Mustangs, Batmobiles, and Copyright-Protected C(h)aracters

On May 24, the Ninth Circuit Court of Appeals issued a ruling finding that Eleanor, a group of Mustangs featured in the Gone in 60 Seconds films, does not qualify for copyright protection. It was a ruling that had been in the making for over 15 years.

The case pits Denice Halicki, the widow of Henry Blight “Toby” Halicki (H.B. Halicki), against Carroll Shelby Licensing (CSL), a rights management that represents the estate of late auto designer Carroll Shelby.

H.B. Halicki wrote and produced the original 1974 film Gone in 60 Seconds. He also did the same with two follow-up films, 1982’s The Junkman and 1983s Deadline Auto Theft. He intended to create a fourth film, Gone in 60 Seconds 2, but was tragically killed during its filming in 1989. That film remained unfinished.

Then, in 2000, the original film was remade into the Nicholas Cage film also entitled Gone in 60 Seconds. The Halicki estate controls the merchandising rights to that film.

However, following the release of the 2000 film, entities connected with CSL began to develop cars that mimicked Eleanor’s appearance. This led Halicki to file a lawsuit. The two sides settled in 2009.

But the settlement was not to last. Shortly afterward, CSL began work on a different but similar Mustang that Halicki felt was too close. After Halicki demanded that they cease production, CSL filed the lawsuit, seeking a declaration of non-infringement.

The lower court sided with CSL, finding that Eleanor did not qualify for copyright protection and that SCL had not breached the settlement agreement. However, it stopped short of offering declaratory relief. Now that the Ninth Circuit has upheld the rulings, it has ordered the lower court to reconsider the declaratory relief.

It is a complete and total victory for CSL. However, its bigger impact may be on an earlier ruling.

Batmobiles and Copyright Protection

In May 2011, DC Comics filed a lawsuit against mechanic Mark Towle. Towle was the operator of Garage Gotham, a garage where he built and sold replica Batmobiles. Those replicas included versions from the 1966 TV show and the 1989 film Batman.

In this case, the lower court sided with DC Comics, ruling that the Batmobile was a character protectable by copyright. Towle appealed, and the Ninth Circuit Court of Appeals heard the case, the same court that just ruled on the Eleanor case.

However, in this case, the Ninth Circuit also sided with DC Comics. In doing so, it created the “Towle Test,” a three-part test to determine whether a character is protectable by copyright.

According to the Ninth Circuit, that test includes:

1. The character must have “physical as well as conceptual qualities.”
2. The character must be “sufficiently delineated to be recognizable as the same character whenever it appears” and display “consistent, identifiable character traits and attributes,” and
3. The character must be “especially distinctive” and contain “some unique elements of expression.”

Apply that test to the Towle case; the court found that the Batmobile existed as both a comic book character and a 3-dimensional figure in a movie. That, while versions differed, it was sufficiently delineated to be recognizable wherever it appeared. Finally, it was ruled that the car possessed unique traits and elements, including its distinctive name.

As such, the Ninth Circuit concluded that DC Comics owns the copyright to the Batmobile character and Towle’s recreations were a copyright infringement.

That raises one question: What was different for Eleanor?

Why Eleanor Lost

In its analysis, the Ninth Circuit works to separate Eleanor from the Batmobile. On the first point, the primary separation was that the Batmobile is an autonomous-driving car capable of independent action. Eleanor, on the other hand, is not. Since Eleanor has no agency, it failed this particular test.

On the second test, the court found that the car did not have a consistent appearance. This includes changing color, model of car and different conditions. On the final test, the court finds that Eleanor is not especially distinctive and is difficult to distinguish from other sports cars. The court even notes that Eleanor is a common name for people, and isn’t as distinctive as the Batmobile.

According to the court, Eleanor “is more akin to a prop than a character.” It has no agency of its own. All of Eleanor’s actions are at the command of other characters.

This, most likely, puts an end to Halicki’s repeated claims to own the character of Eleanor. Though she has had successes in the past, including in the Ninth Circuit, this was the first time the court ruled on Eleanor as a character.

Originally, in July 2023, the Ninth Circuit did not issue a ruling in the case, simply dismissing the copyright claims. However, this ruling expands on that decision. It reverses the denial of declaratory relief and explains the justifications for not considering Eleanor a protectable character.

All in all, it is a significant blow for Halicki and her efforts to protect Eleanor as a character.

What’s Next

This isn’t the first time that the Ninth Circuit revisited the Towle test. In 2020, it heard a case pitting child development expert Denise Daniels against Disney.

According to Daniels, she created a pilot show entitled The Moodsters. It was a children’s show where anthropomorphic versions of various emotions helped kids understand their feelings. She claimed that the 2015 Disney film Inside Out bore too much of a similarity to her work.

However, the Ninth Circuit upheld a lower court ruling, finding that “Developing a character as an anthropomorphized version of a specific emotion is not sufficient, in itself, to establish a copyrightable character.” The court also noted that the use of colors commonly identified with such emotions is not protectable either.

Although the original Towle ruling may be seen as a way to expand what can be considered a copyright-protected character greatly, the later rulings have established firm boundaries on that.

For the Ninth Circuit to consider an entity a character, it must have a degree of agency, be recognizable across multiple iterations and be distinctive from tropes and other characters.

While all this makes sense, it’s a long way from a unique and stylish car being a distinctive character. That, in turn, is how some interpreted the original Towle ruling.

The result is that, in the Ninth Circuit at least, there is a high bar to protect a character with copyright. It’s one that creators are more likely to fail than to pass.

Bottom Line

The Towle Test is not as well-known as the transformative use test that previously governed much of the fair use conversation. Not only is fair use a much more common issue, but it was the product of a Supreme Court decision where the Towle Test is limited to the Ninth Circuit.

However, the courts have worked to restrict the impact of both tests in recent years. The Supreme Court handed down the Warhol, which reexamined the question of transformative use. Likewise, the Ninth Circuit has twice revisited Towle, placing clear boundaries on it both times.

Clearly, the standard for a character enjoying copyright protection is a high one. At least, that’s how this court feels. This makes the Towle ruling seem more like a fluke, akin to the Blurred Lines case.

Although the Towle Test has survived, it’s now a much more challenging test to pass than it was 10 years ago.

Those who want to create a character that enjoys copyright protection need to understand the guidelines set before them. The Ninth Circuit has made it very clear which challenges you must overcome.

Special Thanks: A big thank you to Angus MacDonald from the University of California for bringing this ruling to my attention.