382 F.Supp.2d 602 (2005)

[603] [604] Andrew Baum, Paul Fields, Atul R. Singh, Michael J. Sullivan, Darby & Darby P.C., New York, New York, for Plaintiff.

Richard A. Williamson, Flemming, Zulack & Williamson, LLP, New York, New York, Marcia B. Paul, Davis Wright Tremaine LLP, New York, New York, for Defendants.

OPINION & ORDER

MUKASEY, District Judge.

Plaintiff Thomas Shine sues David M. Childs and Skidmore, Owings & Merrill, LLP (SOM) for copyright infringement under the United States Copyright Act, 17 U.S.C. § 101 — § 1332 (2000). Shine alleges that he created designs for an original skyscraper which Childs saw and later copied in the first design plan for the [605] Freedom Tower at the World Trade Center (WTC) site. Defendants move to dismiss the Complaint, or alternatively for summary judgment. For the reasons explained below, defendants' motion for summary judgment is granted in part and denied in part.

I.

The facts viewed in the light most favorable to the plaintiff, see Higgins v. Metro-North R.R. Co., 318 F.3d 422, 424 (2d Cir.2003), are as follows. In fall 1999, Shine was a student in the Masters of Architecture Program at the Yale School of Architecture. As part of the required curriculum in his program, he took a studio class on skyscrapers taught by renowned architect Cesar Pelli. (Compl.¶ 8) The object of this studio was to create a design proposal for a monumental skyscraper that would be built on West 32nd Street in Manhattan and used by the media during the 2012 Olympic Games; the building was to be adjacent to the proposed West Side stadium. See id.; Shine Decl. ¶ 5.

During the first half of October 1999, Shine developed a preliminary model for his design, which he refers to as "Shine '99" for the purposes of this litigation.^[1] Plaintiff describes Shine '99 as a tower that tapers as it rises, with "two straight, parallel, roughly triangular sides, connected by two twisting facades, resulting in a tower whose top [is] in the shape of a parallelogram." (Compl.¶ 9) See id. Ex. A, pp. 1-4 (photographs of Shine '99); see also App. One.

By the end of the fall 1999 semester, Shine had developed a more sophisticated model of his design, entitled "Olympic Tower." Shine describes this structure as "a twisting tower with a symmetrical diagonal column grid, expressed on the exterior of the building, that follows the twisting surface created by the floor plates' geometry." (Id. ¶ 10) According to Shine, the column grid he designed gives rise to "an elongated diamond pattern, supporting a textured curtain wall with diamonds interlocking and protruding to create a crenelated appearance." (Id.) See id. Ex. B, pp. 1-9 (photographs of various models and sketches of Olympic Tower and its design elements); see also App. Two.

On or about December 9, 1999, Shine presented his designs for Olympic Tower to a jury of experts invited by the Yale School of Architecture to evaluate and critique its students' work. During a 30-minute presentation to the panel, Shine explained his tower's structural design, and displayed different structural and design models (including Shine '99), renderings, floor plans, elevations, sections, a site plan, and a photomontage giving a visual impression of the tower's exterior. (Shine Decl. ¶¶ 7-9) Defendant Childs was on the panel, and he praised Olympic Tower during the presentation, as did the other luminaries^[2] evaluating Shine's work. When the review was completed, Shine was applauded by the jury and other visitors, which, according to Shine, is "highly unusual" at a student's final review. (Shine Decl. ¶ 10) After the presentation, Childs approached Shine, complimented Shine's color pencil rendering of Olympic Tower, and invited Shine to visit after his graduation. See Compl. ¶ 11; Shine Decl. ¶ 10.

[606] Childs' favorable reaction to Olympic Tower was also documented in Retrospecta, an annual alumni magazine^[3] published by the Yale School of Architecture featuring selected works by the school's current students. The 1999-2000 edition of Retrospecta featured a large composite photographic rendering of Olympic Tower set against an imaginary New York sunset, in addition to smaller inset photographs of two of Shine's models of the tower. Favorable comments from the panel members were printed next to the photographic rendering, including the following compliment from Childs: "It is a very beautiful shape. You took the skin and developed it around the form — great!" (Compl.Ex. C) Shine does not allege that he had any contact with Childs after the December 1999 panel evaluation. However, he does claim that Childs' design for the Freedom Tower, unveiled four years later, infringed Shine '99 and Olympic Tower.

Childs did not begin work on the Freedom Tower until summer 2003. In order to choose the best possible design for the rebuilt WTC, the Lower Manhattan Development Corporation and the Port Authority of New York and New Jersey held an architectural competition in 2002 and 2003, in search of a master WTC site plan. In February 2003, Studio Daniel Libeskind's plan entitled "Memory Foundations" was selected as the winning design. See Suzanne Stephens, Imagining Ground Zero: Official and Unofficial Proposals for the World Trade Center Site 11, 28-29 (2004). In summer 2003, WTC developer Larry Silverstein asked Childs, who is a Consulting Design Partner at SOM, to begin working as design architect and project manager for the tallest building at the proposed new WTC site as conceptualized by Libeskind — the building that later would be called the Freedom Tower. Id. at 29. Libeskind was to serve as collaborating architect during the initial concept and schematic design phases. Id. at 32. In spite of what was described as a "difficult marriage" between Childs and Libeskind, see id. at 29, a design for the Freedom Tower was completed within six months, and was presented to the public at a press conference at Federal Hall in lower Manhattan on December 19, 2003. See id. at 32; Compl. ¶ 17; Durschinger Aff. ¶ 34. At this presentation, SOM and Childs displayed six large computer-generated images of the Freedom Tower, see Stephens at 34-35; two scale models of the Tower, see Durschinger Aff. Exs. N, O, and P; and a computer slide show detailing the Tower's design principles, see Durschinger Aff. Ex. Q. They also distributed a press packet containing six images of the proposed Tower, see id. Ex. R; see also App. Three.

As described by Shine, this version of the Freedom Tower "tapers as it rises and has two straight, parallel, roughly triangular facades on opposite sides, with two twisting facades joining them." (Compl.¶ 18) Shine alleges that this design is substantially similar to the form and shape of Shine '99, and that it incorporates a structural grid identical to the grid in Olympic Tower, as well as a facade design that is "strikingly similar" to the one in Olympic Tower. (Id.) Apparently, others at the Yale School of Architecture noticed the similarity between the Freedom Tower and Shine's design: According to plaintiff's expert, Yale Professor James Axley, several days after Childs unveiled the design for the Freedom Tower, one of Shine's original models for Olympic Tower "was retrieved [607] from archival storage and placed on the desk of the Dean of the School of Architecture." (Axley Decl. ¶ 7)

Shine registered Olympic Tower as an architectural work with the U.S. Copyright Office on March 30, 2004 (Compl.Ex. E), and did the same for Shine '99 on June 24, 2004 (id. Ex. D). He filed the Complaint in this action on November 8, 2004, claiming that defendants copied his designs without his permission or authorization, and stating that defendants distributed and claimed credit for his designs "willfully and with conscious disregard" for his rights in his copyrighted works. (Id. ¶ 22)

Shine requests an injunction to prevent further infringement by defendants, as well as actual damages and defendants' profits realized by their infringement. (Id. ¶¶ 27-28) Defendants move to dismiss the Complaint, or alternatively for summary judgment, claiming that Shine's works are not original and not worthy of protection, and further arguing that there is no substantial similarity between either work and the Freedom Tower.

