 855 F.2d 1446, 1452 (9 th Cir. 1988); Rice
v. Fox Broad. Co., 330 F.3d 1170, 1175 (9 th Cir. 2003).
The Ninth Circuit in this case ruled that the batmobile
displayed consistent, identifi able character traits and

 31
attributes,10 fi nding that “the Batmobile has maintained
distinct physical and conceptual qualities since its fi rst
appearance in the comic books in 1941,” as a “highlyinteractive vehicle, equipped with high-tech gadgets and
weaponry used to aid Batman in fighting crime,” that “is
almost always bat-like in appearance, with a bat-themed
from end, bat wings extending from the top or back
of the car, exaggerated fenders, a curved windshield,
and bat emblems on the vehicle.” However, the court’s
factual finding here is not only improper; it is completely
unsupported by the record.
Indeed, the batmobile has appeared in more than 100
variations in the comic books, many of which did not include
any “bat-like” appearance whatsoever. On occasion,
the batmobile appeared simply as a 1940s Packard or
a Chevrolet. On other occasions, it was portrayed as a
muscle-type car, or one of many other makes and models
of automobiles, or even a tractor. These stark variations
in appearance simply do not support a finding that
the dozens of DC versions of batmobiles displayed the
requisite widely-consistent and recognizable traits to
establish separate copyright protection for a character.
The batmobile is not like Mickey Mouse or Popeye, who
always look the same.
10. In fact, after reviewing precedent, the Ninth Circuit
articulated a new test concerning the protectability of characters:
“First, the character must generally have physical as well as
conceptual qualities. Second, the character must be sufficiently
delineated to be recognizable as the same character whenever it
appears. Considering the character as it has appeared in difference
productions, it must display consistent, identifiable character traits
and attributes, although the character need not have a consistent
appearance. Third, the character must be especially distinctive
and contain some unique elements of expression.” Pet. App. at
14a to 15a.

 32
Nor does the batmobile contain any distinctive or
unique elements of expression. Although the Ninth Circuit
found that the batmobile is not merely a stock character
because “[i]n addition to its status as Batman’s loyal batthemed sidekick complete with the character traits and
physical characteristics described above, the Batmobile
also has its unique and highly recognizable name.” (Pet.
App. at 17a to 18a) However, as discussed above, the
name “batmobile” is protected by trademark, and is not
protected by copyright.11
Even in Halicki Films LLC v. Sanderson Sales &
Mktg., 547 F.3d 1213 (9 th Cir. 2008), although the Ninth
Circuit considered whether the car “Eleanor” in the
motion picture “Gone In Sixty Seconds” could be construed
as a character, the court remanded the “fact-intensive”
issue (of determining the existence of a character) to the
District Court in order to determine whether the car’s
physical, conceptual, and unique elements of expression
qualified the car as a character that warrants copyright
protection. Halicki, supra, 557 F.3d at 1225.12
11. In fact, although the U.S. Copyright Office will register
visual arts that depict a character, such as drawings, sculptures,
and paintings, a “ registration for such works extends to the
particular authorship depicted in the deposit material, but does
not extend to unused characteristics of the character that are
not depicted in the deposit. Nor does it cover the name or the
general idea of the character.” See SA 5 (Compendium of U.S.
Copyright Office Practices, Circular 40A (3d Ed., December 22,
2014) (emphasis added)).
12. It is Towle’s position that Halicki was also wrongly
decided, as it, too, fl ies in the face of the mandate by Congress and
the U.S. Copyright Office that automobiles are not copyrightable.

 33
In this case, the Ninth Circuit took the next step and
made a finding that drawings of dozens of automobiles
are protected collectively as a character, and that, as a
matter of law, Towle’s automobile infringes that character.
However, because Towle’s automobile, when not called
a “batmobile,” and without Batman driving it, is simply
a functioning automobile, and has no separate life as a
character on its own, the Ninth Circuit has extended the
separate protection that may be given to a character much
too far, and in very stark contravention to Congress’s
intent.13
As discussed above, the DC batmobiles clearly do
not exhibit the widely-consistent and recognizable traits
that otherwise might allow them to receive protection as
a character. See Walt Disney Productions v. Air Pirates,
581 F.2d 751 (9 th Cir. 1978) (finding that Mickey Mouse
was in fact “the story being told,” given the high degree
of recognition and identification).
Moreover, although the Ninth Circuit found that
the batmobile “is a crime-fighting car with sleek and
powerful characteristics that allow Batman to maneuver
quickly...” (Pet. App. at 16a), and “contains the most
updated weaponry,” (Pet. App. at 17a), it is clear that these
“character traits and attributes” are not portrayed in the
automobiles that were designed for and used in those
productions. Rather, it is the surrounding context that was
13. The Ninth Circuit’s decision here is even quite a leap from
its own prior decision in Olson v. NBC, 855 F.2d 1446, 1451 (9 th
Cir. 1988), in which the court stated that “characters ordinarily
may not be copyrighted. Id. at 1451 (citing Warner Bros. Pictures,
Inc. v. Columbia Broadcasting System, Inc., 216 F.2d 945, 950
(9 th Cir. 1954)).

 34
created around those automobiles in the series and movie
where the attributes of DC’s character are displayed and
invoked, i.e., the dramatic portrayal of the batmobile.
Taken out of the context of appearing in the
television series or the motion picture, the 1966 and 1989
batmobiles are simply automobiles that do not exhibit
any of the fantastical elements that appear in the fictional
productions, i.e., the automobiles are not characters.
It was these automobiles upon which Towle based his
replicas.
Accordingly, by confl ating the fictional context in
which the batmobiles appeared with the design of the
actual cars, the Ninth Circuit has improperly extended the
protection that is given to characters to a functional and
inanimate object that is otherwise not subject to copyright.
VI. THE POTENTIAL RAMIFICATIONS OF THIS
CASE ARE DRAMATIC AND PERVASIVE.
Congress could not be more clear that it did not
intend automobiles and other useful items to be subject
to copyright. If the Ninth Circuit’s opinion is upheld in
this case, then anyone will be able to obtain copyright
protection for any useful item, simply by drawing it in a
comic book, and calling it a character.
In accordance with just the facts of this case alone,
Lincoln Motor Company cannot enjoin Towle from
manufacturing its 1955 Futura, but DC can do so. General
Motors cannot enjoin Towle from manufacturing the
automobiles that DC drew in its comics, but DC can do
so. Moreover, to bring the absurdity full circle, under

 35
the Ninth Circuit’s analysis, DC theoretically could sue
Lincoln and General Motors for manufacturing their
own automobiles, as long as DC chose to draw them in
its comics.
Moreover, this decision is much broader and more
comprehensive than applying just to batmobiles. Under
the holding of this case, if Ford Motor Company wants to
protect the design of its new line of pick-up trucks, all that
it would have to do is to create a comic book in which the
trucks are “characters.”14 At that point, if another auto
company sold a truck that looked similar to the Ford truck,
Ford could sue the competitor for copyright infringement.
By simply drawing one of its trucks in a comic book and
calling it a character, Ford would thus obtain 95 years
of protection for its car design, instead of the 14-year
protection that Congress intended it to receive pursuant
to a design patent.
This “exception” to the rule of non-copyrightability
of useful items certainly would not just be limited to
automobiles. Any company would be able to obtain a 95year monopoly on the design of virtually any useful item,
simply by drawing the item in a comic book (or book or
movie), and making a character out of it. If, for example,
a company wanted a monopoly on a particular blender,
whether or not the company held a patent to the blender,
all that it would have to do is draw a picture of the blender,
place it in a comic book, and call it “Super Blender,” and it
would enjoy that monopoly for the next 95 years. The same
analysis would apply to clothing, cell phones, watches,
refrigerators, bicycles, guns, and every other useful item.
14. Worse, General Motors could obtain copyright protection
for the Ford truck, simply by drawing the Ford in a comic book.

 36
The apparent absurdity of these examples is only
exceeded by the true absurdity of the Ninth Circuit’s
opinion. Towle did not copy a single drawing that appeared
in DC’s comic books; he did not use a single “gadget” that
DC drew; he did not even make a movie depicting any
of those drawings. He manufactured two automobiles,
nothing more. He did not tell a story about the automobile;
he did not describe the automobile as swift, cunning,
strong, elusive, sleek, powerful, or highly interactive;
nor did he design it as such. He simply manufactured
two automobiles, after waiting for the patents on each to
expire.
Congress clearly expressed its intent that automobiles
are not to be the subject of copyright; yet, the Ninth
Circuit has completely circumvented that mandate by
unilaterally conjuring up a “character” exception. Towle
respectfully requests that this Court enforce Congress’s
mandate and confi rm that useful items are not protected
by copyright, and that there are no exceptions to this rule.

 37
CONCLUSION
For all of the foregoing reasons, the Petition for a Writ
of Certiorari should be granted to review the opinion of
the Ninth Circuit Court of Appeal.
January 22, 2016

Respectfully submitted,

EDWIN F. MCPHERSON
Counsel of Record
TRACY B. RANE
MCPHERSON RANE LLP
1801 Century Park East
24th Floor
Los Angeles, CA 90067
(310) 553-8833
emcpherson@
mcphersonrane.com

LARRY ZERNER
LAW OFFICES OF LARRY ZERNER
1801 Century Park East
Suite 2400
Los Angeles, CA 90067
(310) 773-3623

Counsel for Petitioner

 APPENDIX

1a
Appendix A — Appendix
opinionAof the united
stAtes court of AppeAls for the
ninth circuit, filed
september 23, 2015
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
No. 13-55484
D.C. No. 2:11-cv-03934-RSWL-OP
DC COMICS,

Plaintiff-Appellee,

v.
MARK TOWLE, AN INDIvIDUAL,
DBA GARAGE GOTHAM,
Defendant-Appellant.
Appeal from the United States District Court
for the Central District of California
Ronald S.W. Lew, Senior District Judge, Presiding
February 5, 2015, Argued and Submitted,
Pasadena, California
September 23, 2015, Filed
Before: Michael J. Melloy,* Jay S. Bybee,
and Sandra S. Ikuta, Circuit Judges.
Opinion by Sandra S. Ikuta

* The Honorable Michael J. Melloy, Senior Circuit Judge
for the U.S.Court of Appeals for the Eighth Circuit, sitting by
designation.

 2a
Appendix A
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
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
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.
Originally introduced in the Batman comic books in
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
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
equipped with futuristic weaponry and technology that is
“years ahead of anything else on wheels.”

 3a
Appendix A
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” 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
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.

 4a
Appendix A
Under this agreement, ABC (through a series of
sublicensing agreements) produced the 1966 television
show starring Adam West as Batman. In addition to
Batman, Robin, and the use of visual onomatopoeia
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
conveyances … as depicted and contained in the comic
magazines [published by DC], which are identifiable
‘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

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.

 5a
Appendix A
granted to” BPI under the agreement “are reserved to
DC and may be exercised by DC at all times without any
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
2

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
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.

 6a
Appendix A
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 copyright. He claimed that the Batmobile as it
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. We thus reject Towle’s argument
that DC has failed to identify the copyrights at issue in this case.

 7a
Appendix A
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
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
Among other things, it found that the Batmobile “is known
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 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 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.

 8a
Appendix A
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
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
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

 9a
Appendix A
aware that copying the 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
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!

 10a
Appendix A
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. 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
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
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.

 11a
Appendix A
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 (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.
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
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 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).

 12a
Appendix A
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
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.
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
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
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

 13a
Appendix A
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
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., 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
and model. 547 F.3d at 1225. Indeed, Halicki put no weight
on the fact that Eleanor was a customized yellow 1971
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 U.S. Dist. LEXIS 5395, 2002
WL 485730, at *3-4 (S.D.N.Y. Mar. 29, 2002) (Batman).

 14a
Appendix A
In each instance, courts have deemed the persistence of a
character’s traits and attributes to be key to determining
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,
modern world.” Toho Co., 33 F. Supp. 2d at 1216. In short,
although James Bond’s, Godzilla’s, and Batman’s “costume
and character have evolved over the years, [they have]
retained unique, protectable characteristics” and are
therefore entitled to copyright protection as characters.
Sapon, 2002 U.S. Dist. LEXIS 5395, 2002 WL 485730,
at *3-4.
We read these precedents as establishing a threepart 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
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,

 15a
Appendix A
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
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.
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
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
in appearance, with a bat-themed front end, bat wings
extending from the top or back of the car, exaggerated

 16a
Appendix A
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
powerful characteristics that allow Batman to maneuver
Batmobile is described as waiting “[l]ike an impatient
steed straining at the reins … shiver[ing] as its supercharged motor throbs with energy” before it “tears
the Batmobile “leaps away and tears up the street like
out with thunderclap force, and the miracle car of the
6
Like its
comic book counterpart, the Batmobile depicted in both
the 1966 television series and the 1989 motion picture
undoubtedly give 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
6. This episode causes Robin to exclaim “Whee! The Batplane
couldn’t do better!”

