Mark Towle is the owner of which produces unlicensed replicas of the Batmobiles from the 1966 TV series and 1989 movie. Towle made two claims in defense to the copyright action: first, the Batmobiles appearing in the 1966 TV series and 1989 film were not entitled to copyright protection; and, second, DC Comics did not own the copyright to the Batmobile that appearedĚýin the show and movie.

Judge Ikuta, who wrote the opinion, statedĚýthat the Batmobile contains consistent, identifiable character traits worthy of copyright protection, similar to that of a sentient character. She also found that DC Comics never surrendered their underlying rights when licensing derivative works of the Batmobile. Although a fair judgment may have been reached in this specific situation, Towle's application to other cases offers a low threshold for sufficient character delineation and may result in copyright protection where none is warranted.

Is the Batmobile entitled to Copyright Protection?

In order to attract copyright protection, a character must be “”Ěýand containĚýconsistent and recognizable characteristics. DC Comics must show that the Batmobile is sufficiently delineated to be recognizable whenever and wherever it appears. Relying on theĚý2008 decision inĚý, the court distinguished physical appearance from attributes and traits. Towle correctly pointed out that there are several physical differences between the 1966 Batmobile, 1989 Batmobile, and the iterations in the comic books, positing that these differences are enough to declare the car insufficiently delineated.Ěý However, the court rejected this line of argument, and stated that it is enough that the Batmobile always maintains consistent attributes and traits, includingĚýinteractive features, bat-like design, and high-tech weaponry that helpĚýBatman fight crime.

The court used spurious examples from other films to show how consistent traits are sufficient for this stage of the test. Judge Ikuta, for example, stated that “Godzilla is always a prehistoric, fire-breathing, gigantic dinosaur alive in the modern world”. However, the two most recent Godzilla films have shown this to be untrue. Ěýis a member of a species of massive, prehistoric amphibious reptile that feeds off radiation. Technically, Godzilla does not breathe fire, but atomic breath, gained from exposure to the atomic bomb that mutated him.Ěý is a mutated lizard, specifically a marine iguana.

Similarly, Halicki decided that “Eleanor”, a car that appeared in both the and of Gone is 60 Seconds, isĚýentitled to copyright protection. The court ruled it warranted protection after considering Eleanor’s persistent attributes like theĚýname--“Eleanor”--and its difficulty to steal. The court was silent onĚýthe distinct variation in colour and model of the car between films.

Another example drawn on by the decision-makers in Towle was the 2011 case of , where the Eighth Circuit stated that “the presence of distinctive qualities apart from visual appearance can diminish or even negate the need for consistent visual appearance [emphasis added].” The characterĚýmust be sufficiently delineated to be recognizable . It would be interesting to see how the Court would have ruled if Towle had copied the Batmobile (referred to as the ) in the recent Dark Knight Trilogy. Here, the "bat-like design" emphasized by the court as a delineating attribute of the Batmobile is absent. The Tumbler looks more like a cross between a Lamborghini and tank than the "bat-like" vehicle depicted in the DC comics. The Tumbler is recognizable as the Batmobile solely because Batman is driving it. It is true that the Batmobile consistentlyĚýcontains high-tech weaponry and helps fight crime, but so do James Bond’s cars. This would suggest that the "Batmobile" name in combination with its innate characteristics plays an important role in its delineation; however, this is not explicitly stated in the judgment.

It is unclear how many attributes or traits, and in what combination, suffice to justify protection. This stage of the test relies heavily on the intuition of the judiciary to set a threshold, resulting in uncertainty as to what constitutes sufficient delineation.

Does DC Comics own the Copyright to the Batmobile appearing in the 1966 TV series and 1989 movie?

After the Court established the copyrightability of theĚýBatmobile as aĚýcharacter, it turned its collective mind to whether Towle’s replicas infringed DC’s copyright. Towle claimed that the Batmobile appearing in the 1966 TV series and 1989 movie productions are not what is depicted in DC’s comic books. In the 1990 caseĚý, the courtĚýstated that when the owner of a copyright protected work authorizes a third party to prepare a derivative work, the owner of the underlying copyright retains copyright in that derivative work with respect to all elements that the derivative creator relied upon. The derivative creator holds a copyright in non-trivial contributions to the original work. This makes the absence of a comparison between DC's underlying work and Towle's replicas very troubling. Towle willingly admitted to copying the derivatives; but, it is not the derivative producers that are claiming copyright infringement, it is DC Comics. Therefore, Towle's replicas should be compared to the elements of the underlying DC comics which were relied upon by the derivative creators.