It should be noted that in June 2005, after law enforcement authorities, among others, objected to the Freedom Tower's original design,^[4] Childs, SOM, and Libeskind unveiled a substantially redesigned version of the Tower. The alleged infringing design apparently has been scrapped and is unlikely to be constructed. The new version has, at least to this court's untrained eye, little similarity to either of Shine's copyrighted works, and the court assumes that Shine makes no claim that it infringes his works. Because the alleged infringing design may never be constructed, Shine's actual damages in this action may be reduced, and he may be unable to show the need for an injunction. But because defendants' original design for the Freedom Tower remains in the public domain, Shine's infringement claim stands.

Defendants have moved under Fed.R.Civ.P. 12(b)(6) to dismiss the Complaint, or alternatively, for summary judgment under Fed.R.Civ.P. 56. Because plaintiff has treated the motion as one for summary judgment, see Pl. Br. at 11, and because both parties have submitted materials outside the Complaint that the court has found helpful, the court will consider those materials, and apply summary judgment standards. In assessing whether a genuine issue of material fact remains to be tried, the court will view the facts in the light most favorable to the nonmoving party. SCS Communications, Inc. v. Herrick Co., 360 F.3d 329, 338 (2d Cir.2004).

II.

To prevail, plaintiff must prove "`(1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.'" Williams, 84 F.3d at 587 (quoting Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 113 L.Ed.2d 358 (1991)). To prove copying of original elements of his work, in addition to showing originality, plaintiff must demonstrate both that defendants actually copied his works, and that such copying was illegal because there is substantial similarity between each of his works and the alleged infringing work — the Freedom Tower. Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir.1995).

Defendants argue first that neither Shine '99 nor Olympic Tower qualifies as an architectural work under the Copyright Act. They argue also that both designs are unoriginal and functional, and therefore unworthy of whatever copyright protection [608] they currently have. Finally, assuming that plaintiff's copyrights are valid, defendants deny that they copied plaintiff's designs, and assert that there is no substantial similarity between plaintiff's designs and the Freedom Tower. Plaintiff counters that Shine '99 and Olympic Tower are each original, copyrightable designs, that defendants actually copied each work, and that the Freedom Tower is substantially similar to each in different ways.

A. Architectural Works Under the Copyright Act

Prior to 1990, the United States did not allow structures to be copyrighted, except those few that did not serve any utilitarian purpose. See 1 Nimmer on Copyright § 2.20[A]. However, in 1989, the United States became a party to the Berne Convention for the Protection of Literary and Artistic Works, which required protection for "`three dimensional works relative to ... architecture.'" See id. (quoting Berne Convention for the Protection of Literary and Artistic Works, revised at Paris, July 24, 1971, art. 2, 828 U.N.T.S. 221). Membership in the Berne Convention required the United States to protect works of architecture; therefore, in 1990, Congress amended the Copyright Act, adding the Architectural Works Copyright Protection Act (AWCPA), which included architectural works as a new category of copyrightable material.

The AWCPA defines an architectural work as:

the design of a building as embodied in any tangible medium of expression, including a building, architectural plans, or drawings. The work includes the overall form as well as the arrangement and composition of spaces and elements in the design, but does not include individual standard features.

17 U.S.C. § 101. Defendants cite various portions of the legislative history of the AWCPA to argue that Shine's models are not architectural works meriting copyright protection. They claim that Shine's works are preliminary or conceptual, and do not meet the standard of a "design of a building." They argue also that plans for the "design of a building" may be protected only if a building actually could be constructed from the plans.

Defendants cite no cases to support their reading of the AWCPA. The statute nowhere states or implies that only designs capable of construction are worthy of protection. Although our Circuit has not specifically articulated the standard by which an architectural design is to be evaluated under the Copyright Act, when considering pictorial, graphic, and sculptural (PGS) works, also protected by the Act, see 17 U.S.C. § 101, it has twice noted that plans or designs not sufficiently detailed to allow for construction still may be protected. See Attia v. Soc'y of the N.Y. Hosp., 201 F.3d 50, 57 (2d Cir.1999) ("[W]e do not mean to suggest that, in the domain of copyrighted architectural depictions, only final construction drawings can contain protected expression."); Sparaco v. Lawler, Matusky & Skelly Eng'rs LLP, 303 F.3d 460, 469 (2d Cir.2002) ("We do not mean to imply that technical drawings cannot achieve protected status unless they are sufficiently complete and detailed to support actual construction."). This reasoning should apply equally to architectural works, because our Circuit also has held that "`[i]n general, architectural works are subject to the same standards that apply to other copyrightable works.'" Attia, 201 F.3d at 53 n. 3 (quoting 1 Nimmer § 2.20[A]). It is true that "generalized ideas and concepts pertaining to the placement of elements, traffic flow, and engineering strategies," or in other words, "ideas and concepts," are not worthy of protection. Id. at 57. However, once a design includes "specific expression and [609] realization of ... ideas," copying constitutes infringement. Sparaco, 303 F.3d at 469; cf. Peter Pan Fabrics, Inc. v. Martin Weiner Corp., 274 F.2d 487, 489 (2d Cir.1960) ("[N]o principle can be stated as to when an imitator has gone beyond copying the `idea' and has borrowed its `expression.' Decisions must therefore inevitably be ad hoc.") (L.Hand, J.).

Both Shine '99 and Olympic Tower are worthy of protection under the AWCPA. Shine '99 is a scale model of a twisting tower: Two of the tower's sides are smooth and taper straight toward the top creating a roughly triangular shape; the other two sides twist and taper as they rise, and one of those sides features four graded setbacks or levels that narrow as the tower rises. The top of the tower forms a parallelogram. See Compl. Ex. A, pp. 1-4; Shine Decl. ¶ 18. Shine '99, although certainly a rough model, is more than a concept or an idea; it is a distinctive design for a building. As explained above, whether a tower actually could be constructed from this model is irrelevant. Defendants argue that the shape and form of Shine '99 are so rudimentary and standard that protecting it would be akin to protecting a particular geometric shape, such as "an ellipse, a pyramid, or an egg." (Def. Br. at 28) However, the AWCPA protects "the design of a building as embodied in any tangible medium of expression ... [including] the overall form as well as the arrangement and composition of spaces and elements in the design...." 17 U.S.C. § 101. Individual arguably "standard" elements of Shine '99, such as its twist or its setbacks, might not be worthy of protection, but the arrangement and composition of the various elements in the model do at least arguably constitute the "design of a building" under the AWCPA.