 17a
Appendix A
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
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
traits and attributes,” the second prong of the character
analysis is met here.
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
7. Towle submitted a chart to the district court setting forth
these features.

 18a
Appendix A
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
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
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
disagree. We have previously recognized that “[w]hether

 19a
Appendix A
a 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.

 20a
Appendix A
§ 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
(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, 110 S. Ct. 1750, 109
L. Ed. 2d 184 (1990), a three-dimensional costume based
upon two-dimensional cartoon characters, see Entm’t
Research Grp., 122 F.3d at 1218, or three-dimensional
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

 21a
Appendix A
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 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

 22a
Appendix A
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 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

 23a
Appendix A
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 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,
8.
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).

 24a
Appendix A
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.
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
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).

 25a
Appendix A
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 threedimensional 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 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

 26a
Appendix A
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 twopart “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.

 27a
Appendix A
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
goodwill” by using the mark).

 28a
Appendix A
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.

 29a
Appendix A
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 infringed upon DC’s property rights
when he produced unauthorized derivative works of the
Batmobile as it appeared in the 1966 television show
district court.
Affirmed.

 303

Appendix A
APPENDIX A

Batmobile Depieted the 1966 Television Series

 

313

Appendix A
APPENDIX 

Batmobile Depieted the 1989 Motion Picture

 

 

 

32a
APPENDIX B — Appendix
OPINIONBOF THE UNITED
STATES DISTRICT COURT FOR THE CENTRAL
DISTRICT OF CALIFORNIA, FILED
FEBRUARY 7, 2013
UNITED STATES DISTRICT COURT FOR THE
CENTRAL DISTRICT OF CALIFORNIA
CV 11-3934 RSWL (OPx)
DC COMICS,
Plaintiff,
v.
MARK TOWLE, AN INDIVIDUAL AND D/B/A
GOTHAM GARAGE, AND DOES 1-10, INCLUSIVE,
Defendants.
ORDER re: Defendant Mark Towle’s Motion for
Partial Summary Judgment [41]; Plaintiff DC
Comics’ Motion for Partial Summary Judgment [42]
February 7, 2013, Decided
February 7, 2013, Filed
On January 30, 2013, Defendant Mark Towle’s Motion
for Partial Summary Judgment [41] and Plaintiff DC
Comics’ Motion for Partial Summary Judgment [42] came
on for regular calendar before the Court. The Court
having reviewed all papers submitted pertaining to these

 33a
Appendix B
Motions and having considered all arguments presented to
the Court, NOW FINDS AND RULES AS FOLLOWS:
The Court GRANTS in Part and DENIES in Part
Plaintiff’s Motion. The Court DENIES Defendant’s
Motion.
I. BACKGROUND
This Action stems from a Complaint fi led by Plaintiff
DC Comics (“Plaintiff”) against Defendant Mark Towle
d/b/a Gotham Garage (“Defendant”) and Does 1 through
10 for (1) Copyright Infringement, (2) Trademark
Infringement, and (3) Unfair Competition [1].
A. Undisputed Facts
Plaintiff is a New York General Partnership consisting
of E.C. Publications, Inc. and Warner Communications Inc.
Pl.’s Statement of Uncontroverted Facts and Conclusions
of Law (“SUF”) ¶ 1 [43]. Plaintiff is the successor-ininterest to Detective Comics, Inc., National Comics
Publications, Inc., National Periodical Publications,
Inc. (“National Periodical”), and DC Comics Inc. Id.
¶ 2. Plaintiff is the publisher of comic books featuring
the world-famous Batman and his Batmobile. Id. ¶¶ 3-4.
Originally introduced in 1941, the Batmobile is a fictional
high-tech automobile that Batman employs as his primary
mode of transportation. Id. ¶¶ 9-10. Batman and his
Batmobile vehicle have appeared in comic books, television
shows, and blockbuster movies, including the television
series, Batman, that fi rst appeared in 1966 and the 1989

 34a
Appendix B
fi lm, Batman. Id. ¶¶ 7, 13, 27. Plaintiff owns the copyright
registrations to the Batman comic books. Id. ¶ 12.
In 1965, Plaintiff’s predecessor, National Periodical,
licensed its Batman literary property to American
Broadcasting Company (“ABC”) for use in the 1966
Batman television series, which starred Adam West
as Batman. Id. ¶ 13. ABC contracted with Greenway
Productions, Inc. (“Greenway”) and Twentieth CenturyFox Television, Inc. (“Fox”) to produce the television
series. Id. ¶ 15. Fox and Greenway own the copyright
registrations for all of the episodes of the 1960s Batman
television series. Id. ¶ 16. The Batmobile that appeared in
the television series (hereinafter, “the 1966 Batmobile”)
was manufactured by Barris Kustom City and designed
by George Barris. Id. ¶ 19. Barris Kustom City retained
title to the original Batmobile vehicle that was used in the
fi lming of the television show. Id.
Plaintiff also licensed its Batman literary property
to produce motion fi lms. In 1979, Plaintiff entered into
an agreement with Batman Productions, Inc., granting
the use of its Batman literary property in feature-length
motion pictures. Id. ¶ 25. These rights were assigned to
Warner Bros. Inc. (“Warner Bros.”) and resulted in a
series of Batman fi lms, including the 1989 Batman fi lm
to which Warner Bros. owns the copyright registration.
Id. ¶¶ 27-28. Anton Furst was hired to construct the
Batmobile that appeared in the 1989 fi lm (hereinafter,
“the 1989 Batmobile”). Id. ¶ 31.

 35a
Appendix B
Plaintiff also owns a number of Batman-related
trademarks, including, the BATMOBILE wordmark, the
BAT emblem design mark, the BAT REP II design mark,
the BATMAN wordmark, and other variations of the
Batman symbol. Id. ¶ 35; see below. The trademarks are
registered in various classes, and appear on merchandise
such as toy figurines and automobiles, apparel, and
household goods. Id. ¶¶ 37, 40. Plaintiff also licenses to
Fiberglass Freaks the manufacture and customization
of full-size automobiles into the Batmobile vehicles
featuring Plaintiff’s trademarks. Id. ¶ 39. Plaintiff has
also contracted with George Barris, the designer of the
original 1966 Batmobile, to produce replicas of the 1966
Batmobile, featuring Plaintiff’s trademarks, and to exhibit
them around the world. Id. ¶ 38.
Defendant is the owner, operator, and manager of a
business producing custom cars modeled after vehicles
found in various television shows and movies. Id. ¶ 44.
Defendant has been producing and selling replica
vehicles based on the 1966 and 1989 Batmobile vehicles
and car kits that allow others to customize their vehicles
into the Batmobile. Id. ¶¶ 45-48, 50. Defendant has also
manufactured and distributed various automobile parts
and accessories featuring the Batman trademarks. Id.
¶ 51. Defendant does business through the websites
w w w.gothamgarage.net, w w w.gothamgarage.com,
www.marktowle.com,, and www.batmobilereplicas.com,
which use Plaintiff’s trademarks to promote Defendant’s
business. Id. ¶¶ 52-53.

 36a
Appendix B
Plaintiff ’s Trademarks
Reg. No.

Class

1581725
1581593
1581659
2119266

28
21
25
16

3299017
3110604
3326043
3313612

9
16
25
28

1219120

16

856045
858860
828412
2457655
1652640
839561
1221720
1587507

25
28
21
41
41
16
16
9

Mark

BATMAN (Word Mark)

 37a
Appendix B
Plaintiff ’s Trademarks
Reg. No.

Class

4246497
1124961
1179342
Serial No.
85143617

40
28
28
12

Mark
BATMOBILE (Word Mark)

B. Procedural History
On May 6, 2011, Plaintiff fi led its Complaint against
Defendant [1], and on November 22, 2011, Plaintiff fi led
a First Amended Complaint [13]. In its First Amended
Complaint (“FAC”), Plaintiff asserts that the Defendant
has infringed on the copyrighted versions of the 1966
Batmobile and the 1989 Batmobile. Plaintiff also asserts
that Defendant has infringed upon its trademarks in
marketing and selling these infringing vehicles.
On December 16, 2011, Defendant fi led a Motion to
Dismiss Claim of Copyright Infringement pursuant to
Federal Rule of Civil Procedure 12(b)(6) [15]. The Court
denied the motion on January 26, 2012 [21]. On February
14, 2012, Defendant fi led an Answer, asserting several
affi rmative defenses, including laches, unclean hands,
and fair use [23].
On December 26, 2012, Defendant fi led the present
Motion for Partial Summary Judgment [41] and Plaintiff
fi led the present Motion for Partial Summary Judgment
[42].

 38a
Appendix B
The Parties’ present motions seek summary judgment
as to Plaintiff ’s trademark, copyright, and unfair
competition causes of action, and on Defendant’s laches
defense.
II. LEGAL STANDARD
Summary judgment is appropriate when there is no
genuine issue of material fact and the moving party is
entitled to judgment as a matter of law. Fed. R. Civ. P.
56. A genuine issue is one in which the evidence is such
that a reasonable fact-finder could return a verdict for the
non-moving party. Anderson v. Liberty Lobby, 477 U.S.
242, 248, 106 S. Ct. 2505, 91 L. Ed. 2d 202 (1986).
A party seeking summary judgment always bears
the initial burden of establishing the absence of a genuine
issue of material fact. Celotex Corp. v. Catrett, 477 U.S.
317, 322, 106 S. Ct. 2548, 91 L. Ed. 2d 265 (1986). “Where
the moving party will have the burden of proof on an issue
at trial, the movant must affi rmatively demonstrate that
no reasonable trier of fact could find other than for the
moving party.” Soremekun v. Thrifty Payless, Inc., 509
F.3d 978, 984 (2007).
Once the moving party makes this showing, the nonmoving party must set forth facts showing that a genuine
issue of disputed fact remains. Celotex, 477 U.S. at 322.
The non-moving party is required by Federal Rule of
Civil Procedure Rule 56 to go beyond the pleadings and
designate specific facts showing a genuine issue for trial
exists. Id. at 324.

 39a
Appendix B
III. DISCUSSION
A. Evidentiary Objections
In ruling on a Motion for Summary Judgment,
courts consider only evidence that would be admissible
at trial. Fed. R. Civ. P. 56. Here, the Parties have fi led
over forty evidentiary objections. Given the number of
objections made by the Parties, the Court will address
the evidentiary objections in two separate orders. For
the purposes of this ruling, the Court has considered only
admissible evidence.
B. Trademark Infringement
To sustain a claim for trademark infringement,
Plaintiff must show (1) that it has valid trademark rights;
and (2) that Defendant’s use of a similar mark is likely to
cause confusion. Applied Info. Scis. Corp. v. eBay, Inc.,
511 F.3d 966, 969 (9th Cir. 2007). “The core element of
trademark infringement is the likelihood of confusion, i.e.,
whether the similarity of the marks is likely to confuse
customers about the source of the products.” E. & J. Gallo
Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir.
1992). Courts look to the following factors, known as the
Sleekcraft test, for guidance in determining the likelihood
of confusion: (1) strength of Plaintiff’s mark; (2) proximity
of the goods; (3) similarity of the marks; (4) evidence of
actual confusion; (5) marketing channels used; (6) type of
goods and the degree of care likely to be exercised by the
purchaser; (7) defendant’s intent in selecting the mark;
and the (8) likelihood of expansion of the product lines.

