IP/Entertainment Law Weekly Case Update for Motion Picture Studios and Television Networks -- February 22, 2013


Table of Contents

Hallford v. Fox Entertainment Group, USDC S.D. New York, February 13, 2013
 Click here for a copy of the full decision.

  • District court grants defendants’ motion to dismiss plaintiff’s copyright infringement claim, finding that defendants’ television show Touch is not substantially similar to plaintiff’s copyrighted screenplay.

Plaintiff Everette Hallford brought suit against defendants Fox Entertainment Group and others involved in the television show Touch, asserting a single count of copyright infringement based on allegations that Touch infringed plaintiff’s copyrighted screenplay Prodigy. The district court granted defendants’ motion to dismiss, finding that the defendants’ television show was not substantially similar to plaintiff’s work.

At the outset, the court noted that, in order to determine whether two works are substantially similar for the purposes of determining copyright infringement, courts must evaluate the total concept and theme, the characters, plot, sequence, pace, and setting of the works. Under the Second Circuit’s ordinary observer standard for substantial similarity, the court must determine whether an ordinary observer, unless he set out to detect disparities, would be disposed to overlook them and would regard the aesthetic appeal of the two works at issue as the same. In addition, when works include both protectible and unprotectible elements, the court must first apply the “more discerning” test and extract the unprotectible elements from consideration and then ask whether only the protectible elements are substantially similar.

While plaintiff’s amended complaint asserted a single count of copyright infringement against defendants for infringing his copyright in Prodigy, he argued that the court should also evaluate the similarity of Touch to one of his earlier works, a novel titled Visionary, asserting that Touch is a “remolecularized version of Prodigy and Visionary” and that the works evaluated together established copyright infringement. The court declined to consider Visionary for two reasons. First, copyright infringement requires substantial similarity between a protected work and an infringing work, and plaintiff cannot “mix and match” alleged similarities between defendants’ Touch and other of plaintiff’s works that are not related to one another. Second, the court found that Visionary was “entirely dissimilar” to both Prodigy and Touch.

Noting that it need not consider every one of the “legion” of similarities that plaintiff asserted because that kind of micro-analysis fails to address the underlying issue of whether the works as a whole are substantially similar, the court concluded that “the average lay observer – no matter how discerning – would not recognize that Touch was appropriated from Prodigy” because the two works are fundamentally different in total concept and overall feel. Prodigy, a story about family “forged through unlikely connections” around the boy Jonathan, involves an investigative journalist haunted by the loss of his wife, who grows to care for an autistic child who cannot communicate with the outside world. Together they not only discover how a train accident was narrowly averted, but also change as a result of their time together. In contrast, Touch is “less about family and more about fate.” In Touch, the boy Jake reveals the “red thread of fate” that binds together people whose lives are destined to touch, and he facilitates those connections among people, changing the world. Touch is about the mystery of Jake’s power, and tells the stories of Jake and Martin’s “ongoing mission to ensure that particular people meet at particular moments in order to avoid catastrophe.”

While Touch and Prodigy are broadly similar in that both works concern the theme of interconnectedness, copyright does not protect general themes, only the particularized expression of those themes through “treatment, details, scenes, events and characterization,” according to the court. “Interconnectedness is not a protectable theme. And the themes in Prodigy and Touch are only similar in that they each address this nonprotectible idea.” Based on its evaluation of the two works, the court found that the plot and sequence of Prodigy and Touch are substantially different. Prodigy is a mystery story in which a reporter for a parapsychology journal bonds with a young autistic child who helps him discover how a man prevented a train accident. In contrast, Touch is a “fast-paced work that cuts among multiple plotlines across multiple countries,” in which Jake, the boy protagonist, acts as “an air traffic controller” of interconnectivity, causing particular people to meet at particular moments in order to avoid catastrophe and, in the first episode alone, “prevents a suicide bombing, restores a family’s livelihood, saves children on a school bus, comforts grieving parents, and launches a singing career.”