The same is true for Olympic Tower, which is a much more intricate and detailed design than Shine '99. The copyrighted Olympic Tower materials include two models of the tower, one of the building's internal supports and one of its external appearance. Both models show that the building twists on all four sides; comparing the models reveals that the internal diamond-shaped grid supporting the tower is reflected and repeated in the external "skin" on its facade — a design that Childs commented on during his evaluation of Shine's work. See Compl. Ex. B, pp. 2-6; Ex. C. Shine also copyrighted elevation sketches of the tower to display the building's core at different levels, see id. Ex. B, pp. 7-8, a photomontage of what the building might look like against the New York sky, see id. Ex. B. p. 1, as well as what appears to be a sketch of the undulating triangular grid design for the exterior, of the building, see id. Ex. B, p. 9. The detailed and specific materials Shine copyrighted for Olympic Tower certainly constitute the "design of a building," and qualify it as an architectural work under the AWCPA.

B. Originality

Defendants next claim that neither Shine '99 nor Olympic Tower is sufficiently original to warrant protection under the AWCPA. Using the House Committee Report on the AWCPA as their guide, defendants argue for a two-step analysis of the originality and functionality of an architectural work: First, the House Report noted, the work in question should be examined for the presence of original design elements. If such elements exist and are not functionally required, the Report concluded, then the work is protectable. (Def. Br. at 31) Following this framework, defendants argue that no single part of Shine's work is original; that any parts that might be original are functionally required to support its design and therefore unprotectable; and that the arrangement [610] of the various design elements featured in Shine's work is a compilation not meriting protection under existing law.

In this analysis, defendants fly high and fast over the large body of Supreme Court and Second Circuit case law on originality and copyright infringement, as well as the text of the AWCPA, which states that "the overall form as well as the arrangement and composition of spaces and elements in the design" of an architectural work may be the subject of a valid copyright. 17 U.S.C. § 101. First, defendants fail to acknowledge that plaintiff's "certificates of [copyright] registration constitute prima facie evidence of the validity not only of their copyrights, but also of the originality of [the] works." Boisson v. Banian, Ltd., 273 F.3d 262, 268 (2d Cir.2001); see also 17 U.S.C. § 410(c) (a copyright registration certificate, when issued within five years of the first publication of the work, is prima facie evidence of ownership of a valid copyright). It is also true, however, that originality is "the sine qua non of copyright," Feist, 499 U.S. at 345, 111 S.Ct. 1282, and if a work is not original, then it is not protectable. If a certain element within a work is not original, that element is not protectable "even if other elements, or the work as a whole, warrant protection." Boisson, 273 F.3d at 268.

Plaintiff need not clear a high bar in order for his architectural works to qualify as original:

In the copyright context, originality means the work was independently created by its author, and not copied from someone else's work. The level of originality and creativity that must be shown is minimal, only an "unmistakable dash of originality need be demonstrated, high standards of uniqueness in creativity are dispensed with."

Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 764-65 (2d Cir.1991) (quoting Weissmann v. Freeman, 868 F.2d 1313, 1321 (2d Cir.1989)); see also Gaste v. Kaiserman, 863 F.2d 1061, 1066 (2d Cir.1988) (describing the requirement of originality as "little more than a prohibition of actual copying") (internal quotation marks omitted). Additionally, our Circuit has held that "a work may be copyrightable even though it is entirely a compilation of unprotectible elements." Knitwaves, 71 F.3d at 1003-04.

If the court followed defendants' suggestion and analyzed the elements of plaintiff's works separately, comparing only those elements that are copyrightable to those present in the designs for the Freedom Tower, as our Circuit noted, "we might have to decide that there can be no originality in a painting because all colors of paint have been used somewhere in the past." Id. at 1003 (internal quotation marks omitted); see also, e.g., Covington Indus., Inc. v. Nichols, No. 02 Civ. 8037, 2004 WL 784825, *3, 2004 U.S. Dist. LEXIS 6210, at *8-*11 (S.D.N.Y. Apr. 12, 2004) (holding that although neither vertical nor horizontal stripes, nor individual colors, nor the practice of basket weaving was original, the total concept of plaintiff's design for a colored, striped basket was original); Sunham Home Fashions, LLC v. Pem-America, Inc., No. 02 Civ. 6284, 2002 WL 31834477, *5, 2002 U.S. Dist. LEXIS 24185, *18-*19 (S.D.N.Y. Dec. 17, 2002) ("Although the idea of a plaid or floral pattern may not of its own be original, the patterns' sizes, shapes, arrangements and colors taken together are original and copyrightable.").

Following this analysis, both Shine '99 and Olympic Tower at least arguably are protectable and original. It is true that, as defendants' expert points out, twisting towers have been built before. Towers with diamond-windowed facades have been built before. Towers with support grids [611] similar to the one in Olympic Tower have been built before. Towers with setbacks have been built before. But defendants do not present any evidence that the particular combinations of design elements in either Shine '99 or Olympic Tower are unoriginal.^[5] These works each have at least the mere "dash of originality" required for copyrightability, not to mention that they both have been copyrighted, and therefore are prima facie original.

Defendants argue also that any original aspect of Olympic Tower's facade is functionally required by the support grid utilized by Shine, and therefore unprotectable. See Meier Aff. ¶¶ 19-22, 39-40; Def. Br. at 33. However, Shine's expert disputes this contention. See Axley Decl. ¶ 10. Therefore, even if certain of the original design elements of Olympic Tower are dictated by functionality and therefore not copyrightable — a proposition for which there is no apparent support in the case law or the AWCPA — a material issue of fact on this matter remains for trial.

C. Infringement

To prove infringement,

[a] plaintiff must first show that his or her work was actually copied. Copying may be established either by direct evidence of copying, or by indirect evidence, including access to the copyrighted work, similarities that are probative of copying between the works, and expert testimony. If actual copying is established, a plaintiff must then show that the copying amounts to an improper appropriation by demonstrating that substantial similarity to protected material exists between the two works.

Laureyssens v. Idea Group, Inc., 964 F.2d 131, 140 (2d Cir.1992); see also Tufenkian Import/Export Ventures, Inc. v. Einstein Moomjy, Inc., 338 F.3d 127, 131 (2d Cir.2003).

1. Actual Copying

As explained above, unless the rare situation exists where plaintiff has direct proof that defendants copied his work, plaintiff may prove actual copying by showing that defendants had access to his copyrighted works, and that similarities that suggest copying exist between the protected works and the alleged infringing work. Cf. Castle Rock Entm't v. Carol Publ'g Group, 150 F.3d 132, 137 (2d Cir.1998) ("`[P]robative,' rather than `substantial' similarity is the correct term in referring to the plaintiff's initial burden of proving actual copying by indirect evidence. It is only after actual copying is established that one claiming infringement then proceeds to demonstrate that the copying was improper or unlawful by showing that the second work bears `substantial similarity' to protected expression in the earlier work.") (internal citations omitted); see also 4 Nimmer § 13.03[B].^[6]

For the purposes of this motion, defendants concede that Childs had access to both Shine '99 and Olympic Tower when he evaluated them as part of the expert jury at the Yale School of Architecture in December 1999. (Def. Br. at 38) Therefore, [612] all that plaintiff must prove to show actual copying in this action is probative similarity between his works and the Freedom Tower. The court may consider expert testimony when assessing probative similarity, see Laureyssens, 964 F.2d at 140. Given the substantial disagreement between plaintiff's expert Axley and defendants' expert Meier on the alleged similarity between Olympic Tower and the Freedom Tower, compare Axley Decl. ¶¶ 21-24 with Meier Aff. ¶¶ 32-41, and that these experts' views are, at least to the court's untrained eye, plausible, there is at least an issue of material fact remaining for trial as to the probative similarity between those two works.