 40a
Appendix B
Dr. Seuss Enters. v. Penguin Books USA, Inc., 109 F.3d
1394, 1404 (9th Cir. 1997) (citing AMF Inc. v. Sleekcraft
Boats, 599 F.2d 341, 348-49 (9th Cir. 1979)).
Although courts should consider these factors to
determine the issue of likelihood of confusion, “[n]o
mechanistic formula or list can set forth in advance the
variety of elements that comprise the market context
from which likelihood of confusion must be determined.”
Id. (citing Restatement (Third) of Unfair Competition §
21, comment a (1995)) (internal quotations omitted). As
such, this “list is not exhaustive” and “[o]ther variables
may come into play depending on the particular facts
presented.” Id. (citing Sleekcraft, 599 F.2d at 348 n.11).
Furthermore, although disfavored in trademark
infringement cases, summary judgment may be entered
when no genuine issue of material fact exists. See Surfvivor
Media, Inc. v. Survivor Prods., 406 F.3d 625, 630 (9th Cir.
2005). Whether likelihood of confusion is more a question
of law or one of fact can depend on the circumstances of
each particular case. Alpha Indus., Inc. v. Alpha Steel
Tube & Shapes, Inc., 616 F.2d 440, 443 (9th Cir. 1980). And,
a question of fact may be resolved as a matter of law if
reasonable minds cannot differ and the evidence permits
only one conclusion. See Sanders v. Parker Drilling Co.,
911 F.2d 191, 194 (9th Cir. 1990).
The legal conclusion that confusion is likely must
rest on the particular facts of the case, but when all of
the material facts have been determined, the ultimate
determination of likelihood of confusion lies within the

 41a
Appendix B
exclusive jurisdiction of the court. See Alpha Indus, Inc.,
616 F.2d at 443-44; see also Sleekcraft, 599 F.2d at 348.
First, the Court finds that Plaintiff has valid
trademark rights in the trademarks at issue in this case.
Under the Lanham Act, registration of a trademark
creates a rebuttable presumption that the mark is valid,
but the presumption evaporates as soon as evidence of
invalidity is presented. 15 U.S.C. § 1051. Plaintiff owns
the Bat Emblem mark, the Bat Emblem (Batman Begins)
mark, Bat Rep II mark, the BATMAN word mark, and the
BATMOBILE word mark in various classes. Defendant
puts forth no evidence or argument to demonstrate that
these marks are invalid.
Defendant’s only argument with respect to Plaintiff’s
trademark infringement claim is that Plaintiff did not own
the BATMOBILE mark in Class 12 for “automobiles” at
the time Plaintiff fi led this Action and that registration in
Class 40 did not occur until November 20, 2012. However,
under the Lanham Act, to establish standing to sue for
trademark infringement, a plaintiff must show that he or
she is either (1) the owner of a federal mark registration,
(2) the owner of an unregistered mark, or (3) a nonowner
with a cognizable interest in the allegedly infringed
trademark. Halicki Films, LLC v. Sanderson Sales &
Mktg., 547 F.3d 1213, 1225-26 (9th Cir. 2008). Plaintiff
only needs to demonstrate that it is the registered owner
of a mark for any class of products, even one that does
not compete directly with Defendant’s products. Id. at
1227. “The question of whether the products on which the
allegedly infringing mark appears are sufficiently related

 42a
Appendix B
to goods sold by the plaintiff such that the defendant’s
actions qualify as infringement is, by contrast, a merits
question.” Id.
Defendant does not dispute that he has used or uses
Plaintiff’s trademarks. In fact, Defendant does really
contest Plaintiff’s trademark claim. Defendant does
not dispute that he has manufactured and distributed
automobile parts and accessories featuring the trademarks
at issue. Def.’s Stmt. of Genuine Issues (“GIF”) ¶ 51 [66].
For example, Defendant produced vehicle floor mats with
bat symbols on them. Drey Decl. Ex. H [55]. The vehicle
doors of Defendant’s 1966 Batmobile replicas also have
bat symbols on them. Joint Stipulation, Ex. 24 [45].1 The
fi re extinguisher in the 1966 Batmobile replica also has a
bat symbol on it. Id. Defendant does not dispute that he
does business through a website called batmobilereplicas.
com. 2 GIF ¶ 52. He also does not dispute that he uses these
trademarks to promote his business. Id. ¶ 53.
Next, the Court finds that Defendant’s unauthorized
use of Plaintiff’s trademarks causes a likelihood of
confusion-that is, whether the similarity of the marks
is likely to confuse customers about the source of the
products. Brookfield Communs., Inc. v. West Coast
Entertainment Corp.., 174 F.3d 1036, 1053 (9th Cir. 1999).
1. The Parties fi led a “Joint Stipulation” stating that the
Parties stipulate to certain facts and evidence, including as to
the authenticity of certain exhibits [45]. For the purposes of the
present motions, the Court grants the stipulation.
2. Use of a trademark in a domain name constitutes “use”
under the Lanham Act. Brookfi eld, 174 F.3d at 1053.

 43a
Appendix B
First, with respect to similarity of the marks, “the
greater the similarity between the two marks at issue,
the greater the likelihood of confusion.” Id. at 1054. In
the similarity analysis: “(1) Marks should be considered
in their entirety and as they appear in the marketplace;
(2) Similarity is best adjudged by appearance, sound, and
meaning; and (3) Similarities weigh more heavily than
differences.” Entrepreneur Media, Inc. v. Smith, 279
F.3d 1135, 1144 (9th Cir. 2002). “[S]imilarity of design
is determined by considering the overall impression
created by the mark as a whole rather than simply
comparing individual features.” adidas-Am., Inc. v.
Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1052 (D.
Or. 2008) (citing Exxon Corp. v. Texas Motor Exch., Inc.,
628 F.2d 500, 505 (5th Cir. 1980)). There is no dispute
that Defendant has used marks that are identical to
Plaintiff’s registered marks. For example, Defendant has
used the BATMAN and BATMOBILE word marks on his
advertising and promotional materials. See, e.g., GIF ¶ 52.
Further, Defendant also has used various bat symbols
that are very similar to the BAT Emblem, BAT Emblem
(Batman Begins) and BAT REP II marks. See Joint
Stipulation, Ex. 24. For example, the bat symbol appearing
on the vehicle doors for the 1966 Batmobile replicas is a
stylized bat. Defendant’s bat symbols are slightly different
from Plaintiff’s registered trademarks, but Defendant’s
marks appear substantially the same overall.

 44a
Appendix B
Defendant’s Marks

Plaintiff ’s Marks

Thus, there is no genuine issue of fact regarding the
similarity of the marks.

 45a
Appendix B
Second, the strength of the trademarks at issue here
weigh in favor of finding a likelihood of confusion. The
purpose of examining the strength of the plaintiff’s mark
is to determine the scope of trademark protection to which
the mark is entitled. See Entrepreneur Media, 279 F.3d at
1141. The more unique the mark, the greater the degree
of protection. See id. Trademarks may be sorted into five
categories of increased strength and distinctiveness: (1)
generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5)
fanciful. Two Pesos, Inc., v. Taco Cabana, Inc., 505 U.S.
763, 768, 112 S. Ct. 2753, 120 L. Ed. 2d 615 (1992). Fanciful
marks, the strongest type, are “wholly made-up terms,”
such as “Clorox” bleach. Brookfield, 174 F.3d at 1058 n.19.
“Fanciful” marks consist of “coined phrases” that also
have no commonly known connection with the product at
hand. See Dreamwerks Prod. Grp., Inc. v. SKG Studio, 142
F.3d 1127, 1130 n.7 (9th Cir. 1998) (holding that “Kodak”
is a fanciful mark). A mark is “strong” if it is memorable
and if the public would likely associate it with the mark’s
owner. Brookfield, 174 F.3d at 1058. As the Ninth Circuit
recently explained, “[t]he stronger a mark — meaning
the more likely it is to be remembered and associated
in the public mind with the mark’s owner — the greater
the protection it is accorded by the trademark laws.” Id.
at 1058.
The marks at issue here include a series of design
marks featuring a bat as well as the word marks
BATMOBILE and BATMAN. The bat design marks are
distinct. The terms BATMOBILE and BATMAN are
fanciful words, as they are coined phrases that evoke the
“bat” persona of the Batman comic book character. The

 46a
Appendix B
public would likely associate the marks with Plaintiff’s
Batman comic books, merchandise, motion pictures, and
television programs.
Third, with regard to the issue of actual confusion,
the Ninth Circuit has recognized that evidence of actual
confusion is not required to establish likelihood of
confusion. See American Int’l Group, Inc. v. American
Int’l Bank, 926 F.2d 829 (9th Cir. 1991). Nevertheless,
Defendant admits here that “most” of his potential
customers asked if he had a relationship with Warner
Bros. or was licensed by Warner Bros. Drey Decl. Ex. H,
at 94:21-95:14 (Towle Dep.). As revealed at the hearing on
the present motions, Warner Bros. is an affi liated entity.
This evidence strongly suggests that there was actual
confusion, as customers wondered whether Defendant
was authorized to use Plaintiff’s marks. “Initial interest
confusion is customer confusion that creates initial interest
in a competitor’s product. Although dispelled before an
actual sale occurs, initial interest confusion impermissibly
capitalizes on the goodwill associated with a mark and is
therefore actionable trademark infringement.” Playboy
Enters., Inc. v. Netscape Commc’ns Corp., 354 F.3d 1020,
1025 (9th Cir. 2004).
Fourth, the proximity or relatedness of the goods
favors a fi nding of likelihood of confusion. Goods are
proximate if they are “similar in use and function” and
“would be reasonably thought by the buying public to
come from the same source if sold under the same mark.”
Sleekcraft, 599 F.2d at 348, 350. “Where goods are related
or complementary, the danger of consumer confusion

 47a
Appendix B
is heightened.” E. & J. Gallo Winery, 967 F.2d at 1291.
The goods here are the same. Defendant manufactures
replicas of the 1989 and 1966 Batmobile vehicles, and
emblazon car parts and accessories with the bat symbol.
Plaintiff offers full-size and toy versions of the Batmobile,
using its registered trademarks. Plaintiff also offers car
accessories featuring their trademarks, including car
mats and wheel covers. Kogan Decl. Ex. A. This factor
weighs in favor of Plaintiff.
Fifth, the Court must next consider “whether
the predominant purchasers of the parties’ goods are
similar or different, and whether the parties’ marketing
approaches resemble one another.” Aurora World, Inc.
v. Ty, Inc., 719 F.Supp. 2d 1115, 1162 (citing Gray v.
Meijer, Inc.., 295 F.3d 641 (6th Cir. 2002)). The greater the
degree of overlap, the more likely there is to be confusion.
Sleekcraft, 599 F.2d at 353. Here, Plaintiff and Defendant
are in direct competition. The undisputed facts show that
they directly market their products online and at car
shows. Kogan Decl., Exs. A, H. As such, this factor favors
a finding of likelihood of confusion.
Sixth, the Court needs to consider the type of goods
and the degree of care likely to be exercised by the
purchasers. Likelihood of confusion is determined on the
basis of a “reasonably prudent consumer,” so courts have
expected consumers “to be more discerning — and less
easily confused — when [they are] purchasing expensive
items.” Brookfield, 174 F.3d at 1060. “On the other hand,
when dealing with inexpensive products, customers are
likely to exercise less care, thus making confusion more

 48a
Appendix B
likely.” Id. Defendant’s replica vehicles are expensive
goods and the reasonably prudent consumer would
likely be more discriminating and likely to ask questions
regarding his product. Thus, this factor weighs against
finding a likelihood of confusion.
Seventh, the defendant’s intent in selecting the mark
must also be evaluated in determining the likelihood of
confusion. Knowing adoption of a mark that is closely
similar to one that is used by another is a basis for inferring
intent to deceive the public, which is “strong evidence of
a likelihood of confusion.” See Official Airline Guides,
Inc. v. Goss, 6 F.3d 1385, 1394 (9th Cir. 1993). Here,
Defendant admits his knowledge of the Batman property
including the Batmobile vehicles and the trademarks, and
he knowingly copied the marks. SUF ¶ 54. This permits
an inference of an intent to deceive the public.
Lastly, the Court can look to the likelihood of expansion
of the product lines. A strong possibility that either party
will expand its business to compete with the other weighs
in favor of fi nding infringement. Sleekcraft, 599 F.2d
at 354. However, where, as here, the Parties already
compete to a significant degree because they sell related
products and use similar marketing channels, this factor
is relatively unimportant to the likelihood of confusion
analysis. See Brookfield, 174 F.3d at 1055. Neither Party
has submitted evidence of planned expansion, and Plaintiff
does not allege that Defendant’s presence is hindering its
expansion plans.

