Monday, April 13, 2015

The Batmobile, Kryptonite and Duff Beer: Brand development and famous ancillary indicia

Using established ancillary indicia – things associated with a particular character, laden with goodwill, is a clever way of projecting a brand message. The hard work has already been done, after all: an audience recognises the brand immediately, and does not need to be taught what the brand means.

A short list of ancillary indicia laden with goodwill might include:

a. The invisible plane (Wonder Woman) (USA);
b. The TARDIS (Dr Who) (UK);
c. The bamboo-copter (Doraemon) (Japan);
d. The Law-Giver (Judge Dredd) (UK);
e. The Death Star (Star Wars) (US).

Each of these items carry with them significant reputation in each of their respective jurisdictions (and beyond) so as to be potentially protected as characters of themselves, and be capable of generating revenue for their respective owners through licensing.

But brand owners often do not like it when someone uses such ancillary indicia without premission.

In 2013, Warner Bros. commenced proceedings against California resident Mark Towle, who is the owner and operator of a car customizing service named Gotham Garage.

Towle’s company specialises in custom replicas of automobiles that are featured in films and TV shows, and it owes its name to one of its most popular works: Batmobile replicas.

Gotham Garage received a lot of attention for creating exceptional replicas of the Batmobile that was used in the iconic Batman TV series from the 1960s. Gotham Garage charged USD90,000 for each vehicle.

Towle’s defence was that the Batmobile is not protected by copyright law. This was because as a car, under U.S. copyright law, articles that have a utilitarian function (such as lamps, bathroom sinks, computer monitors, cars) cannot be protected bycopyright as a whole. Towle’s argument was that protection is only afforded to features that allow the articles to be “identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”

Towle also argued that a ruling in favor of Warner Bros. would set an unfavourable precedent, in encouraging car makers such as Toyota, Ford, Ferrarri, and Honda to publish comic books so as to obtain protection for articles that are not protectable.

The Court found for Warner Bros., citing that the Batmobile is protected by copyright because it is a character in and of itself, existing in both “two-and three-dimensional forms,” with its existence in three dimensional form a “consequence of the Batmobile’s portrayal in the 1989 live motion film and 1966 Television series.”

The Court further noted that Gotham Garage did not copy the design of a single car, but copied a character in its entirety. The unauthorised Batmobile replicas are derivative works and the fact that they can also function as “useful articles” is irrelevant to the case.

Other factors that contributed to Warner Bros. case include the fact that Gotham Garage used DC’s Batman-related marks in the advertising for their services, and that the bat design marks are “distinct.”

Additionally, Warner’s case was also helped by the findings that customers of Gotham Garage frequently asked Towle if he is affiliated with Warner Bros.

Otherwise, Warner Bros. has licensed toy versions of the Batmobile and that the company has the option of expanding their business in order to compete with custom builders of Batmobiles.

Towle filed an appeal of the decision last month, and the appellate panel focused on the copyright issues in the appeal hearing. It is worth noting that Towle already conceded that he infringed DC’s trade marks and has agreed to exclude them from his marketing and creations going forward. The appellate court’s ruling is due in late 2015.

The decision at first instance was hardly a surprise. In a separate 2005 decision, DC Comics v Pan American Grain Mfg Co Inc, 77 USPQ2d 1220 (TTAB, 2005), the plaintiff, DC Comics, owned the trademark rights to the popular superhero character Superman. The plaintiff also had a trade mark registration for Kryptonite, the famous green-glowing mineral which weakens Superman to the point of losing his powers.

The registration for Kryptonite covered only t-shirts and novelty items.

The defendant had wanted to use the term, Kriptonia, for a prepared alcoholic fruit cocktail drink.

The plaintiff filed an opposition to the defendant’s application for trade mark. Among other things, the plaintiff claimed that it had focused enormous attention, effort and investment ‘to develop the Superman mythos, including the character, his associates, his world, and other indicia associated with him.’ It successfully asserted that ‘Superman has become associated with certain symbols and indicia which in the public mind are inextricably linked with the Superman character and which function as trademarks, both for literary and entertainment works featuring Superman and for various goods and services for which one of these indicia is Kryptonite (a rock from Superman’s home planet, Krypton, which has a debilitating effect on his powers)”.

What other ancillary indicia would give rise to protection? In Australia, in the case of Twentieth Century Fox Film Corporation v South Australian Brewing Co Ltd (1996) 66 FCR 451, the Federal Court found that the tipple of choice of fictional character Homer Simpson, Duff Beer, was similarly protectable.

What does this mean for brand creation? Be careful to not sail too close to the wind in respect of ancillary indicia in brand creation. Or, look to works which are no longer protected by copyright, such as this clever example:

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