However, plaintiff's expert Axley does not comment on whether any similarity exists between Shine '99 and the Freedom Tower. According to plaintiff, "the shape of Freedom Tower is remarkably similar to the shape of Shine '99" because both towers have two straight parallel walls and two twisting walls. (Shine Decl. ¶ 18) Shine claims that the four setbacks on one side of Shine '99 were "intended as an alternative approach to the form of the twisting sides." (Id.) Whether they were so intended or not, these setbacks are a distinctive feature of the model which bear no resemblance to any feature of the Freedom Tower. Even imagining Shine '99 with four smooth sides, there are still no similarities between Shine '99 and the Freedom Tower that are probative of actual copying. Both towers twist as they rise, but as defendants' expert points out with ample evidence, see Meier Aff. Exs. D, G, the idea of a twisting tower with a rectangular base and parallel sides is by no means unique. There is no evidence to suggest that Childs would have thought of the idea of a twisting tower only by viewing Shine '99. Plaintiff's own expert could not find similarities between Shine '99 and the Freedom Tower substantial enough to warrant comment. Other than that Childs had access to the design, there is no evidence to suggest that defendants actually copied the form or shape of Shine '99. Therefore, no material issue of fact regarding the probative similarity of Shine '99 and the Freedom Tower remains for trial, and defendant's motion for summary judgment as to Shine '99 is granted.

2. Substantial Similarity

Because there is at least an issue of material fact as to whether defendants actually copied Shine's design for Olympic Tower, the court now must determine whether reasonable jurors could find that substantial similarity exists between Olympic Tower and the Freedom Tower. Our Circuit has not yet had occasion to compare the substantial similarity of a copyrighted architectural work such as Olympic Tower to an alleged infringing work, so it is not entirely clear which standard the court should use for the comparison.^[7]

However, "total concept and feel" is the dominant standard used to evaluate substantial similarity between artistic works in our Circuit, and that standard is the most appropriate one in this case. See id. (noting that "[i]n recent years we have found it productive to assess claims of inexact-copy infringement by comparing the contested design's `total concept and overall feel' with that of the allegedly infringed work," and applying this test to compare two carpet designs); Boisson, 273 F.3d at 272 (using the "total concept and feel" test to compare to quilt designs and [613] noting that substantial similarity has "always" been guided by this test); Knitwaves, 71 F.3d at 1003 (applying the "total concept and feel" test to compare two different designs on sweaters); Laureyssens, 964 F.2d at 141 (using overall aesthetic appeal test to compare two foam rubber puzzles); see also Sturdza, 281 F.3d at 1296 (comparing two architectural works and holding that "[t]he substantial similarity determination requires comparison not only of the two works' individual elements in isolation, but also of their `overall look and feel.'" (quoting Boisson, 273 F.3d at 266)).

Defendants argue that court should apply the test set forth in Computer Assocs. Int'l, Inc. v. Altai, 982 F.2d 693 (2d Cir.1992) to compare the two complex architectural works here. In Altai, the court was asked to determine whether one computer program infringed another, and in doing so, it devised a new test for determining substantial similarity in that context. The Court described its test as follows:

In ascertaining substantial similarity under this approach, a court would first break down the allegedly infringed program into its constituent structural parts. Then, by examining each of these parts for such things as incorporated ideas, expression that is necessarily incidental to those ideas, and elements that are taken from the public domain, a court would be able to sift out all non-protectable material. Left with a kernel, or possibly kernels, of creative expression after following this process of elimination, the court's last step would be to compare this material with the structure of an allegedly infringing program. The result of this comparison will determine whether the protectable elements of the programs at issue are substantially similar so as to warrant a finding of infringement.

Id. at 706. However, as noted above in the discussion of originality, the AWCPA protects the "overall form as well as the arrangement and composition of spaces and elements in the design" of architectural works. 17 U.S.C. § 101. If the court were to follow the Altai analysis and separate out only those "kernels" of expression that would qualify as original, that, as our Circuit has held, "would result in almost nothing being copyrightable because original works broken down into their composite parts would usually be little more than basic unprotectible elements like letters, colors, and symbols." Boisson, 273 F.3d at 272.

Our Circuit noted recently that some commentators have worried that "`the total concept and feel' standard may `invite an abdication of analysis,' because `feel' can seem `a wholly amorphous referent.'" Tufenkian, 338 F.3d at 134 (quoting 4 Nimmer § 13.03[A][1][c]). But the Court added that the total concept and feel test was not "so incautious," because where it has been applied, courts have taken care to identify "precisely the particular aesthetic decisions — original to the plaintiff and copied by the defendant — that might be thought to make the designs similar in the aggregate." Id. The Court explained further that

while the infringement analysis must begin by dissecting the copyrighted work into its component parts in order to clarify precisely what is not original, infringement analysis is not simply a matter of ascertaining similarity between components viewed in isolation. For the defendant may infringe on the plaintiff's work not only through literal copying of a portion of it, but also by parroting properties that are apparent only when numerous aesthetic decisions embodied in the plaintiff's work of art — the excerpting, modifying, and arranging of public domain compositions, if [614] any, together with the development and representation of wholly new motifs and the use of texture and color, etc. — are considered in relation to one another. The court, confronted with an allegedly infringing work, must analyze the two works closely to figure out in what respects, if any, they are similar, and then determine whether these similarities are due to protected aesthetic expressions original to the allegedly infringed work, or whether the similarity is to something in the original that is free for the taking.

Id. at 134-35. Although this analysis was applied to carpet designs, it also is appropriate for architectural works, because the AWCPA protects the "overall form" of architectural designs in addition to their individual copyrightable elements.

The court has already found that, even though several of its component parts may not be original, the composite design of Olympic Tower is at least arguably unique and original. See supra Part III.B. Now the court must determine whether, examining the "total concept and feel" of both works, there is an issue of material fact as to whether the design of the Freedom Tower infringes on any of the original aesthetic expressions of the Olympic Tower.

This task presents the question of the point of view from which the "concept and feel" substantial similarity analysis should be conducted. Defendants argue that the analysis should be conducted with the aid of expert testimony, but they cite no Second Circuit authority for this proposition.^[8] It seems odd that defendants would advocate such a test, because there is significant disagreement between the respective parties' two highly qualified experts regarding the substantial similarity of Olympic Tower and the Freedom Tower. According to the experts, many issues of material fact remain in dispute as to total concept and feel. If the court were to adopt defendants' suggestion and consider expert testimony in its analysis of substantial similarity, it would have no choice but to deny summary judgment on the issue.