 49a
Appendix B
Based on the foregoing, no triable issues of fact exist
as to whether Defendant’s use of Plaintiff’s marks is
likely to confuse United States consumers. Furthermore,
Defendant has not met his burden to set forth facts
showing that genuine issues of disputed fact remain with
regard to a finding of likelihood of confusion. See PepsiCo,
Inc., 27 U.S.P.Q. 2d 1948, 1950 (C.D. Cal. 1993). In fact, the
relevant Sleekcraft factors support a finding of likelihood
of confusion as a matter of law. In light of this finding and
the fact that there are no triable issues of fact with regard
to the validity of Plaintiff’s marks, the Court GRANTS
Plaintiff’s Motion for Partial Summary Judgment as to
Plaintiff’s trademark infringement claim and DENIES
Defendant’s Motion as to this claim.
C. Unfair Competition
Whether Defendant’s sale of replica Batmobile vehicles
is likely to confuse United States consumers is also critical
in determining whether the Court should grant summary
judgment on Plaintiff’s claim for common law unfair
competition. The element of likelihood of confusion also
applies to this claim.
Moreover, the courts have uniformly held that common
law and statutory trademark infringement are merely
specific aspects of unfair competition. New West Corp. v.
NYM Co. of Cal., Inc., 595 F.2d 1194, 1201 (9th Cir. 1979).
Under the Lanham Act, the ultimate test is whether the
public is likely to be deceived or confused by the similarity
of the marks. Smith v. Chanel, Inc., 402 F.2d 562, 563 (9th
Cir. 1968). “Whether we call the violation infringement,

 50a
Appendix B
unfair competition or false designation of origin, the test
is identical - is there a ‘likelihood of confusion?’” New West
Corp., 595 F.2d at 1201.
The decisive test of common law unfair competition is
whether the public is likely to be deceived about the source
of goods or services by the defendant’s conduct. Academy
of Motion Picture Arts and Sci. v. Benson, 15 Cal. 2d 685,
690, 104 P.2d 650 (1940); South Bay Chevrolet v. Gen.
Motors Acceptance Corp., 72 Cal. App. 4th 861, 865, 85
Cal. Rptr. 2d 301 (1999). The likelihood of public confusion,
although innocently created, will warrant injunctive relief
against unfair competition. Tomlin v. Walt Disney Prods.,
18 Cal. App. 3d 226, 231, 96 Cal. Rptr. 118 (1971).
Defendant has not demonstrated that there is a triable
issue of fact as to whether Defendant’s use of bat symbols
and Plaintiff’s trademarks is likely to confuse customers.
As courts have uniformly held that common law and
statutory trademark infringement are merely specific
aspects of unfair competition, a finding of likelihood of
confusion under Plaintiff’s trademark infringement claim
also supports a finding of likelihood of confusion under
Plaintiff’s common law unfair competition claim. For the
foregoing reasons, the Court GRANTS Plaintiff’s Motion
for Partial Summary Judgment as to its unfair competition
claim and DENIES Defendant’s Motion as to this claim.
D. Copyright Infringement
To establish copyright infringement, two elements
must be proven: 1) ownership of a valid copyright; and 2)

 51a
Appendix B
copying of protected elements of the plaintiff’s work. See
Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340,
361, 111 S. Ct. 1282, 113 L. Ed. 2d 358 (1991).
Copying may be established by showing that the works
in question are “substantially similar in their protected
elements” and that the infringing party had access to the
copyrighted work. Metcalf v. Bochco, 294 F.3d 1069, 1072
(9th Cir. 2002).
A plaintiff satisfies the access element by showing
that a defendant had “an opportunity to view or to copy
plaintiff’s work.” Three Boys Music Corp. v. Bolton,
212 F.3d 477, 482 (2000) (citing Sid and Marty Krofft
Television Prods., Inc. v. McDonald’s Corp., 562 F.2d
1157, 1172 (9th Cir. 1977)). Where a high degree of access is
shown, a lower standard of proof of substantial similarity
is required. Swirsky v. Carey, 376 F.3d 841, 844 (9th. Cir.
2004). This is known as the “inverse ratio rule”. Shaw v.
Lindheim, 919 F.2d 1353, 1356 (9th Cir. 1990).
In analyzing whether the two works are substantially
similar, the court must fi rst distinguish between the
protectable and unprotectable material because a party
claiming infringement may place no reliance upon any
similarity in expression resulting from unprotected
elements. Apple v. Microsoft, 35 F.3d 1435, 1446 (9th Cir.
1994) (quotation omitted). Then, a two-part test is used
to determine whether the two works are substantially
similar: an “intrinsic” and “extrinsic” part. As it evolved,
the test was clarified by the Court in Apple Computer v.
Microsoft Corp.:

 52a
Appendix B
[T]he extrinsic test now objectively considers
whether there are substantial similarities
in both ideas and expression, whereas the
intrinsic test continues to measure expression
subjectively.
35 F.3d 1435, 1442 (9th Cir. 1994). “The intrinsic test . . .
should measure substantial similarity in expressions . . .
depending on the response of the ordinary reasonable
person. . . . [I]t does not depend on the type of external
criteria and analysis which marks the extrinsic test.”
Shaw, 919 F.2d at 1356 (internal quotations omitted). In
decisions under the intrinsic test, “analytic dissection
and expert testimony are not appropriate.” Id. “Once
the extrinsic test is satisfied, the fact finder applies the
intrinsic test.” Three Boys Music Corp., 212 F.3d at 485.
Defendant disputes that Plaintiff has established that
it owns valid copyrights to the 1966 and 1989 Batmobile
vehicles and that the Batmobiles are copyrightable
under the Copyright Act. Otherwise, Defendant does not
deny that he has produced replicas of the 1966 and 1989
Batmobile.
As a preliminary matter, the Court addresses
Defendant’s argument that Plaintiff should not be able
to allege infringement of the 1966 and 1989 Batmobile
vehicles because the copyright registrations for the 1966
Batman television show and 1989 Batman fi lm were not
identified in the First Amended Complaint. Defendant also
claims that Plaintiff should be sanctioned under Federal
Rule of Civil Procedure 11 for this alleged litigation

 53a
Appendix B
misconduct. The Court finds that these arguments wholly
lack merit. The body of the First Amended Complaint
identifies the 1966 and 1989 Batmobile vehicles, the
television series, and the 1989 movie. FAC ¶¶ 8, 9, 11. The
FAC states that the Batmobile is copyrightable subject
matter. Moreover, Plaintiff does not claim in the FAC
that Plaintiff owns the copyright registration to the 1989
fi lm or the 1966 television series. Plaintiff does not state
that Exhibit A represented the only copyrights in issue
in this Action. Exhibit A is there to show that Plaintiff is
the owner of all the Batman literary property because of
its ownership of the copyrights listed in Exhibit A.
Furthermore, any surprise that Defendant is claiming
based on Plaintiff’s alleged failure to identify the copyright
registrations for the 1989 fi lm and the 1966 television
series is disingenuous. As Plaintiff points out, Defendant
himself requested judicial notice of these registrations in
his Motion to Dismiss [15], and thus knew that Plaintiff’s
copyright action involves these registrations.
1.

Plaintiff Reserved Rights to the 1966 and 1989
Batmobiles

“Under copyright law, only copyright owners and
exclusive licensees of copyright may enforce a copyright
or a license.” Sybersound Records, Inc. v. UAV Corp., 517
F.3d 1137, 1144 (9th Cir. 2008) (citing 17 U.S.C. § 501(b))
(conferring standing only to the “legal or beneficial owner
of an exclusive right who is entitled . . . to institute an
action for any infringement . . . while he or she is the owner
of it.”)(internal quotation marks omitted).

 54a
Appendix B
Defendant’s main argument is that Plaintiff does
not own the copyright registrations to the 1966 Batman
television show and the 1989 Batman fi lm. Therefore,
according to Defendant, Plaintiff does own any interest
in the 1966 and 1989 Batmobile vehicles. It is true that
Greenway and Fox are the owners of the copyright
registrations to the episodes of the 1966 Batman television
series. SUF ¶ 16. Warner Bros. owns the copyright
registration to the 1989 film. Id. ¶ 28. However, the
relevant licensing agreements between Plaintiff and its
licensees indicate that Plaintiff reserved all rights to the
characters and elements depicted in the Batman television
series and the 1989 Batman fi lm, and obtained exclusive
merchandising rights to the 1966 and 1989 works.3 These
exclusive rights are sufficient to afford Plaintiff standing.
In 1965, Plaintiff’s predecessor, National Periodical,
entered into a licensing agreement with ABC granting
ABC rights to use the Batman literary property to develop
the Batman television show, including rights to “adapt,
arrange, change, transpose, add to and subtract from
said property” and “to secure copyright and renewals and
extensions of copyright”. Joint Stipulation, Ex. 13, at 2-3.
In the agreement, Plaintiff reserves all “merchandising”
rights, defined as the
3. Plaintiff failed to provide any substantive briefi ng on
its copyright interest in the Batmobile. Instead it resorted to
conclusory assertions that it owns rights to the 1966 and 1988
Batmobile vehicles. Although the relevant agreements make clear
that Plaintiff retained exclusive rights to the Batmobile literary
property, Plaintiff was still required to brief the Court on this
issue.

 55a
Appendix B
sole and exclusive right to produce and sell,
license or grant to others the right to produce
and sell or license or to enter into agreements
with respect to the production, distribution
and exploitation of endorsements, commercial
tie-ups or manufacturing privileges under
which a commodity, product or service is made,
manufactured, or distributed under the name
of “Batman” or any other character in the
comic book series entitled “Batman”, or under a
name which incorporates any phrase, clause or
expression used . . . in the television series. . . .
Id. at 12-13, ¶ 6(A). Paragraph 6(C) of the licensing
agreement provides that National Periodical would pay
ABC a share of the income derived from the exploitation
of this exclusive merchandising right. Thus, the license
agreement clearly entitles Plaintiff an exclusive right to
sell, distribute, and manufacture products derived from
the elements that appeared in the Batman television
show, including the Batmobile. The Court’s objective in
the construction of the language used in the contract is
to determine and effectuate the intention of the parties.
Winet v. Price, 4 Cal. App. 4th 1159, 1166, 6 Cal. Rptr. 2d
554 (1992). If contractual language is clear and explicit,
it governs. Bank of the West v. Superior Court, 2 Cal. 4th
1254, 1264, 10 Cal. Rptr. 2d 538, 833 P.2d 545 (1992).
This interpretation of the license agreement is
consistent with a 1966 agreement involving National
Periodical, Fox, Greenway, and George Barris, the
designer of the 1966 Batmobile. In the agreement, Plaintiff
specifically reserved rights in the design of the Batmobile:

 56a
Appendix B
WHEREA S, NATIONAL PERIODICAL
PUBLICATIONS, INC. is the owner of all
copyrights, trademarks and all other rights
including commercial and exploitive rights to
the feature, BATMAN, and to all the contents
of the said feature, including the Batmobile
***
Notwithstanding anything to the contrary
herein contained, NATIONAL PERIODICAL
( P l a i n t i f f ’s p r e d e c e s s o r i n i n t e r e s t)
acknowledges that BARRIS is the owner of
the vehicle known as Batmobile I as used in
the BATMAN television series and feature
motion picture and that BARRIS, FOX and
GREENWAY are the joint owners of the
design of said Batmobile I as provided for in
Article 7 of that certain agreement between
FOX and Greenway, and BARRIS, dated
September 1, 1965, as follows: 7. Any and all
right, title and interest in and to the design
of Batmobile I resulting from the application
of the required Batmobile features in and to
Owner’s prototype Lincoln chassis, save and
except the name “Batmobile” and the Batmobile
features set forth in Article 10 hereof and in
the drawings and exhibits attached hereto,
and of the completed Batmobile provided for in
Article 2 hereof, shall forever be vested in and
Owned jointly by Owner and Producer, subject
only to any and all right, title and interest of

 57a
Appendix B
National Periodical Publications, Inc. . . . in
and to said Batmobile features in said design.
Joint Stipulation, Ex. 15 (emphasis added). The
unambiguous terms of the contract indicate that Plaintiff
reserved rights to the 1966 Batmobile.
Plaintiff also reserved rights to the Batmobile depicted
in the 1989 motion picture. In 1979, Plaintiff entered
into a licensing agreement with Batman Productions,
Inc., who later transferred its rights to Warner Bros.,
granting Batman Productions option rights to create
a motion picture using the Batman literary property.
Joint Stipulation, Ex. 16, Art. I, ¶ 1. The contract states
that Plaintiff reserved all “merchandising rights” with
respect to the new characters, additional characters, new
elements, and additional elements, of any motion picture
produced via the agreement. Id. at Article II, ¶ 5(c). Under
the agreement “additional characters” is defined as
any fictional character or characters newly
created by [Batman Productions] and which,
but for the operation of this agreement, would
constitute an infringement of DC’s copyright
or trademark in or to any of the characters
constituting the Property. . . or any characters
contained in the Property who are newly
costumed or in any way altered by [Batman
Productions] for any motion pictures.
Id. at Art. II, ¶ 11. “Additional elements” is defined as “any
device or thing newly created by [Batman Productions]

 58a
Appendix B
and which, but for the operation of this agreement,
would constitute an infringement of DC’s copyright or
trademark in or to any device or thing contained in the
Property.” Id. The licensing agreement explicitly defined
the Batmobile as being part of the “Property” licensed
to Batman Productions. Id. at Art. I, ¶ 4(b). Not only did
Plaintiff reserve these exclusive merchandising rights,
Plaintiff also reserved rights to copyright and trademark
any additional characters or elements featured in future
Batman motion pictures. Id. at Art. II, ¶¶ 5(c), 11.
Based on these agreements reserving exclusive
ownership rights to the 1989 and 1966 Batmobiles, Plaintiff
has standing to assert this copyright infringement action.
See Halicki Films LLC, v. Sanderson Sales and Mktg.
et al., 547 F.3d 1213, 1220 (9th Cir. 2008) (Plaintiff’s
reservation of merchandising rights provides standing in
copyright infringement action).
2.