The court also found that the characters, setting and pace of the two works are not substantially similar. Beyond the fact that both boy characters exhibit symptoms of autism, Prodigy’s Jonathan and Touch’s Jake are “fundamentally dissimilar,” and the male main characters, while both widowers, are also not substantially similar. The court also found that the setting and pace of Prodigy, a relatively slow-paced drama set in New York and rural Pennsylvania, differed significantly from the setting and pace of Touch, with its frenetic action and multiple stories set around the world. And while both works feature scenes in New York City, using New York City as a setting is not a protectable element.


DC Comics v. Towle, USDC C.D. California, February 13, 2013
 Click here for a copy of the court’s Findings of Fact and Conclusions of Law.
 Click here for a copy of the court’s decision on the parties’ cross-motions for partial summary judgment.

  • In action asserting copyright and trademark infringement claims related to defendant’s production and sale of Batmobile replicas, district court grants plaintiff DC Comics’ partial motion for summary judgment on both claims, finding consumers were likely to be confused by defendants’ Batmobile replicas, and that the Batmobile was entitled to copyright protection both as a fictional character and as a work of pictorial, graphic or sculptural art.

Plaintiff DC Comics owns the copyright registrations to Batman comic books, which feature the world-famous Batman and his Batmobile vehicle. Batman and his Batmobile have appeared in comic books, television shows and movies, including the television series Batman, which first appeared in 1966, and the 1989 film Batman. 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. The trademarks appear on merchandise including toy figurines and automobiles, apparel, and household goods. Plaintiff has also contracted with other entities to create full-sized custom cars and replicas featuring the Batman trademarks. Defendant Mark Towle is the owner, operator, and manager of a business producing custom cars modeled after vehicles found in various television shows and movies, including replica vehicles based on the 1966 and 1989 Batmobile vehicles and other automotive products bearing Batman-related trademarks owned by plaintiff. Plaintiff filed an action against defendant, asserting that defendant has infringed plaintiff’s copyright in the 1966 and 1989 versions of the Batmobile, and infringed plaintiff’s trademarks by marketing and selling replica Batmobiles and related products. On cross-motions for summary judgment, the court granted plaintiff’s motion with respect to its trademark claims, but denied plaintiff’s motion with respect to its copyright claim, finding genuine issues of facts as to defendant’s laches defense to the copyright claim.

Defendant does not dispute that he created replicas of the Batmobiles. Instead, defendant argued that plaintiff lacked standing to bring a claim for copyright infringement of the 1966 and 1989 Batmobile vehicles, because plaintiff does not own the copyright to either the 1966 Batman television show or the 1989 Batman film. The court found that, although Greenway Productions, Inc., and Twentieth Century Fox Television, Inc., own the copyrights to the 1966 Batman television series, and Warner Bros. owns the copyright to the 1986 Batman movie, plaintiff had reserved all rights to the characters and elements depicted in the Batman series and film, and retained exclusive merchandising rights. Based on plaintiff’s reservation of exclusive ownership rights to the 1989 and 1966 Batmobiles, the court found that plaintiff had standing to assert a copyright infringement claim.

The court also noted that 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 copyright infringement because it owns the copyrights to the original comic book series in which the Batmobile initially appeared, and has the exclusive right to prepare derivative works. The court concluded that defendant’s replica Batmobile vehicles are derivative works of the Batman comic book series, as well as of the rights retained by plaintiff in the Batman television series and movie.