However, the Second Circuit has long held that substantial similarity should be determined not with the help of or solely by experts in the relevant field, but from the perspective of the ordinary observer:

The plaintiff's legally protected interest is not, as such, his reputation ... but his interest in the potential financial returns from his [work] which derive from the lay public's approbation of his efforts. The question, therefore, is whether defendant took from plaintiff's works so much of what is pleasing to the ... lay [public] ... that defendant wrongfully appropriated something which belongs to the plaintiff.

Arnstein v. Porter, 154 F.2d 464, 473 (2d Cir.1946) (footnotes omitted). Because the lay public's approbation usually is the foundation of returns that derive from a copyrighted work, an allegedly infringing work is considered substantially similar to a copyrighted work if "the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same." Folio Impressions, 937 F.2d at 765.

[615] Our Circuit refined the ordinary observer test in cases where certain aspects of the copyrighted work are taken directly from the public domain, and applied a "more discerning" ordinary observer test. "What must be shown is substantial similarity between those elements, and only those elements, that provide copyrightability to the allegedly infringed compilation." Key Publ'ns, Inc. v. Chinatown Today Publ'g Enters., Inc., 945 F.2d 509, 514 (2d Cir.1991). However, this "more discerning" ordinary observer test must be applied in conjunction with the "total concept and feel" test, so as not to deny protection to works that have combined unoriginal elements in a unique and copyrightable fashion, as is at least arguably true here. Boisson, 273 F.3d at 272-73; see also Williams, 84 F.3d at 590 ("[A] scattershot approach cannot support a finding of substantial similarity because it fails to address the underlying issue: whether a lay observer would consider the works as a whole substantially similar to one another."). Noting the difficulty of applying the "more discerning ordinary observer" test to the "total concept and feel" evaluation, the Boisson Court counseled that with all of the above concepts in mind, the court's substantial similarity analysis ultimately should be guided by "common sense." 273 F.3d at 273.

With these principles in mind, the court finds that reasonable ordinary observers could disagree on whether substantial similarity exists between the Freedom Tower and Olympic Tower. Defendants present several photographic comparisons between the two structures in their Reply Memorandum. See Def. Reply Br. at 12, 18, 21, and 24. Although defendants offer these comparisons to point out what they claim are significant differences between the two towers, "[i]t has long been settled that `no plagiarist can excuse the wrong by showing how much of his work he did not pirate.'" Tufenkian, 338 F.3d at 132 (quoting Sheldon v. Metro-Goldwyn Pictures Corp., 81 F.2d 49, 56 (2d Cir.1936) (L.Hand, J.)). Any lay observer examining the two towers side by side would notice that: (1) each tower has a form that tapers and twists as it rises, (2) each tower has an undulating, textured diamond shaped pattern covering its facade, and (3) the facade's diamond pattern continues to and concludes at the foot of each tower, where one or more half diamond shapes open up and allow for entry. These combination of these elements gives the two towers a similar "total concept and feel" that is immediately apparent even to an untrained judicial eye.

It is possible, even likely, that some ordinary observers might not find the two towers to be substantially similar because, as defendants note, there are differences between the Freedom Tower and Olympic Tower, including, inter alia, the number of sides of each tower that twist (the Freedom Tower's two versus Olympic Tower's four); the direction of each tower's twist (the Freedom Tower twists clockwise and Olympic Tower twists counterclockwise); the shape of each tower's ground floor (the Freedom Tower is a parallelogram and Olympic Tower is a square); and the various contrasting details of each tower's entrance and facade. See Def. Reply Br. at 11-24; see also Warner Bros., Inc. v. Am. Broad. Cos., 654 F.2d 204, 211 (2d Cir.1981) ("[W]hile `no plagiarist can excuse the wrong by showing how much of his work he did not pirate,' a defendant may legitimately avoid infringement by intentionally making sufficient changes in a work which would otherwise be regarded as substantially similar to that of the plaintiff's.") (quoting Sheldon, 81 F.2d at 56). However, it also is possible that a lay observer, applying the total concept and feel test, might find that the Freedom Tower's twisting shape and undulating diamond-shaped facade make it substantially similar to Olympic Tower, and therefore [616] an improper appropriation of plaintiff's copyrighted artistic expression.

Because reasonable jurors could disagree as to the substantial similarity between Olympic Tower and the Freedom Tower, defendants' motion for summary judgment as to plaintiff's claims regarding Olympic Tower is denied.

* * * * * *

For the foregoing reasons, defendants' motion for summary judgment regarding plaintiff's claim that the Freedom Tower infringed upon his copyrighted architectural work Shine '99 is granted. Defendants' motion for summary judgment regarding plaintiff's claim that the Freedom Tower infringed upon his copyrighted architectural work Olympic Tower is denied.

SO ORDERED.

[1] The Complaint states that plaintiff began designing Shine '99 on or about "October 1, 1997." However, because the rest of the Complaint refers only to events occurring in 1999, this reference to 1997 appears to be a typographical error.

[2] In addition to Childs and Shine's professor Cesar Pelli, the jury included Yale professor and urban planner Alexander Garvin, architecture writer and critic Paul Goldberger, and Robert A.M. Stern, dean of the Yale School of Architecture. (Shine Decl. ¶ 6)

[3] Because Childs is an alumnus of the Yale School of Architecture, he presumably received a copy of this issue of Retrospecta. However in his Answer, Childs denies that he ever saw a copy of the issue referenced by Shine in the Complaint. (Durschinger Aff. Ex. D, ¶ 12)

[4] See Glenn Collins, A Freedom Tower Restarted From Scratch, The New York Times, July 10, 2005.

[5] None of the designs defendants indicate as evidence of the unoriginality of Shine's works bear any significant resemblance to either Shine '99 or Olympic Tower. See Meier Aff. Exs. E.2, E.5, J, L.

[6] The phrase "probative similarity" is used to distinguish this stage of infringement analysis from "substantial similarity," which is examined only after actual copying is shown. The idea of probative similarity was first suggested in a law review article, and later adopted by our Circuit. See Alan Latman, "Probative Similarity" as Proof of Copying: Toward Dispelling Some Myths in Copyright Infringement, 90 Colum. L.Rev. 1187 (1990); Laureyssens, 964 F.2d at 140.

[7] In two recent cases where it analyzed the resemblance between copyrighted PGS works and structures, the Court generally discussed the similarities between the copyrighted materials and the alleged infringing works, but did not utilize a specific procedure for these comparisons. See Sparaco, 303 F.3d at 467-70; Attia, 201 F.3d at 56-58.