D e fe n d a nt ’s R e pl ic a Ba t m o bi le s A r e
Unauthorized Derivative Works

Even if Plaintiff did not expressly reserve rights to the
Batman and Batmobile elements appearing in the Batman
movie and television show, Plaintiff is also entitled to sue
for infringement because it clearly owns copyrights to
the original comic book series in which the Batmobile
originally appeared. As the copyright holder to the Batman
comic books, Plaintiff has the exclusive right to prepare
derivative works. 17 U.S.C. § 103(a) (“The subject matter
of a copyright . . . includes compilations and derivative
works. . . .”). “[T]he protection of derivative rights extends

 59a
Appendix B
beyond mere protection against unauthorized copying to
include the right to ‘make other versions of, perform, or
exhibit the work.’” Lone Ranger Television v. Program
Radio Corp., 740 F.2d 718, 722 (9th Cir. 1984)(quoting
Russell v. Price, 612 F.2d 1123, 1128 n.16 (9th Cir. 1979)).
The owner of the underlying work has standing to assert
copyright infringement of the derivative work, even when
the defendant copies only from the derivative work. 1-3
Nimmer on Copyright § 3.05.
“[A] work will be considered a derivative work only if
it would be considered an infringing work if the material
which it has derived from a prior work had been taken
without the consent of a copyright proprietor of such
prior work.” Litchfield v. Spielberg, 736 F.2d 1352, 1357
(9th Cir. 1984).
The Defendant’s replica Batmobile vehicles are
derivative works of the original Batmobile vehicles. Here,
the copyright registration for the 1989 fi lm explicitly
states that it is the derivative work of the Batman comic
book series and the Batman television series. Joint
Stipulation, Ex. 3. The Batmobile vehicle in the 1989 fi lm
is derivative of the Batmobile character that appeared in
the comic book series, even though the exact design of the
1989 Batmobile is not identical to the original Batmobile
vehicles. The 1989 Batmobile is merely an adaptation or a
recasting of the original Batmobile vehicles. Defendant’s
copying of the 1989 Batmobile vehicle thus copies from
both the derivative 1989 Batman fi lm and the Batmobile
from the original comic books.

 60a
Appendix B
The 1966 television series, which copies many
elements from the original comic books series including
Batman, Robin, and the Batmobile, is a derivative work
of the Batman comic book series. The agreement between
Plaintiff and ABC requires that ABC give credit to
Plaintiff as the originator of the ideas and expressions
in the TV show. Joint Stipulation, Ex. 13. As with the
1989 film, the Batmobile in the 1966 television show
incorporates elements from the Batmobiles in the comic
book series and is merely an adaptation of Batmobile
character that appeared in the comic books. Defendant’s
copying of the 1966 Batmobile vehicle copies from both
the derivative Batman television show and the Batmobile
from the original comic books.
Accordingly, Plaintiff has standing to assert copyright
infringement.
3.

The Batmobile Is Entitled To Copyright
Protection as a Character

Defendant’s Opposition focuses on denying that
the Batmobile is entitled to any copyright protection.
For the reasons discussed below, the Court fi nds that
the Batmobile is entitled to copyright protection as a
character.
“Whether a particular work is subject to copyright
protection is a mixed question of fact and law . . . .”
Societe Civile Succession v. Renoir, 549 F.3d 1182, 1185
(9th Cir. 2008) (quoting Cavalier v. Random House,
Inc., 297 F.3d 815, 822 (9th Cir. 2002)). The owner of a

 61a
Appendix B
copyright in various works embodying a character can
acquire copyright protection for the character itself. See,
e.g., Warner Bros. Inc. v. Am. Broad. Co. Inc., 720 F.2d
231, 235 (2d Cir. 1983) (“Plaintiffs own the copyrights
in various works embodying the character Superman
and have thereby acquired copyright protection for the
character itself.”) (citation omitted); New Line Cinema
Corp. v. Bertlesman Music Group, Inc., 693 F.Supp. 1517,
1521 n. 5 (S.D.N.Y. 1988) (“Because New Line has valid
copyrights in the Nightmare series, it is clear that it has
acquired copyright protection as well for the character of
Freddy.”) (citing Warner Bros., 720 F.2d at 235).
The Ninth Circuit has explained that “copyright
protection may be afforded to characters visually depicted
in a television series or in a movie.” Olson v. Nat’l Broad.
Co., 855 F.2d 1446, 1452 (9th Cir. 1988) (internal citations
omitted). However, it is unclear what legal standard courts
should apply in determining whether visually depicted
characters are subject to copyright protection. See MetroGoldwyn-Mayer, Inc. v. Am. Honda Motor Co., Inc., 900
F. Supp. 1287, 1295 (C.D. Cal. 1995); Anderson v. Stallone,
No. 87-0592 WDKGx, 1989 U.S. Dist. LEXIS 11109, 1989
WL 206431, at *6 (C.D. Cal. 1989).
The fi rst case to suggest a test for whether or not
characters can be copyrighted, Warner Bros. Pictures,
Inc. v. Columbia Broadcasting System, Inc., 216 F.2d
945 (9th Cir. 1954), stated that literary characters are
entitled to copyright protection if the character constitutes
“the story being told”; however, if the character is “only
the chessman in the game of telling the story” he is not
entitled to copyright protection. Id.

 62a
Appendix B
Subsequent cases appeared to cast doubt on this
test. In particular, in Walt Disney Productions. v. Air
Pirates, 581 F.2d 751, 755 (9th Cir. 1978), which involved
a claim for copyright infringement of Walt Disney’s
cartoon characters based on the defendant’s copying of the
characters from Disney’s comic books, the Court stated
that “while many literary characters may embody little
more than an unprotected idea, a comic book character,
which has physical as well as conceptual qualities, is more
likely to contain some unique elements of expression.”
Id. (internal citations omitted). The court ultimately
concluded that “[b]ecause comic book characters . . . are
distinguishable from literary characters, the Warner
Brothers language does not preclude protection of
Disney’s characters.” Id.
The next Ninth Circuit case to address the issue,
Rice v. Fox Broadcasting Co., 330 F.3d 1170 (9th Cir.
2003), articulated another standard known as the
character delineation test. The Ninth Circuit explained
that “characters that are ‘especially distinctive’ or
‘the story being told’ receive protection apart from the
copyrighted work.” Rice v. Fox Broad. Co., 330 F.3d 1170,
1175 (9th Cir. 2003) (citing Olson, 855 F.2d at 1452; MetroGoldwyn-Mayer, Inc., 900 F. Supp. at 1295-96))(emphasis
added). As to the “especially distinctive” standard for
copyrightability, the court noted that “[c]haracters
that have received copyright protection have displayed
consistent, widely identifiable traits.” Id. (citing Toho Co.
v. William Morrow & Co., 33 F. Supp. 2d 1206, 1215 (C.D.
Cal. 1998) (Godzilla); Metro-Goldwyn-Mayer, Inc., 900 F.
Supp. at 1297 (James Bond); Anderson, 1989 U.S. Dist.
LEXIS 11109, 1989 WL 206431, at *7 (Rocky Balboa)).

 63a
Appendix B
The character delineation standard was applied in a
recent opinion, where the Ninth Circuit stated that cartoon
characters have “physical as well as conceptual qualities,
[and are] more likely to contain some unique elements of
expression.” Halicki, 547 F.3d at 1223 (citing Air Pirates,
581 F.2d at 755.) Halicki did not clarify whether the “story
being told” or the character delineation test as articulated
in Air Pirates and Rice is the applicable test. However, the
opinion suggests that a character is subject to copyright
protection in the Ninth Circuit if it satisfies either of the
two recognized standards.
In Halicki, the Ninth Circuit reviewed, but did not
resolve, whether or not the character “Eleanor,” a car
that appeared as a 1971 Fastback Ford Mustang in the
1974 fi lm, Gone in 60 Seconds, was entitled to copyright
protection. 547 F.3d at 1217-18. 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. Id. The Ninth Circuit in Halicki
noted that the “Eleanor character can be seen as more
akin to a comic book character than a literary character.”
Id. at 1225. Moreover, Eleanor displays “consistent, widely
identifiable traits” because in both fi lms, the characters
in the movie have difficulty stealing the Eleanor car. Id.
at 1225. 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. Id. at 1225.
Here, the Court finds that there is no genuine
issue of material fact as to whether the Batmobile is

 64a
Appendix B
“sufficiently delineated” to constitute a character entitled
to copyright protection. Defendant repeatedly argues
that the Batmobile is not a character because it is a car.
This argument lacks merit as the central question in
Halicki is not whether the “character” is an object, but
rather whether the character conveys a set of distinct
characteristics. 4 Plaintiff’s briefing on this issue is
conclusory and superficial, but it is clear based on the
undisputed facts that the Batmobile is a copyrightable
character.
It is undeniable that the Batmobile is a world-famous
conveyance in the Batman franchise, exhibiting a series
4. Defendant’s focus on whether the Batmobile is an inanimate
object is also misplaced in light of the fact that at least one other
court has afforded copyright protection to an inanimate object
belonging to a specific movie character. In New Line Cinema Corp.
v. Russ Berrie & Co.,, 161 F.Supp. 2d 293 (S.D.N.Y. 2001), the court
found that an inanimate object associated with a fictional character
was entitled to copyright protection. In New Line Cinema, a toy
distributor sold a toy glove that looked like the glove worn by
Freddy Kreuger of the Nightmare on Elm Street motion pictures.
New Line Cinema Corp., 161 F. Supp. 2d at 294. The court held
that the glove was entitled to copyright protection based on New
Line’s copyright protection in the Freddy Krueger character
because “[c]opyright protection is extended to the component
part of the character which significantly aids in identifying the
character.” Id. at 302 (citing New Line Cinema Corp. v. Easter
Unlimited, Inc., 17 U.S.P.Q.2d 1631, 1633 (E.D.N.Y. 1989); Dallas
Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d
200, 204 (2d Cir. 1979)).

 65a
Appendix B
of readily identifiable and distinguishing traits. The
Batmobile is known by one consistent name that identifies
it as Batman’s personal vehicle. It also displays consistent
physical traits. The Batmobile, in its various incarnations,
is a highly-interactive vehicle, equipped with high-tech
gadgets and weaponry used to aid Batman in fighting
crime. Even though the Batmobile is not identical in
every comic book, fi lm, or television show, it is still widely
recognizable because it often contains bat-like motifs, such
as a bat-faced grill or bat-shaped tailfins in the rear of
the car, and it is almost always jet black. See, e.g., Joint
Stipulation, Ex. 25, at 500. The 1989 and 1966 Batmobile
iterations also display these physical qualities. In fact, the
particular design of the Batmobile often reflects the car
models of the time - for example, the Batmobile from the
comic book Batman No. 5, which was released in 1941,
has the shape of a 1940s Ford automobile, but contains a
“bat” hood ornament and tailfins resembling a bat’s wings.
Regardless of the evolving design of the Batmobile, it
retains distinctive characteristics.
Other than its physical features, the Batmobile is
depicted as being swift, cunning, strong and elusive. For
example, in the comic book Batman #5, the Batmobile
“leaps away and tears up the street like a cyclone.” Joint
Stip., Ex. 2, at 75. In the same comic book, the Batmobile
is analogized to an “impatient steed straining at the
reigns,” shivering “as its super-charged motor throbs with
energy . . . and an instant later it tears after the fleeing
hoodlums.” Id. at 76. The Batmobile participates in various
chases and is deployed to combat Batman’s enemies. The
comic books portray the Batmobile as a superhero. The

 66a
Appendix B
Batmobile is central to Batman’s ability to fight crime
and appears as Batman’s sidekick, if not an extension of
Batman’s own persona.
This case is analogous to Toho Co., Ltd. v. William
Morrow and Co., Inc., 33 F.Supp. 2d 1206, 1215 (C.D.
Cal. 1998), which involved the “Godzilla” character, a
giant lizard featured in action fi lms. 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. Id.
For the foregoing reasons, the Court finds that the
Batmobile is a character entitled to copyright protection.
As further discussed below, Defendant does not deny
that he has copied the Batmobile vehicles. Defendant’s
copying of the two-dimensional Batmobile character,
which appeared in the 1989 film, the 1966 television
series, and the comic books, into three-dimensional forms
is copyright infringement. “It is, of course, fundamental
that copyright in a work protects against unauthorized
copying, not only in the original medium in which the
work was produced, but also in any other medium as
well.” 1-2 Nimmer on Copyright § 2.08 (2008). “[M]aking
decisions that enable one to reproduce or transform an
already existing work into another medium or dimension
- though perhaps quite difficult and intricate decisions is not enough to constitute the contribution of something
‘recognizably his own.’” Entm’t Research Grp., Inc. v.