Final Thoughts

Although the derivative Batmobiles copied by Towles are not the spitting images of those found in the DC comics, they were not distinct enough to deny DC ownership of the underlying work. However, it's doubtful whether the decision will consistentlyĚýlead to just resultsĚýwhen applied to future cases. The decision admirably attempted to clarify theĚýcopyrightability of characters. But the courtĚýmissed the mark onĚýa robust definition of “sufficiently delineated”. The examples provided within the judgment suggest that the court is putting too much emphasis on consistent underlying traits and not enough on physical similarity when it comes to determining if objects are characters worthy of copyright protection. When objects are permitted to change in physical appearance but maintain copyright protection because they have consistent traits, protection is essentially being afforded to the "name" of the object and not the object itself. I think it is very likely that this application will lead to protection for characters, specifically objects, that are not sufficiently delineated to warrant copyright protection. On a positive note, the decision is clear in that non-sentient characters, even ones that do not communicate are copyrightable.

I would love to hear your thoughts on this decision. Do you share my concerns?

Justin Philpott is an IPilogue Editor and a JD candidate at Osgoode Hall Law School.

The post Batmobile Declared a Character Deserving of Copyright Protection, Finally Invincible appeared first on IPOsgoode.

Unfortunately for the estate of Toronto born Joe Shuster, it appears Superman’s kryptonite, at least in regards to termination rights under of the American , is subsequent agreements which have the effect of eliminating a termination right.

Superman’s journey from his 1930s birth to his modern inception is enough to fill a .Ěý Of relevance to Superman’s termination right is that Jerry Siegel and Joe Shuster were the co-creators of the character. The duo owned the copyright in the character Superman. In 1938, Siegel and Shuster licensed DC Comics the “exclusive right to the use of the [Superman] characters and story”. Once the copyright was assigned to DC Comics, Siegel and Shuster continued to work on Superman’s character development pursuant to a work-for-hire agreement. In 1992, Shuster passed away and his sister, Jean Peavy, was named sole beneficiary of his estate.

The above discussion brings us to our first copyright issue - a slight distinction of relevance to the case. At issue in DC Comics is the termination of copyright in the character Ěýgranted under the 1938 agreement (similar toĚýĚýfrom June 1938), since that is the work created and licensed by Siegel and Shuster. Any other derivative additions to the Superman character which has led to are owned by DC Comics under the work made for hire doctrine. Prior to the Copyright Act, 1976, it was generally understood that copyright would belong to the employer if the work was created at the employer’s “instance and expense”. Thus, Siegel and Shuster’s contribution post-licence, and any derivative additions to Superman, are not at issue in DC Comics since works created under work made for hire agreements cannot be terminated. What is at issue is the termination of the original Superman character’s copyright - not the totality of his modern appearance.

Under the Copyright Act, 1976, the United States Congress provides authors and their statutory successors with the opportunity to regain rights that were granted away via agreements and licences. This “second bite of the apple” allows authors and their heirs to regain their copyrights in order to re-bargain for beneficial agreements with licensees. For copyrighted works which were licensed prior to January 1, 1978, termination rights may be claimed at the end of the 56th or 75th year from the date copyright was originally secured.Ěý For the estate of Shuster, they are wishing to terminate the copyright in Superman after the end of the 75th year, in October of 2013.

In order to terminate under §304, notice must be filed within a five-year window and must meet the of the United States’ Copyright Office. Shuster’s estate does not encounter issues with meeting the time frame nor the requirements; the biggest stumbling block is a 1992 agreement between Shuster’s estate and DC Comics. ĚýIn 1992, Shuster’s sister (and brother, Frank Shuster) signed an agreement with DC which stated DC would pay Peavy $25,000 per year for life as well as pay off Shuster’s debts in exchange to settle “all claims to any payments or other rights or remedies which [Peavy] may have under any other agreement or otherwise, whether now or hereafter existing regarding any copyrights […] in any and all work created in whole or in part by […] , Joseph Shuster, or any works based thereon.”