[8] Defendants note that the Altai Court granted discretion to district courts to allow expert testimony in evaluating the substantial similarity of computer programs. However, they cite no case where a court has actually utilized such testimony, either to examine computer programs or any other copyrighted material. See Def. Br. at 44 (citing Altai, 982 F.2d at 713). Indeed, the Altai Court noted that its decision to allow expert testimony on the substantial similarity of computer programs was not intended "to disturb the traditional role of lay observers in judging substantial similarity in copyright cases that involve the aesthetic arts, such as music, visual works or literature." Altai, 982 F.2d at 713-14.

Larry Zerner (argued), Law Offices of Larry Zerner, Los Angeles, California; Edwin F. McPherson and Tracy B. Rane, McPherson Rane LLP, Los Angeles, California, for Defendant-Appellant.

James D. Weinberger (argued), Roger L. Zissu, and Leo Kittay, Fross Zelnick Lehrman & Zissu, P.C., New York, New York; J. Andrew Coombs, J. Andrew Coombs, A Professional Corporation, Glendale, California, for Plaintiff-Appellee.

Before: Michael J. Melloy,^[1] Jay S. Bybee, and Sandra S. Ikuta, Circuit Judges.

Opinion by Judge Ikuta

OPINION

IKUTA, Circuit Judge.

We are asked to decide whether defendant Mark Towle infringed DC Comics' exclusive rights under a copyright when he built and sold replicas of the Batmobile, as it appeared in the 1966 television show Batman and the 1989 film BATMAN. Holy copyright law, Batman!

I

DC Comics (DC) is the publisher and copyright owner of comic books featuring the story of the world-famous character, Batman. Since his first comic book appearance in 1939, the Caped Crusader has protected Gotham City from villains with the help of his sidekick Robin the Boy Wonder, his utility belt, and of course, the Batmobile.

Originally introduced in the Batman comic books in 1941, the Batmobile is a fictional, high-tech automobile that Batman employs as his primary mode of transportation. The Batmobile has varied in appearance over the years, but its name and key characteristics as Batman's personal crimefighting vehicle have remained consistent. Over the past eight decades, the comic books have continually depicted the Batmobile as possessing bat-like external features, ready to leap into action to assist Batman in his fight against Gotham's most dangerous villains, and equipped with futuristic weaponry and technology that is "years ahead of anything else on wheels."

Since its creation in the comic books, the Batmobile has also been depicted in numerous television programs and motion pictures. Two of these depictions are relevant to this case: the 1966 television series Batman, starring Adam West, and the 1989 motion picture BATMAN, starring Michael Keaton.

The 1966 Batman television series was the product of a licensing agreement between DC's predecessor, National Periodical Publications, Inc. (National Periodical) and the American Broadcasting Company (ABC). In 1965, National Periodical entered into a licensing agreement with ABC (the 1965 ABC Agreement) in which it granted ABC "an exclusive license to produce a series of half-hour television programs . . . based upon the literary property consisting of the comic book and comic strip stories entitled `Batman' . . . including the characters therein." This exclusive right included the right to "translate, adapt, [or] arrange" the Batman literary property "to such extent as ABC may desire" in the making of the television programs, and the right to secure copyrights in the television programs produced. The agreement also provided that "[a]ll rights in the property not specifically granted to ABC are hereby reserved to and may be exercised by National at all times during the term of this agreement" except as otherwise expressly stated in the agreement. National Periodical's reserved rights included "[a]ll rights of publication," and the exclusive merchandising rights to all products manufactured or distributed under the name of any character in the Batman comic books.

Under this agreement, ABC (through a series of sublicensing agreements) produced the 1966 television show starring Adam West as Batman. In addition to Batman, Robin, and the use of visual onomatopoeia that flashed on screen during fight scenes—Pow! Boff! Thwack!—the television series featured the Batmobile. The design of the Batmobile did not directly copy any iterations of the Batmobile as it appeared in the comic books. As in the comic books, however, the Batmobile in the 1966 television show maintained a bat-like appearance and was equipped with state-of-the-art weaponry and technology.^[2]

In 1979, DC again licensed its rights in the Batman literary property, this time to Batman Productions, Inc. (BPI). In the agreement (the 1979 BPI Agreement), DC granted BPI the exclusive right to create a motion picture based on the "Property," which was defined to include "[t]he names, titles, fictional locations and fictional conveyances . . . as depicted and contained in the comic magazines [published by DC], which are identifiable with or associated with the fictional character known as `Batman,' such as . . . that certain conveyance known as the `Batmobile.'" The 1979 BPI Agreement also granted BPI the right to "adapt, use, . . . modify, [or] alter . . . the Property" for the purpose of producing the motion picture. Like the 1965 ABC Agreement, the 1979 BPI Agreement provided that "[a]ll rights in the Property not specifically granted to" BPI under the agreement "are reserved to DC and may be exercised by DC at all times without any limitation or restriction whatsover except as specifically set forth herein." These reserved rights included "[a]ll rights of publication in and to the Property," as well as "[a]ll `merchandising rights'" in "products manufactured or distributed under the name of or using a representation of `Batman' or any other character or thing included in the Property . . . or under a name which incorporates any phrase, clause or expression used in DC's comic strips or comic magazines. . . ."

BPI subsequently sub-licensed its rights to Warner Bros., Inc., who eventually (through a number of additional sublicensing agreements) produced the 1989 motion picture BATMAN, starring Michael Keaton as Batman. Like the 1966 television series, the 1989 motion picture featured a Batmobile that was physically distinct from the Batmobile portrayed in the comic books and the 1966 television series. Nonetheless, the Batmobile as portrayed in the motion picture retained a bat-like physical appearance and was again equipped with futuristic technology and crime-fighting weaponry.^[3]

Defendant Mark Towle produces replicas of the Batmobile as it appeared in both the 1966 television show and 1989 motion picture as part of his business at Gotham Garage, where he manufactures and sells replicas of automobiles featured in motion pictures or television programs. Towle concedes that these replicas copy the designs of the Batmobile as depicted on television and in the motion picture, though they do not copy every feature. Towle then sells these vehicles for approximately $90,000 to "avid car collectors" who "know the entire history of the Batmobile." Towle also sells kits that allow customers to modify their cars to look like the Batmobile, as it appeared in the 1966 television show and the 1989 motion picture.

Before DC brought this lawsuit, Towle advertised each replica as the "Batmobile," and used the domain name batmobilereplicas.com to market his business. He also advertised that the replicas included such features as "custom bat insignias, wheel bats, [and a] bat steering wheel," and would attract attention due to the fame of the Batmobile. By his own admission, Towle is not authorized by DC to manufacture or sell any products bearing DC's copyright or trademark.

In May 2011, DC filed this action against Towle, alleging, among other things, causes of action for copyright infringement, trademark infringement, and unfair competition arising from Towle's manufacture and sale of the Batmobile replicas.^[4] Towle denied that he had infringed upon DC's copyright. He claimed that the Batmobile as it appeared in the 1966 television show and 1989 motion picture was not subject to copyright protection. Alternatively, Towle argued that DC did not own the copyright in the Batmobile as it appeared in either production. Towle also asserted the affirmative defense of laches. The parties subsequently filed cross motions for partial summary judgment as to DC's trademark, copyright, and unfair competition claims, and as to Towle's laches defense.