 67a
Appendix B
Genesis Creative Grp., Inc., 122 F.3d 1211, 1218 (9th Cir.
1997) (citing Nimmer § 2.08); see also Twentieth CenturyFox Film Corp. v. MCA, Inc., 715 F.2d 1327, 1329 n.4 (9th
Cir. 1983) (“Where defendant’s work is adapted for us in
a medium different than that of plaintiff’s, the test for
infringement is the same.”); Universal Studios, Inc. v.
J.A.R. Sales, Inc., 216 U.S.P.Q. 679, 681, 683 (C.D. Cal.
1982) (“Protection extends to expressions of that character
[E.T.] not only in motion pictures, but in other media as
well, including three-dimensional expressions such as
dolls and other forms of sculpture. . . . The defendants’
molded plastic doll is substantially similar to the physical
expression of the motion picture character ‘E.T.’ in that
the defendants’ doll replicates [E.T.’s] oddly-shaped head
and facial features, squat torso, long thin arms, and
hunched-over posture. . . . The defendant’s molded-plastic
doll and the motion picture character E.T. also portray
the same mood of lovableness.”). Therefore, Defendant’s
manufacturing of an unauthorized three-dimensional copy
of a two-dimensional comic book character, the Batmobile,
still constitutes copyright infringement.
4.

The Batmobile Is A Work of Pictorial, Graphic,
and Sculptural Art Entitled to Copyright
Protection

Alternatively, the Court also finds that the Batmobile
is a “pictorial, graphic, and sculptural work” entitled to
copyright protection under 17 U.S.C. § 102. Section 101
of the Copyright Act provides that

 68a
Appendix B
Pictorial, graphic, and sculptural works include
two-dimensional and three-dimensional works
of fine, graphic, and applied art, photographs,
prints and art reproductions, maps, globes,
charts, diagrams, models, and technical
draw ings, including architectural plans.
Such works shall include works of artistic
craftsmanship insofar as their form but not
their mechanical or utilitarian aspects are
concerned; the design of a useful article, as
defined in this section, shall be considered
a pictorial, graphic, or sculptural work only
if, and only to the extent that, such design
incorporates pictorial, graphic, or sculptural
features that can be identified separately from,
and are capable of existing independently of,
the utilitarian aspects of the article.
17 U.S.C. § 101.
Courts have traditionally accorded copy right
protection to pictorial, graphic, and sculptural works
incorporated within a useful article, such as a carving
on the back of a chair or an engraving in a glass vase.
Leicester v. Warner Bros., 232 F.3d 1212, 1219 (9th Cir.
2000) (citing William F. Patry, 1 Copyright Law and
Practice 274-76 (1994)). Only works that “can be identified
separately from, and are capable of existing independently
of, the utilitarian aspects of the [useful] article” qualify
for copyright protection. Id. This is what is known as
“separability.” Id.

 69a
Appendix B
Courts have recognized two types of separability:
physical separability, and conceptual separability. Id.
“Physical separability means that a ‘pictorial, graphic
or sculptural feature incorporated into the design of a
useful article . . . can be physically separated from the
article without impairing the article’s utility and if, once
separated, it can stand alone as a work of art traditionally
conceived.’” Id. On the other hand, conceptual separability
means that a pictorial, graphic or sculptural feature “can
stand on its own as a work of art traditionally conceived,
and . . . the useful article in which it is embodied would
be equally useful without it.” Id.
With respect to automobiles, the House Report for the
Copyright Act suggests that the statute was not meant
to protect merely the aesthetically pleasing features of
industrial objects:
[A]lthough the shape of an industrial product
may be aesthetically satisfying and valuable,
the Committee’s intention is not to offer it
copyright protection under the bill. Unless the
shape of an automobile, airplane, ladies’ dress,
food processor, television set, or any other
industrial product contains some element that,
physically or conceptually, can be identified as
separable from the utilitarian aspects of that
article, the design would not be copyrighted
under the bill. The test of separability and
independence from “the utilitarian aspects of
the article” does not depend upon the nature of
the design - that is, even if the appearance of an

 70a
Appendix B
article is determined by aesthetic (as opposed
to functional) considerations, only elements, if
any, which can be identified separately from the
useful article as such are copyrightable.
H.R. No. 1476, 94th Cong., 2d Sess. 55 (1976).
Defendant repeatedly argues that the Batmobile is
only a car and that the design of a car is not protectable
under copyright law, citing to the House Report. However,
as explained above, the Batmobile is a character and exists
in both two- and three-dimensional forms. Its existence
in three-dimensional form is the consequence of the
Batmobile’s portrayal in the 1989 live-motion fi lm and
1966 television series. Defendant did not copy the design
of a mere car; he copied the Batmobile character. The fact
that the unauthorized Batmobile replicas that Defendant
manufactured - which are derivative works - may be “useful
articles” is irrelevant. A derivative work can still infringe
the underlying copyrighted work even if the derivative
work is not independently entitled to copyright protection.
Lewis v. Galoob Toys v. Nintendo of Am. Inc., 964 F.2d
965, 968 (9th Cir. 1992) (“A derivative work must be fi xed
to be protected under the Act, but not to infringe.”) (citing
17 U.S.C. § 102)); Lone Ranger Television, Inc., 740 F.2d
at 722-23 (“It makes no difference that the derivation may
not satisfy certain requirements for statutory copyright
registration itself.”); Entm’t Research Grp., Inc., 122 F.3d
at 1218 (three-dimensional inflatable costumes based on
copyrighted cartoon characters were not copyrightable).

 71a
Appendix B
Nevertheless, the Batmobile in its three-dimensional
form as it appeared in the 1989 and 1966 works is still
copyrightable under Section 102. The difficulty with
this case is in determining whether or not the Batmobile
is an “automobile” and thus a “useful article” that
is not entitled to copyright protection except for the
conceptually separable elements, or something else
entirely. In all of the fictional works, the Batmobile is
deployed as Batman’s mode of transportation. However,
the Batmobile is entirely distinguishable from an ordinary
automobile. The Batmobile is a fictional character tied to
the fictional Batman character. The Batmobile is a crime
fighting weapon and used to display the Batman persona.
The Batmobile, and the so-called functional elements
associated with it, is not a useful object in the real world,
and incorporates fantasy elements that do not appear
on real-world vehicles. The “functional elements” - e.g.,
the fictional torpedo launchers, the Bat-scope, and antifi re systems - are only “functional” to the extent that
they helped Batman fight crime in the fictional Batman
television series and movies. Thus, the Batmobile’s
usefulness is a construct. Additionally, Defendant’s
argument that Batman is merely a car wholly fails to
capture the creativity and fantastical elements that stand
apart from the fact that the Batmobile also happens to
look like a car.
Nonetheless, the design elements of the two Batmobiles
at issue here are conceptually separable from their
underlying car. In particular, the 1989 Batmobile’s entire
frame, consisting of the rear exaggerated, sculpted batfin and the mandibular front, is an artistic feature that

 72a
Appendix B
can stand on its own without the underlying vehicle.
The underlying vehicle would still be a car without the
exaggerated bat features. Further, the Batmobile’s wheels
each contain a hubcap containing a bat sculpted from
metal, which can literally stand on its own without the
underlying wheel.
Similarly, the 1966 Batmobile contains features that
are conceptually separable from the underlying vehicle.
For example, the doors have imprinted upon them red bat
logos. The car is painted in a distinct black and red color
scheme, where the outline of the car is red. See Knitwaves,
Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995)
(the color pattern of useful article entitled to copyright
protection). The wheels have hubcaps containing a bat
sculpted from metal. The rear of the vehicle is scalloped
and intended to look like bat wings. These elements are
conceptually separable from the car itself. Further, the
interior of the Batmobile contains original features such
as the “Bat Scope” and the “Bat Ray” that are subject to
copyright protection, as are the names for these features.
See 17 U.S.C. § 102 (literary elements are protected
under copyright). The interior of the car also has batshaped phone. In this instance, while the phone itself is a
utilitarian feature, the shape of the phone does not itself
have a function and merely displays the figure of a bat.
As such, all of the features that distinguish the
Batmobile from any other car - the fantastical elements
that feature bat design, such as the bat tailfin and the
various gadgetry that identify the vehicle as the Batmobile
- are protectable elements.

 73a
Appendix B
Defendant’s argument that extending copyright
protection to the Batmobile will open the door for the
copyrighting of other automobiles. However, the Batmobile
is sui generis. The unique elements that Plaintiff seeks
to protect make the Batmobile the famous vehicle that it
is. Thus, the Court finds that the Batmobile is subject to
copyright protection.
5.

Defendant Has Copied the 1989 and 1966
Batmobiles

Defendant does not deny that he has reproduced and
distributed replicas of the 1966 and 1989 Batmobiles. The
only argument that he makes is that he does not include
some features in his replicas that were in the original
Batmobiles. However, when comparing the replica cars
with the Batmobile vehicles that appeared in the television
fi lm and movie, his 1966 and 1989 Batmobile replicas
appear substantially the same as the original Batmobiles.
In particular, his replicas for the 1989 Batmobile contain
the same exaggerated bat fi n, mandibular front, and
hubcaps containing the bat symbol. Defendant’s replicas
of the 1966 Batmobile also has the same color scheme, the
same bat tail, and the same bat symbol on the doors and
wheels. The interior of the 1966 Batmobile contains labels
for many of the features that appeared in the original 1966
Batmobile, including the Bat-Ray and Bat-Scope.
Further, Defendant does not dispute that he had
access to the two 1966 and 1989 Batmobiles. Thus, there is
no genuine dispute of fact as to whether or not Defendant’s
activities constitute “copying” under the requirements for
copyright infringement.

 74a
Appendix B
For the foregoing reasons, the Court GRANTS
Plaintiff’s Motion for Partial Summary Judgment as to
copyright infringement and DENIES Defendant’s Motion.
E. Defendant’s Laches Defense
Defendant has asserted laches as a defense to
Plaintiff’s trademark and copyright claims. Laches
requires a showing that (1) Plaintiff’s delay in filing
suit was unreasonable, and (2) Defendant would suffer
prejudice caused by the delay if the suit were to continue.
Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d
829, 838 (9th Cir. 2002). Defendant bears the burden of
demonstrating laches. Id. A party asserting laches must
show that it suffered prejudice as a result of the plaintiff’s
unreasonable delay in filing suit. Id. However, the defense
of laches is barred where defendants purposefully
committed the infringing conduct. Evergreen Safety
Council v. RSA Network, Inc., 697 F.3d 1221, 1228
(9th Cir. 2012). This good-faith component of the laches
doctrine is part of the fundamental principle that “he who
comes into equity must come with clean hands.” Danjaq
LLC v. Sony Corp., 263 F.3d 942, 956 (9th Cir. 2001) (citing
Hermes Int’l v. Lederer de Paris Fifth Ave., Inc., 219 F.3d
104, 107 (2d Cir. 2000)).
The limitations period for laches starts “from the
time the plaintiff knew or should have known about its
potential cause of action.” Tillamook Cnty. Smoker, Inc.
v. Tillamook Cnty. Creamery Assoc., 465 F.3d 1102 (9th
Cir. 2006). “While laches and the statute of limitations
are distinct defenses, a laches determination is made

 75a
Appendix B
with reference to the limitations period for the analogous
action at law. If the plaintiff filed suit within the analogous
limitations period, the strong presumption is that laches is
inapplicable.” Jarrow Formulas, Inc., 304 F.3d at 835-36.
If suit is fi led outside of the analogous limitations period,
courts often have presumed that laches is applicable. Id.
As to Plaintiff’s trademark infringement claim, the
Lanham Act contains no explicit statute of limitations.
Id. at 836. When a federal statute lacks a specific statute
of limitations, courts may borrow the limitations period
from the most closely analogous action under state law.
Id. As trademark infringement is a “continuing” wrong,
the statute of limitations bars only monetary relief for
the period outside the statute of limitations. Id. However,
Plaintiff is free to pursue monetary and equitable relief for
the time within the limitations period. Id. The presumption
of laches is triggered if any part of the claimed wrongful
conduct occurred beyond the limitations period. Id.
The most closely analogous state-law limitations
period for Plaintiff’s claims under the Lanham Act are the
four-year periods for state trademark infringement and
unfair competition claims, set forth under Cal. Code Civ.
Proc. § 343 and Cal. Bus. & Prof. Code § 17208. Internet
Specialties W., Inc. v. Milon-DiGiorgio Enters., Inc., 559
F.3d 985, 999 (9th Cir. 2009). The statute of limitations
for copyright claims in civil cases is three years. Petrella
v. Metro-Goldwyn-Mayer, Inc., 695 F.3d 946, 951 (9th
Cir. 2012).

