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DC Comics v. Towle

United States District Court, C.D. California

February 7, 2013

DC COMICS, Plaintiff,
MARK TOWLE, an individual and d/b/a Gotham Garage, and DOES 1-10, inclusive, Defendants

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[Copyrighted Material Omitted]

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[Copyrighted Material Omitted]

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For DC Comics, Plaintiff: James Andrew Coombs, Nicole L Drey, J Andrew Coombs APC, Glendale, CA.

For Mark Towle, an individual, doing business as Gotham Garage, Defendant: Lawrence J Zerner, LEAD ATTORNEY, Larry Zerner Law Offices, Los Angeles, CA.

For Bruce M Polichar, Mediator (ADR Panel): Bruce Maurice Polichar, Bruce M. Polichar Law Offices, Los Angeles, CA.


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ORDER re: Defendant Mark Towle's Motion for Partial Summary Judgment [41]; Plaintiff DC Comics' Motion for Partial Summary Judgment [42]

HONORABLE RONALD S.W. LEW, Senior United States District Judge.

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 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.


This Action stems from a Complaint filed 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-in-interest 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 first appeared in 1966 and the 1989 film, Batman . Id.

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¶ ¶ 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 Century-Fox 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 filming of the television show. Id.

Plaintiff also licensed its Batman literary property to produce motion films. 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 films, including the 1989 Batman film to which Warner Bros. owns the copyright registration. Id. ¶ ¶ 27-28. Anton Furst was hired to construct the Batmobile that appeared in the 1989 film (hereinafter, " the 1989 Batmobile" ). Id. ¶ 31.

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,,,, and, which use Plaintiff's trademarks to promote Defendant's business. Id. ¶ ¶ 52-53.

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Plaintiff's Trademarks

Reg. No.























BATMAN (Word Mark)






















Serial No.



B. Procedural History

On May 6, 2011, Plaintiff filed its Complaint against Defendant [1], and on November 22, 2011, Plaintiff filed 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 filed 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 filed an Answer, asserting several affirmative defenses,

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including laches, unclean hands, and fair use [23].

On December 26, 2012, Defendant filed the present Motion for Partial Summary Judgment [41] and Plaintiff filed the present Motion for Partial Summary Judgment [42].

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.


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 affirmatively 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 non-moving 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.


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 filed 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. 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

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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 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 filed 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 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

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them. Joint Stipulation, Ex. 24 [45].[1] The fire 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[2] GIF ΒΆ 52. He also does not dispute ...

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