In a published order, the district court granted in part and denied in part DC's motion for summary judgment, and denied Towle's cross motion for summary judgment. DC Comics v. Towle, 989 F. Supp. 2d 948 (C.D. Cal. 2013). First, the district court held that the Batmobile was a character entitled to copyright protection. In reaching this conclusion, the district court made a number of findings. Among other things, it found that the Batmobile "is known by one consistent name that identifies it as Batman's personal vehicle," and, although some of its physical traits have changed over time, several have remained consistent, including its "high-tech gadgets and weaponry," "bat-like motifs," and its jet black color. Additionally, the district court found that the Batmobile is always "depicted as being swift, cunning, strong and elusive," and is even portrayed as a "superhero" and "Batman's sidekick, if not an extension of Batman's own persona."^[5]

Second, the district court held that DC maintained a copyright in the Batmobile as it appeared in both the 1966 television show and the 1989 motion picture based on its ownership of the merchandising rights. Alternatively, the district court concluded that DC owns a copyright in the Batmobile as it appeared in each production because the appearance of the Batmobile in each production was derived from the Batmobile depicted in DC's comic books. Finally, the district court concluded that Towle infringed upon DC's copyright because he copied the Batmobile as it appeared in the 1966 and 1989 productions in his replicas. Accordingly, the district court granted summary judgment on the copyright infringement claim to DC.

The district court also granted summary judgment to DC on Towle's affirmative laches defense to the trademark infringement claim. The court found that Towle admitted that he knew of the Batman property and the various bat emblems and symbols, and did not dispute "that he intentionally copied the designs" of the Batmobile as it appeared in the 1966 television show and 1989 motion picture, which included DC's Batman trademarks. He also intentionally referred to his replicas as "Batmobiles." Therefore, the court concluded that Towle acted in bad faith and intentionally copied DC's trademarks "so as to associate his products with the Batman films and television show."

Finally, the court denied DC's summary judgment motion on Towle's laches defense to the copyright infringement claim because it determined that there was a genuine dispute of fact as to whether Towle was aware that copying the Batmobile as it appeared in the 1966 television show and 1989 motion picture constituted copyright infringement.

After the district court issued its decision, the parties entered into a joint stipulation in which they agreed that the district court would enter a judgment against Towle on DC's copyright infringement and other claims. They also agreed that, except as provided in the stipulation, all claims were to be dismissed with prejudice. The district court entered a judgment consistent with this stipulation on February 22, 2013, and Towle timely appealed.

Because the parties entered into a stipulation that finalized the district court order, we have jurisdiction over this appeal under 28 U.S.C. § 1291. See Dannenberg v. Software Toolworks Inc., 16 F.3d 1073, 1074-75 (9th Cir. 1994).

II

In order to prevail on its claim for copyright infringement, DC must prove that it owns a copyright in the Batmobile as it appeared in the 1966 television series and 1989 movie, and that Towle infringed that copyright by creating unauthorized replicas. See Entm't Research Grp., Inc. v. Genesis Creative Grp., Inc., 122 F.3d 1211, 1217 (9th Cir. 1997).

To the Batmobile!

A

We begin with the question whether the Batmobile, as it appears in the comic books, television series, and motion picture, is entitled to copyright protection. See Ets-Hokin v. Skyy Spirits, Inc., 225 F.3d 1068, 1073 (9th Cir. 2000). In the context of copyright law, where, as here, "the question requires us to consider legal concepts in the mix of fact and law and to exercise judgment about the values that animate legal principles, . . . the question should be classified as one of law and reviewed de novo." Harper House, Inc. v. Thomas Nelson, Inc., 889 F.2d 197, 201 (9th Cir. 1989).

Courts have recognized that copyright protection extends not only to an original work as a whole, but also to "sufficiently distinctive" elements, like comic book characters, contained within the work. Halicki Films, LLC v. Sanderson Sales & Mktg., 547 F.3d 1213, 1224 (9th Cir. 2008). Although comic book characters are not listed in the Copyright Act, we have long held that such characters are afforded copyright protection. See Walt Disney Productions v. Air Pirates, 581 F.2d 751 (9th Cir. 1978). In Air Pirates, for instance, we considered a number of subversive comic books that portrayed well-known Disney characters as being active participants in "a free thinking, promiscuous, drug ingesting counterculture." Id. at 753. In holding that the Disney characters were copyrightable (and that Disney's copyright in those characters had been infringed), we distinguished a prior decision suggesting that literary "characters ordinarily are not copyrightable," id. at 755 (citing Warner Bros. Pictures, Inc. v. Columbia Broad. Sys., Inc., 216 F.2d 945 (9th Cir. 1954)), on the grounds that a comic book character "has physical as well as conceptual qualities" and "is more likely to contain some unique elements of expression" than a purely literary character. Id.^[6] (citing Detective Comics, Inc. v. Bruns Publications Inc., 111 F.2d 432 (2d Cir. 1940) (holding that comic book characters are copyrightable); Fleischer Studios v. Freundlich, 73 F.2d 276 (2d Cir. 1934) (same); King Features Syndicate v. Fleischer, 299 F. 533 (2d Cir. 1924) (same)). We subsequently held that characters in a television series or a motion picture may also be entitled to copyright protection. See Olson v. National Broadcasting Co., 855 F.2d 1446 (9th Cir. 1988).

Not every comic book, television, or motion picture character is entitled to copyright protection. We have held that copyright protection is available only "for characters that are especially distinctive." Halicki, 547 F.3d at 1224. To meet this standard, a character must be "sufficiently delineated" and display "consistent, widely identifiable traits." Rice v. Fox Broadcasting Co., 330 F.3d 1170 (9th Cir. 2003) (citing Toho Co., Ltd. v. William Morrow & Co., Inc., 33 F. Supp. 2d 1206, 1215 (C.D. Cal.1998) (Godzilla)). A masked magician "dressed in standard magician garb" whose role "is limited to performing and revealing the magic tricks," for example, is not "an `especially distinct' character differing from an ordinary magician in a manner that warrants copyright protection." Id. Further, characters that have been "lightly sketched" and lack descriptions may not merit copyright protection. Olson, 855 F.2d at 1452-53.