 76a
Appendix B
The Court fi nds that there is a genuine dispute of
fact with respect to when Plaintiff knew or had reason
to know about the infringement of their copyrights and
trademarks. Defendant presents evidence showing that
an attorney from Warner Bros. called him in 2003, during
which the attorney revealed that she saw a photograph
of his garage over the Internet. The garage contained a
number of 1966 Batmobile replicas and a shell for a 1989
Batmobile replica. Although Warner Bros. is not a party in
this Action, the Parties stated at the hearing that Warner
Bros. is an affi liate of Plaintiff. The Parties also indicated
at the hearing that Warner Bros. enforces Plaintiff’s
intellectual property. A reasonable fact finder could find
that this shows that Plaintiff could have become aware of
Defendant’s activities in 2003. Further, Plaintiff’s Vice
President and Deputy Counsel for Intellectual Property
testified that Plaintiff was aware that Defendant was
manufacturing the Batboat sometime before 2006. A
reasonable fact-finder could conclude that Plaintiff should
have been aware of Defendant’s infringing activities as
early as 2003. This Action was fi led in 2011. On summary
judgment, the Court construes the evidence in favor of
the non-moving party. As the alleged wrongful acts might
have occurred outside the three- and four-year statute of
limitations period, laches is presumed.
Further, assuming there was delay on the part of
Plaintiff, it is unclear whether this delay was reasonable.
Specifically, the Parties presented confl icting evidence as
to whether or not Plaintiff was diligent in enforcing its
copyrights and trademarks. Defendant admitted that he
received a few take-down notices regarding his postings

 77a
Appendix B
on eBay, where he offered his replica vehicles. According
to Plaintiff, it requested these take-down notices from
eBay, but Plaintiff was unclear as to when these takedown
notices occurred and how many notices were issued.
Nonetheless, the Court finds that Defendant willfully
infringed upon Plaintiff ’s trademarks. Defendant
admitted his knowledge of the Batman property and
the various Bat emblems and symbols used with them,
and does not dispute that he intentionally copied the
designs of the 1989 and 1966 Batmobile vehicles, which
included Plaintiff’s Batman-related trademarks. He also
intentionally referred to his replicas as the Batmobile,
a word mark that Plaintiff owns. Thus, Defendant
intentionally copied Plaintiff’s trademarks, including
the Batmobile and Batman word mark and symbols, so
as to associate his products with the Batman fi lms and
television show. Defendant’s bad faith deprives him from
asserting laches as a defense to Plaintiff’s trademark
claim. See Bd. of Supervisors of LA State Univ. v. Smack
Apparel Co., 438 F. Supp. 2d 653, 663 (E.D. La. 2006),
aff’d sub nom., Bd. of Supervisors for LA State Univ.
Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465
(5th Cir. 2008). For these reasons, the Court GRANTS
Plaintiff’s Motion, and DENIES Defendant’s Motion as
to Defendant’s laches defense to Plaintiff’s trademark
infringement claim.
As to Plaintiff’s copyright claim, however, Plaintiff
has not demonstrated that Defendant’s conduct constitutes
willful infringement. For the willful infringement
exception to apply to Defendant’s laches defense, Plaintiff

 78a
Appendix B
has to demonstrate that Defendant’s conduct occurred
“with knowledge that [his] conduct constitutes copyright
infringement.” Danjaq, 263 F.3d at 958. “Generally, a
determination as to willfulness requires an assessment of
a party’s state of mind, a factual issue that is not usually
susceptible to summary judgment.” Frank Music Corp.
v. Metro-Goldwyn-Mayer, Inc., 772 F.2d 505, 515 (9th
Cir. 1985). Plaintiff has not demonstrated that Defendant
was aware that his conduct of copying the Batmobile
vehicles constituted copyright infringement. The record
suggests that Defendant believed that only a design
patent protected the 1989 Batmobile from infringement.
Defendant testified that he waited until the design patent
expired before selling his replica cars. Defendant also
testified that he was never informed that Plaintiff was
asserting copyright ownership to the Batmobile vehicles
at issue here. Based on these disputes of fact, the Court
cannot determine as a matter of law that Defendant’s
conduct constituted deliberate infringement. Because
there is also a genuine dispute as to when Plaintiff knew
or should have known about Defendant’s infringement, the
Court DENIES both Plaintiff and Defendant’s Motions
as to Defendant’s laches defense on the copyright claim.

 79a
Appendix B
IV. CONCLUSION
For the foregoing reasons, the Court GRANTS in
Part and DENIES in Part Plaintiff’s Motion for Partial
Summary Judgment. The Court DENIES Defendant’s
Motion for Partial Summary Judgment.
IT IS SO ORDERED.
DATED: February 7, 2013
/s/ RONALD S.W. LEW
HONORABLE RONALD S.W. LEW
Senior, U.S. District Court Judge

 80a
C STATUTORY
APPENDIX C —Appendix
RELEVANT
PROVISIONS
1. 17 U.S.C. § 101 provides:
§ 101. Definitions
Except as otherwise provided in this title, as used
in this title, the following terms and their variant forms
mean the following:
An “anonymous work” is a work on the copies or
phonorecords of which no natural person is identified as
author.
An “architectural work” is the design of a building as
embodied in any tangible medium of expression, including
a building, architectural plans, or drawings. The work
includes the overall form as well as the arrangement and
composition of spaces and elements in the design, but does
not include individual standard features.
“Audiovisual works” are works that consist of a
series of related images which are intrinsically intended
to be shown by the use of machines or devices such as
projectors, viewers, or electronic equipment, together with
accompanying sounds, if any, regardless of the nature of
the material objects, such as fi lms or tapes, in which the
works are embodied.
The “Berne Convention” is the Convention for the
Protection of Literary and Artistic Works, signed at
Berne, Switzerland, on September 9, 1886, and all acts,
protocols, and revisions thereto.

 81a
Appendix C
The “best edition” of a work is the edition, published
in the United States at any time before the date of deposit,
that the Library of Congress determines to be most
suitable for its purposes.
A person’s “children” are that person’s immediate
offspring, whether legitimate or not, and any children
legally adopted by that person.
A “collective work” is a work, such as a periodical
issue, anthology, or encyclopedia, in which a number of
contributions, constituting separate and independent
works in themselves, are assembled into a collective whole.
A “compilation” is a work formed by the collection
and assembling of preexisting materials or of data that
are selected, coordinated, or arranged in such a way that
the resulting work as a whole constitutes an original work
of authorship. The term “compilation” includes collective
works.
A “computer program” is a set of statements or
instructions to be used directly or indirectly in a computer
in order to bring about a certain result.
“Copies” are material objects, other than phonorecords,
in which a work is fi xed by any method now known or later
developed, and from which the work can be perceived,
reproduced, or otherwise communicated, either directly
or with the aid of a machine or device. The term “copies”
includes the material object, other than a phonorecord, in
which the work is fi rst fi xed.

 82a
Appendix C
“Copyright owner,” with respect to any one of the
exclusive rights comprised in a copyright, refers to the
owner of that particular right.
A “Copyright Royalty Judge” is a Copyright Royalty
Judge appointed under section 802 of this title [17 USCS
§ 802], and includes any individual serving as an interim
Copyright Royalty Judge under such section.
A work is “created” when it is fi xed in a copy or
phonorecord for the fi rst time; where a work is prepared
over a period of time, the portion of it that has been fi xed
at any particular time constitutes the work as of that
time, and where the work has been prepared in different
versions, each version constitutes a separate work.
A “derivative work” is a work based upon one or
more preexisting works, such as a translation, musical
arrangement, dramatization, fictionalization, motion
picture version, sound recording, art reproduction,
abridgment, condensation, or any other form in which
a work may be recast, transformed, or adapted. A work
consisting of editorial revisions, annotations, elaborations,
or other modifications which, as a whole, represent an
original work of authorship, is a “derivative work.”
A “device,” “machine,” or “process” is one now known
or later developed.
A “digital transmission” is a transmission in whole or
in part in a digital or other non-analog format.

 83a
Appendix C
To “display” a work means to show a copy of it, either
directly or by means of a fi lm, slide, television image, or
any other device or process or, in the case of a motion
picture or other audiovisual work, to show individual
images nonsequentially.
An “establishment” is a store, shop, or any similar
place of business open to the general public for the primary
purpose of selling goods or services in which the majority
of the gross square feet of space that is nonresidential is
used for that purpose, and in which nondramatic musical
works are performed publicly.
The term “financial gain” includes receipt, or
expectation of receipt, of anything of value, including the
receipt of other copyrighted works.
A work is “fi xed” in a tangible medium of expression
when its embodiment in a copy or phonorecord, by or
under the authority of the author, is sufficiently permanent
or stable to permit it to be perceived, reproduced, or
otherwise communicated for a period of more than
transitory duration. A work consisting of sounds,
images, or both, that are being transmitted, is “fi xed”
for purposes of this title if a fi xation of the work is being
made simultaneously with its transmission.
A “food service or drinking establishment” is a
restaurant, inn, bar, tavern, or any other similar place
of business in which the public or patrons assemble for
the primary purpose of being served food or drink, in
which the majority of the gross square feet of space that

 84a
Appendix C
is nonresidential is used for that purpose, and in which
nondramatic musical works are performed publicly.
The “Geneva Phonog rams Convention” is the
Convention for the Protection of Producers of Phonograms
Against Unauthorized Duplication of Their Phonograms,
concluded at Geneva, Switzerland, on October 29, 1971.
The “gross square feet of space” of an establishment
means the entire interior space of that establishment,
and any adjoining outdoor space used to serve patrons,
whether on a seasonal basis or otherwise.
The terms “including” and “such as” are illustrative
and not limitative.
An “international agreement” is—
(1) the Universal Copyright Convention;
(2) the Geneva Phonograms Convention;
(3) the Berne Convention;
(4) the WTO Agreement;
(5) the WIPO Copyright Treaty;
(6) the WIPO Performances and Phonograms
Treaty; and
(7) any other copyright treaty to which the United
States is a party.

 85a
Appendix C
A “joint work” is a work prepared by two or more
authors with the intention that their contributions be
merged into inseparable or interdependent parts of a
unitary whole.
“Literary works” are works, other than audiovisual
works, expressed in words, numbers, or other verbal or
numerical symbols or indicia, regardless of the nature
of the material objects, such as books, periodicals,
manuscripts, phonorecords, fi lm, tapes, disks, or cards,
in which they are embodied.
The term “motion picture exhibition facility” means
a movie theater, screening room, or other venue that is
being used primarily for the exhibition of a copyrighted
motion picture, if such exhibition is open to the public or is
made to an assembled group of viewers outside of a normal
circle of a family and its social acquaintances.
“Motion pictures” are audiovisual works consisting
of a series of related images which, when shown in
succession, impart an impression of motion, together with
accompanying sounds, if any.
To “perform” a work means to recite, render, play,
dance, or act it, either directly or by means of any device
or process or, in the case of a motion picture or other
audiovisual work, to show its images in any sequence or
to make the sounds accompanying it audible.
A “performing rights society” is an association,
corporation, or other entity that licenses the public

 86a
Appendix C
performance of nondramatic musical works on behalf of
copyright owners of such works, such as the American
Society of Composers, Authors and Publishers (ASCAP),
Broadcast Music, Inc. (BMI), and SESAC, Inc.
“Phonorecords” are material objects in which
sounds, other than those accompanying a motion picture
or other audiovisual work, are fi xed by any method now
known or later developed, and from which the sounds can
be perceived, reproduced, or otherwise communicated,
either directly or with the aid of a machine or device. The
term “phonorecords” includes the material object in which
the sounds are fi rst fi xed.
“Pictorial, graphic, and sculptural works” include
two-dimensional and three-dimensional works of fi ne,
graphic, and applied art, photographs, prints and art
reproductions, maps, globes, charts, diagrams, models,
and technical drawings, including architectural plans.
Such works shall include works of artistic craftsmanship
insofar as their form but not their mechanical or utilitarian
aspects are concerned; the design of a useful article, as
defi ned in this section, shall be considered a pictorial,
graphic, or sculptural work only if, and only to the
extent that, such design incorporates pictorial, graphic,
or sculptural features that can be identified separately
from, and are capable of existing independently of, the
utilitarian aspects of the article.
For purposes of section 513, a “proprietor” is an
individual, corporation, partnership, or other entity, as
the case may be, that owns an establishment or a food

 87a
Appendix C
service or drinking establishment, except that no owner
or operator of a radio or television station licensed by
the Federal Communications Commission, cable system
or satellite carrier, cable or satellite carrier service or
programmer, provider of online services or network access
or the operator of facilities therefor, telecommunications
company, or any other such audio or audiovisual service
or programmer now known or as may be developed in the
future, commercial subscription music service, or owner
or operator of any other transmission service, shall under
any circumstances be deemed to be a proprietor.
A “pseudonymous work” is a work on the copies
or phonorecords of which the author is identified under a
fictitious name.
“Publication” is the distribution of copies or
phonorecords of a work to the public by sale or other
transfer of ownership, or by rental, lease, or lending. The
offering to distribute copies or phonorecords to a group
of persons for purposes of further distribution, public
performance, or public display, constitutes publication. A
public performance or display of a work does not of itself
constitute publication.
To perform or display a work “publicly” means—
(1) to perform or display it at a place open to the
public or at any place where a substantial number of
persons outside of a normal circle of a family and its social
acquaintances is gathered; or

 88a
Appendix C
(2) to transmit or otherwise communicate a
performance or display of the work to a place specified
by clause (1) or to the public, by means of any device or
process, whether the members of the public capable of
receiving the performance or display receive it in the
same place or in separate places and at the same time or
at different times.
“Registration,” for purposes of sections 205(c)(2),
405, 406, 410(d), 411, 412, and 506(e) [17 USCS §§ 205(c)(2),
405, 406, 410(d), 411, 412, and 506(e)], means a registration
of a claim in the original or the renewed and extended
term of copyright.
“Sound recordings” are works that result from the
fi xation of a series of musical, spoken, or other sounds,
but not including the sounds accompanying a motion
picture or other audiovisual work, regardless of the nature
of the material objects, such as disks, tapes, or other
phonorecords, in which they are embodied.
“State” includes the District of Columbia and the
Commonwealth of Puerto Rico, and any territories to
which this title is made applicable by an Act of Congress.
A “ transfer of copy r ight ow nership” is an
assignment, mortgage, exclusive license, or any other
conveyance, alienation, or hypothecation of a copyright
or of any of the exclusive rights comprised in a copyright,
whether or not it is limited in time or place of effect, but
not including a nonexclusive license.