The court also found that the Batmobile was entitled to copyright protection as a fictional character, rejecting defendant’s argument that the Batmobile was unprotectable because it is merely a car. The court noted that, although the Ninth Circuit has recognized that copyright protection may be afforded to characters visually depicted in a television series or movie, there was some confusion as to which legal standard applies in determining whether visually depicted characters are subject to copyright protection – the “especially distinctive standard” or the “story being told” standard. Under the “especially distinctive” standard, characters that have displayed “consistent, widely identifiable traits” receive copyright protection. Under the “story being told” standard, characters are entitled to copyright protection if they constitute the story being told, rather than merely “the chessman in the game of telling the story.” Relying on the Ninth Circuit’s decision in Halicki Films, LLC v. Sanderson Sales and Mktg., the court found no genuine issue of material fact as to whether the Batmobile is “sufficiently delineated” to constitute a character entitled to copyright protection. The central question is not whether the “character” is an object, but rather whether the character conveys a set of distinct characteristics. In finding that the Batmobile character is entitled to copyright protection, the court found Toho Co., Ltd. v. William Marrow and Co., Inc., which involved the “Godzilla” character, most analogous. Although Godzilla assumed many shapes and personalities in the various Godzilla films, the district court in Toho found that “Godzilla has developed a constant set of traits that distinguish him/her/it from other fictional characters,” meriting copyright protection. Similarly, the court found that the Batmobile is a “world-famous conveyance in the Batman franchise, exhibiting a series of readily identifiable and distinguishing traits,” including its traits as a “highly interactive vehicle, equipped with high-tech gadgets and weaponry used to aid Batman in fighting crime.” Accordingly, the court held that defendant’s copying of the two-dimensional Batmobile character, which appeared in the 1989 film, the 1966 television series, and the original comic books, into three-dimensional forms, constituted copyright infringement.

The court alternatively found that the Batmobile is protectable as a “pictorial, graphic, and sculptural work.” Under 17 U.S.C. § 102 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. The court concluded that all of the features that distinguish the Batmobile from any other car – the fantastical elements that feature a bat design, such as the bat tailfin and the various gadgetry that identify the vehicle as the Batmobile – are both conceptually and physically separable from the utilitarian function of the Batmobile as an automobile. In particular, the court noted that “the 1989 Batmobile’s entire frame, consisting of the rear exaggerated, sculpted bat-fin and the mandibular front, is an artistic feature that can stand on its own without the underlying vehicle.” Further, the Batmobile’s wheels each contain a hubcap containing a metal bat sculpture, which can literally stand on its own without the underlying wheel. Because no genuine issue of material fact existed as to whether defendant had copied the copyrightable elements of the 1966 and 1989 Batmobiles, the court granted plaintiff’s motion for summary judgment and denied defendant’s cross-motion on copyright infringement.

With respect to plaintiff’s claim for trademark infringement, the court found that plaintiff has valid trademark rights in the trademarks at issue and standing to sue for infringement of those marks. The court rejected defendant’s argument that plaintiff could not sue because it did not own the BATMOBILE mark in class 12 for automobiles. To establish standing, the court explained, plaintiff must only 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. After analyzing the Sleekcraft factors used to determine whether there is a likelihood of confusion, the court found that defendant’s unauthorized use of plaintiff’s trademarks causes a likelihood of confusion as a matter of law. Notably, the court found that defendant’s knowing adoption of marks closely similar to ones used by plaintiff is a basis for inferring intent to deceive the public, which is “strong evidence of a likelihood of confusion.”

Finally, the court considered defendant’s laches defense to plaintiff’s trademark and copyright claims. The court explained that 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. A defense of laches is barred, however, where the defendant purposefully commits infringing conduct. The court found a genuine issue of fact as to when plaintiff knew or should have known of defendant’s infringing conduct, and whether any delay in filing suit was reasonable. However, because defendant did not dispute that he intentionally used the designs of the 1989 and 1966 Batmobile vehicles, including the various trademarks incorporated in them, and therefore willfully infringed plaintiff’s trademark, the court dismissed defendant’s laches defense as to plaintiff’s trademark infringement claim. The court concluded that plaintiff had not demonstrated that defendant’s conduct constitutes willful infringement of plaintiff’s copyright, however, which requires a showing that the defendant be aware that his conduct constitutes copyright infringement. Given these issues of material fact, the court denied both parties’ cross-motions for summary judgment on defendant’s laches defense as to the copyright claim.

For more information, please contact Jonathan Zavin at jzavin@loeb.com or at 212.407.4161.

Westlaw decisions are reprinted with permission of Thomson/West. If you wish to check the currency of these cases, you may do so using KeyCite on Westlaw by visiting http://www.westlaw.com/.

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