The 1992 agreement has surfaced as Superman’s (or at least Shuster’s estates) kryptonite. Despite the language of which states, “termination may be effected notwithstanding any agreement to the contrary”, American courts in the Ninth and Second circuit have interpreted §304(ł¦)(5) otherwise. Courts have permitted subsequent agreements to revoke and replace the original agreement, thus eliminating the statutory termination right. Based on the American jurisprudence, the key for the subsequent agreement is that it must be substantially more beneficial to the authors or their heirs in order to eliminate the statutory termination right.

In , the Ninth Circuit held that a 1983 re-grant agreement, which superseded 1930 and 1961 licences of Winnie the Pooh, eliminated the statutory termination right. The 1983 agreement, which was described as an adjustment of royalties, increased the royalties of the heirs in question by 400% in exchange to not exercise their statutory termination right. The new grant, which was a more lucrative deal for the author’s heirs, was upheld by the Ninth Circuit as not being an “agreement to the contrary” under §304(ł¦)(5). The Milnes were denied their statutory termination right since they “were able to obtain considerably more money as a result of the bargaining power wielded by the author’s son”.

Following suit, the Second Circuit court in discussed a 1994 agreement by Elaine Steinbeck which re-licensed her late-husband John Steinbeck’s copyrighted literary works. Several of John Steinbeck’s works were governed by a 1938 agreement with Penguin Group. In 1994, Elaine Steinbeck, the owner of John’s copyrights, entered into a “new agreement for continued publication” with Penguin. The agreement included prior licensed works and additional literary works and “changed the economic terms of the 1938 agreement, mostly to Elaine Steinbeck’s benefit…”. Under the 1994 agreement, Penguin was required to provide larger annual guaranteed advanced and royalties. The language of the 1994 agreement stated it would “cancel and supersede the previous agreements”.

The court in Steinbeck held the 1994 agreement eliminated Elaine Steinbeck’s statutory termination right. In reaching their conclusion, the court emphasized Elaine Steinbeck’s substantial benefits under the new agreement. Since Steinbeck had the ability in 1994 to renegotiate the terms of her previous agreement “to her benefit…”, the court found that “by taking advantage of this opportunity, she exhausted the single opportunity provided by statute to Steinbeck's statutory heirs to revisit the terms of her late husband's original grants of licences to his copyrights”.

Despite the above cases, illustrates subsequent agreements will not supersede previous agreements if the benefit to the authors or authors’ heirs is insubstantial. In Classic Media, various copyrights were assigned for Lassie by the defendant Mewborn (one of three heirs of the original author Eric Knight) in 1976 for $11,000. In March of 1978, another agreement was signed which granted nearly-identical copyrights in exchange for $3,000. The plaintiff-licensee objected to Mewborn’s notice of termination in 1996, and pointed to the 1978 subsequent agreement.Ěý Here, the Ninth Circuit distinguished Steinbeck and Milne and held that the 1978 agreement did not eliminate Mewborn’s termination rights since the 1978 agreement was only a transfer of ancillary rights for $3,000; it did not revoke and supersede the previous assignment of rights.

The above cases were cited in DC Comics, but U.S. District Court Judge Otis Wright did not mention whether or not the substantiality of the benefit obtained by the author or author’s heirs is relevant in subsequent agreements. As Eriq Gardner of The Hollywood Reporter , Judge Wright’s reasoning in DC Comics is likely to “trigger an appeal”. Whether or not the substantiality of the benefit received by Shuster’s heirs will be a major issue on appeal remains to be seen. It is clear that a spectrum exists between the benefits received in Milne/Steinbeck and Mewborn, and the $25,000 per year and additional debt clearing provided by DC Comics lays somewhere in the middle… perhaps, in my opinion, leaning a bit closer to Milne/Steinbeck's substantiality.

Adam Jacobs is a JD Candidate at Western University, Faculty of Law and is currently on exchange at Southwestern Law School in Los Angeles, California.

The post Superman’s (Termination) Kryptonite: Subsequent Agreements – Warner Bros and DC Comics win fight over Superman’s Copyright appeared first on IPOsgoode.