Brent Randall is a JD candidate at the University of Ottawa.

DC Comics, owner of the Batman character, filed a lawsuit on May 6, 2011, alleging infringement of its copyright and trade-mark rights over the Batmobile.  The suit, filed in California, alleges that the named defendant, Mark Towle, is selling imitation Batmobile vehicles as well as individual parts and accessories for the vehicle.

DC, which owns other famous characters such as Superman, Wonder Woman and the Green Lantern, argues that the manufacture and sale of Batmobiles by Mr. Towle infringes on the copyright and trade-mark in the distinctive design of the vehicle.  The plaintiff argues that this infringement not only causes DC damages, but is also likely to cause confusion for consumers who may think that DC has licensed Mr. Towle’s Batmobiles on his website and at his garage in Orange County, California.  Interestingly, Mr. Towle’s website includes a “challenge” to a competitor that also builds replica Batmobiles – but under licence from DC.

As previously featured on IP Osgoode, the manufacture and sale of Stormtrooper armour from Star Wars was recently at issue and decided in the defendant’s favour in the UK.  However, in California, a default judgment was issued against the same defendant. (See also this IP Osgoode article regarding fictional trade-marks).

The Hollywood Reporter predicts that DC will face an uphill battle in enforcing its rights in the Batmobile: thousands of fans of the Caped Crusader world-wide have altered cars bearing a resemblance to his famous wheels (from fashion designer Ralph Lauren to this college student in Pasadena).  Fan creations, whether turning a car into the Batmobile or compiling terms from the Harry Potter novels into an encyclopedia, are widespread.  This is bound to happen when dealing with particularly famous marks.  So, why do some acts by fans merit legal action while others do not?

Fan creations, by their nature, are likely infringing reproductions and not saved by copyright’s fair use defence.  Depending on whether the creation is clearly marked as “unauthorized” or similar, there is also the potential for confusing use of a trade-mark.  Author Anne Rice protects these rights, in their strictest sense, as she demands that her fans not create fiction using characters from her novels.

As this commentary notes, many famous rights-holders appear to follow a kind of unwritten rule of both business sense and practicality.  TV personality Stephen Colbert, for example, understands the potential free advertisement and viewer interest that comes from encouraging fans to create videos and pictures using his likeness and material from his show, The Colbert Report.  Additionally, even if Colbert (or Viacom, owners of Comedy Central) wanted to go after every fan creation, derivative of his creative works, they would quickly compile a hefty bill for legal fees, possibly offset only by small, unsubstantial damages.

Where Colbert might agree with Rice on drawing the line to stop fan creations is when it becomes a source of profit for the fan and not the original creator.  As the Supreme Court of Canada stated in Théberge v. Galerie d'Art du Petit Champlain inc., copyright protection is a balance between “promoting the public interest in the encouragement and dissemination of works of the arts and intellect and obtaining a just reward for the creator.”  Trade-mark protection is similarly concerned about rewards for rights-holders, such as section 20 of the Trade-marks Act which states confusing use of a trade-mark in a manner that depreciates the goodwill associated with that mark constitutes infringement.  Companies like DC will often tolerate fans who show their appreciation through various expressions of creativity.  However, when that creativity moves from fan hobby to commercial venture – as in the case of Mr. Towle’s Batmobile garage – rights holders may be more likely to take legal action.