 89a
Appendix C
A “transmission program” is a body of material
that, as an aggregate, has been produced for the sole
purpose of transmission to the public in sequence and as
a unit.
To “transmit” a performance or display is to
communicate it by any device or process whereby images
or sounds are received beyond the place from which they
are sent.
A “treaty party” is a country or intergovernmental
organization other than the United States that is a party
to an international agreement.
The “United States,” when used in a geographical
sense, comprises the several States, the District of
Columbia and the Commonwealth of Puerto Rico, and the
organized territories under the jurisdiction of the United
States Government.
For purposes of section 411 [17 USCS § 411], a work
is a “United States work” only if—
(1) in the case of a published work, the work is
fi rst published—
(A) in the United States;
(B) simultaneously in the United States and
another treaty party or parties, whose law grants a term
of copyright protection that is the same as or longer than
the term provided in the United States;

 90a
Appendix C
(C) simultaneously in the United States and
a foreign nation that is not a treaty party; or
(D) in a foreign nation that is not a treaty
party, and all of the authors of the work are nationals,
domiciliaries, or habitual residents of, or in the case of
an audiovisual work legal entities with headquarters in,
the United States;
(2) in the case of an unpublished work, all
the authors of the work are nationals, domiciliaries, or
habitual residents of the United States, or, in the case of
an unpublished audiovisual work, all the authors are legal
entities with headquarters in the United States; or
(3) in the case of a pictorial, graphic, or
sculptural work incorporated in a building or structure,
the building or structure is located in the United States.
A “useful article” is an article having an
intrinsic utilitarian function that is not merely to portray
the appearance of the article or to convey information.
An article that is normally a part of a useful article is
considered a “useful article.”
The author’s “widow” or “widower” is the
author’s surviving spouse under the law of the author’s
domicile at the time of his or her death, whether or not
the spouse has later remarried.
The “WIPO Copyright Treaty” is the WIPO
Copyright Treaty concluded at Geneva, Switzerland, on
December 20, 1996.

 91a
Appendix C
The “WIPO Performances and Phonograms
Treaty” is the WIPO Performances and Phonograms
Treaty concluded at Geneva, Switzerland, on December
20, 1996.
A “work of visual art” is—
(1) a painting, drawing, print, or sculpture,
existing in a single copy, in a limited edition of 200 copies
or fewer that are signed and consecutively numbered by
the author, or, in the case of a sculpture, in multiple cast,
carved, or fabricated sculptures of 200 or fewer that
are consecutively numbered by the author and bear the
signature or other identifying mark of the author; or
(2) a still photographic image produced for
exhibition purposes only, existing in a single copy that is
signed by the author, or in a limited edition of 200 copies
or fewer that are signed and consecutively numbered by
the author.
A work of visual art does not include—
(A)
(i) any poster, map, globe, chart, technical
drawing, diagram, model, applied art, motion picture or
other audiovisual work, book, magazine, newspaper,
periodical, data base, electronic information service,
electronic publication, or similar publication;

 92a
Appendix C
(i i ) a ny m e r c h a n d i s i n g i t e m o r
advertising, promotional, descriptive, covering, or
packaging material or container;
(iii) any portion or part of any item
described in clause (i) or (ii);
(B) any work made for hire; or
(C) any work not subject to copyright
protection under this title.
A “work of the United States Government”
is a work prepared by an officer or employee of the United
States Government as part of that person’s official duties.
A “work made for hire” is—
(1) a work prepared by an employee
within the scope of his or her employment; or
(2) a work sp e c i a l ly or de r e d or
commissioned for use as a contribution to a collective work,
as a part of a motion picture or other audiovisual work, as
a translation, as a supplementary work, as a compilation,
as an instructional text, as a test, as answer material for
a test, or as an atlas, if the parties expressly agree in a
written instrument signed by them that the work shall
be considered a work made for hire. For the purpose
of the foregoing sentence, a “supplementary work” is a
work prepared for publication as a secondary adjunct to
a work by another author for the purpose of introducing,

 93a
Appendix C
concluding, illustrating, explaining, revising, commenting
upon, or assisting in the use of the other work, such as
forewords, afterwords, pictorial illustrations, maps,
charts, tables, editorial notes, musical arrangements,
answer material for tests, bibliographies, appendixes, and
indexes, and an “instructional text” is a literary, pictorial,
or graphic work prepared for publication and with the
purpose of use in systematic instructional activities.
In determining whether any work is
eligible to be considered a work made for hire under
paragraph (2), neither the amendment contained in section
1011(d) of the Intellectual Property and Communications
Omnibus Reform Act of 1999, as enacted by section 1000(a)
(9) of Public Law 106-113, nor the deletion of the words
added by that amendment—
(A) shall be considered or otherwise
given any legal significance, or
(B) shall be interpreted to indicate
congressional approval or disapproval of, or acquiescence
in, any judicial determination, by the courts or the
Copyright Office. Paragraph (2) shall be interpreted as
if both section 2(a)(1) of the Work Made For Hire and
Copyright Corrections Act of 2000 and section 1011(d) of
the Intellectual Property and Communications Omnibus
Reform Act of 1999, as enacted by section 1000(a)(9) of
Public Law 106-113, were never enacted, and without
regard to any inaction or awareness by the Congress at
any time of any judicial determinations.

 94a
Appendix C
The terms “WTO Agreement” and “WTO
member country” have the meanings given those terms
in paragraphs (9) and (10), respectively, of section 2 of the
Uruguay Round Agreements Act [19 USCS § 3501].
2. 17 U.S.C. § 102 provides:
§ 102. Subject matter of copyright: In general
(a) Copyright protection subsists, in accordance
with this title, in original works of authorship fi xed in
any tangible medium of expression, now known or later
developed, from which they can be perceived, reproduced,
or otherwise communicated, either directly or with the
aid of a machine or device. Works of authorship include
the following categories:
(1) literary works;
words;
music;

(2) musical works, including any accompanying
(3) dramatic works, including any accompanying
(4) pantomimes and choreographic works;
(5) pictorial, graphic, and sculptural works;
(6) motion pictures and other audiovisual works;
(7) sound recordings; and

 95a
Appendix C
(8) architectural works.
(b) In no case does copyright protection for an original
work of authorship extend to any idea, procedure, process,
system, method of operation, concept, principle, or
discovery, regardless of the form in which it is described,
explained, illustrated, or embodied in such work.
3. 17 U.S.C. § 103 provides:
§ 103. Subject matter of copyright: Compilations and
derivative works
(a) The subject matter of copyright as specified by
section 102 [17 USCS § 102] includes compilations and
derivative works, but protection for a work employing
preexisting material in which copyright subsists does not
extend to any part of the work in which such material has
been used unlawfully.
(b) The copyright in a compilation or derivative work
extends only to the material contributed by the author of
such work, as distinguished from the preexisting material
employed in the work, and does not imply any exclusive
right in the preexisting material. The copyright in such
work is independent of, and does not affect or enlarge
the scope, duration, ownership, or subsistence of, any
copyright protection in the preexisting material.

 96a
Appendix
D
APPENDIX D — UNITED
STATES
COPYRIGHT
OFFICE DEFINITION OF “USEFUL ARTICLES”
A “useful article” is an object having an intrinsic
utilitarian function that is not merely to portray the
appearance of the article or to convey information.
Examples are clothing, furniture, machinery, dinnerware,
and lighting fi xtures. An article that is normally part of a
useful article may itself be a useful article, for example,
an ornamental wheel cover on a vehicle.
Copyright does not protect the mechanical or
utilitarian aspects of such works of craftsmanship. It
may, however, protect any pictorial, graphic, or sculptural
authorship that can be identified separately from the
utilitarian aspects of an object. Thus, a useful article may
have both copyrightable and uncopyrightable features. For
example, a carving on the back of a chair or a floral relief
design on silver flatware could be protected by copyright,
but the design of the chair or flatware itself could not.
Some designs of useful articles may qualify for
protection under the federal patent law. For further
information, contact the U.S. Patent and Trademark
Office, P.O. Box 1450, Alexandria, VA 22313-1450 or via
the Internet at www.uspto.gov. The telephone number is
1-800-786-9199 and the TTY number is (571) 272-9950.
The automated information line is (571) 272-1000.
Copyright in a work that portrays a useful article
extends only to the artistic expression of the author of the
pictorial, graphic, or sculptural work. It does not extend to
the design of the article that is portrayed. For example, a

 97a
Appendix D
drawing or photograph of an automobile or a dress design
may be copyrighted, but that does not give the artist or
photographer the exclusive right to make automobiles or
dresses of the same design.

 98a
Appendix
A UNITED STATES
APPENDIX E — PAGES
FROM
COPYRIGHT OFFICE CIRCULAR 40A, DEPOSIT
REQUIREMENTS FOR REGISTRATION OF
CLAIMS TO COPYRIGHT IN VISUAL ARTS
MATERIAL (DECEMBER 22, 2014)
PAGES FROM UNITED STATES COPYRIGHT
OFFICE CIRCULAR 40a, DEPOSIT
REQUIREMENTS FOR REGISTRATION OF
CLAIMS TO COPYRIGHT IN VISUAL ARTS
MATERIAL (DECEMBER 22, 2014)

SEE SUPPLEMENTAL APPENDIX AT SA1

 99a
Appendix
A H.R. REP. 94-1476,
APPENDIX F — PAGES
FROM
94TH CONG., 2ND SESS. 1976

PAGES FROM H.R. REP. 94-1476,
94TH CONG., 2ND SESS. 1976

SEE SUPPLEMENTAL APPENDIX AT SA6

 100a
A
APPENDIX G —Appendix
THE BATMOBILES
THAT
APPEAR IN DC’S COMIC BOOKS

THE BATMOBILES THAT APPEAR
IN DC’S COMIC BOOKS

SEE SUPPLEMENTAL APPENDIX AT SA12

 101a
Appendix
A BATMOBILE
APPENDIX H —
THE 1966
DESIGNED BY GEORGE BARRIS

THE 1966 BATMOBILE –
DESIGNED BY GEORGE BARRIS

SEE SUPPLEMENTAL APPENDIX AT SA20

 102a
A NO. 205,998
APPENDIX IAppendix
— PATENT
(OCTOBER 18, 1966)

UNITED STATES PATENT NO. 205,998
(OCTOBER 18, 1966)

SEE SUPPLEMENTAL APPENDIX AT SA22

 103a
Appendix
A BATMOBILE
APPENDIX J —
THE 1989
DESIGNED BY ANTON FURST

THE 1989 BATMOBILE –
DESIGNED BY ANTON FURST

SEE SUPPLEMENTAL APPENDIX AT SA23

 104a
AppendixPATENT
A
APPENDIX K — DESIGN
NO. 311,882
(NOVEMBER 6, 1990)

UNITED STATES PATENT NO. DES. 311,882
(NOVEMBER 6, 1990)

SEE SUPPLEMENTAL APPENDIX AT SA24

 105a
Appendix
A UNITED STATES
APPENDIX L — PAGES
FROM
COPYRIGHT OFFICE CIRCULAR 40, COPYRIGHT
REGISTRATION FOR PICTORIAL, GRAPHIC,
AND SCULPTURAL WORKS (REVISED
SEPTEMBER 2015)
PAGES FROM UNITED STATES COPYRIGHT
OFFICE CIRCULAR 40, COPYRIGHT
REGISTRATION FOR PICTORIAL, GRAPHIC,
AND SCULPTURAL WORKS(REVISED
SEPTEMBER 2015)

SEE SUPPLEMENTAL APPENDIX AT SA29