We have previously determined that an automotive character can be copyrightable. See Halicki, 547 F.3d at 1224. In Halicki, we considered whether "Eleanor," a car that appeared in both the original 1971 and 2000 remake motion picture Gone in 60 Seconds, could be entitled to copyright protection as a character. Id. at 1224-25. Considering Eleanor's persistent attributes in both the original and remake of Gone in 60 Seconds, we concluded that Eleanor met some of the key factors necessary to qualify for copyright protection. Id. at 1225. We first noted that Eleanor was more like a comic book character than a literary character given Eleanor's "physical as well as conceptual qualities." Id. We also stated that Eleanor "displays consistent, widely identifiable traits and is especially distinctive." Id. (alteration, citation, and internal quotation marks omitted). We gave several examples of these traits. First, we noted that "[i]n both films, the thefts of the other cars go largely as planned, but whenever the main human character tries to steal Eleanor, circumstances invariably become complicated." Id. Second, we noted that in the original, "the main character says `I'm getting tired of stealing this Eleanor car,'" and in the remake "the main character refers to his history with Eleanor." Id. Despite this evidence of distinctive traits, we were sensitive to the fact that the district court had implied that Eleanor was deserving of copyright protection, but had not directly examined this "fact-intensive issue." Id. Therefore, we remanded the issue to the district court to decide in the first instance. Id.

As indicated in Halicki, a character may be protectable if it has distinctive character traits and attributes, even if the character does not maintain the same physical appearance in every context. As the Eighth Circuit has recognized, "the presence of distinctive qualities apart from visual appearance can diminish or even negate the need for consistent visual appearance." Warner Bros. Entm't, Inc. v. X One X Prods., 644 F.3d 584, 599 n.8 (8th Cir. 2011). For example, in Halicki, Eleanor's ability to consistently disrupt heists by her presence was more pertinent to our analysis of whether the car should qualify as a sufficiently distinctive character than Eleanor's make and model. 547 F.3d at 1225. Indeed, Halicki put no weight on the fact that Eleanor was a customized yellow 1971 Fastback Ford Mustang in one film, and a silver 1967 Shelby GT-500 in another.

Similarly, district courts have determined that James Bond, Batman, and Godzilla are characters protected by copyright, despite their changes in appearance. See Metro-Goldwyn-Mayer, Inc. v. Am. Honda Motor Co., 900 F. Supp. 1287, 1295-96 (C.D. Cal. 1995) (James Bond) (cited with approval in Rice); Toho Co. v. William Morrow & Co., 33 F. Supp. 2d 1206, 1216 (C.D. Cal. 1998) (Godzilla) (cited with approval in Rice); Sapon v. DC Comics, No. 00 CIV. 8992(WHP), 2002 WL 485730, at *3-4 (S.D.N.Y. Mar. 29, 2002) (Batman). In each instance, courts have deemed the persistence of a character's traits and attributes to be key to determining whether the character qualifies for copyright protection. The character "James Bond" qualifies for copyright protection because, no matter what the actor who portrays this character looks like, James Bond always maintains his "cold-bloodedness; his overt sexuality; his love of martinis `shaken, not stirred;' his marksmanship; his `license to kill' and use of guns; his physical strength; [and] his sophistication." Metro-Goldwyn-Mayer, 900 F. Supp. at 1296. Similarly, while the character "Godzilla" may have a different appearance from time to time, it is entitled to copyright protection because it "is always a pre-historic, firebreathing, gigantic dinosaur alive and well in the modern world." Toho Co., 33 F. Supp. 2d at 1216. In short, although James Bond's, Godzilla's, and Batman's "costume and character have evolved over the years, [they have] retained unique, protectable characteristics" and are therefore entitled to copyright protection as characters. Sapon, 2002 WL 485730, at *3-4.

We read these precedents as establishing a three-part test for determining whether a character in a comic book, television program, or motion picture is entitled to copyright protection. First, the character must generally have "physical as well as conceptual qualities." Air Pirates, 581 F.2d at 755. Second, the character must be "sufficiently delineated" to be recognizable as the same character whenever it appears. See Rice, 330 F.3d at 1175. Considering the character as it has appeared in different productions, it must display consistent, identifiable character traits and attributes, although the character need not have a consistent appearance. See Halicki, 547 F.3d at 1224. Third, the character must be "especially distinctive" and "contain some unique elements of expression." Halicki, 547 F.3d at 1224. It cannot be a stock character such as a magician in standard magician garb. Rice, 330 F.3d at 1175. Even when a character lacks sentient attributes and does not speak (like a car), it can be a protectable character if it meets this standard. Halicki, 547 F.3d at 1224.

We now apply this framework to this case. Because (unlike in Halicki) the district court here addressed this question in detail, we consider its factual findings in analyzing this issue. Cf. Halicki, 547 F.3d at 1225. First, because the Batmobile has appeared graphically in comic books, and as a three-dimensional car in television series and motion pictures, it has "physical as well as conceptual qualities," and is thus not a mere literary character. Air Pirates, 581 F.2d at 755.

Second, the Batmobile is "sufficiently delineated" to be recognizable as the same character whenever it appears. See Rice, 330 F.3d at 1175. As the district court determined, the Batmobile has maintained distinct physical and conceptual qualities since its first appearance in the comic books in 1941. In addition to its status as "a highly-interactive vehicle, equipped with high-tech gadgets and weaponry used to aid Batman in fighting crime," the Batmobile is almost always bat-like in appearance, with a bat-themed front end, bat wings extending from the top or back of the car, exaggerated fenders, a curved windshield, and bat emblems on the vehicle. This bat-like appearance has been a consistent theme throughout the comic books, television series, and motion picture, even though the precise nature of the bat-like characteristics have changed from time to time.

The Batmobile also has consistent character traits and attributes. No matter its specific physical appearance, the Batmobile is a "crime-fighting" car with sleek and powerful characteristics that allow Batman to maneuver quickly while he fights villains. In the comic books, the Batmobile is described as waiting "[l]ike an impatient steed straining at the reins . . . shiver[ing] as its super-charged motor throbs with energy" before it "tears after the fleeing hoodlums" an instant later. Elsewhere, the Batmobile "leaps away and tears up the street like a cyclone," and at one point "twin jets of flame flash out with thunderclap force, and the miracle car of the dynamic duo literally flies through the air!"^[7] Like its comic book counterpart, the Batmobile depicted in both the 1966 television series and the 1989 motion picture possesses "jet engine[s]" and flame-shooting tubes that undoubtedly give the Batmobile far more power than an ordinary car. Furthermore, the Batmobile has an ability to maneuver that far exceeds that of an ordinary car. In the 1966 television series, the Batmobile can perform an "emergency bat turn" via reverse thrust rockets. Likewise, in the 1989 motion picture, the Batmobile can enter "Batmissile" mode, in which the Batmobile sheds "all material outside [the] central fuselage" and reconfigures its "wheels and axles to fit through narrow openings."^[8]

Equally important, the Batmobile always contains the most up-to-date weaponry and technology. At various points in the comic book, the Batmobile contains a "hot-line phone . . . directly to Commissioner Gordon's office" maintained within the dashboard compartment, a "special alarm" that foils the Joker's attempt to steal the Batmobile, and even a complete "mobile crime lab" within the vehicle. Likewise, the Batmobile in the 1966 television series possesses a "Bing-Bong warning bell," a mobile Bat-phone, a "Batscope, complete with [a] TV-like viewing screen on the dash," and a "Bat-ray." Similarly, the Batmobile in the 1989 motion picture is equipped with a "pair of forward-facing Browning machine guns," "spherical bombs," "chassismounted shinbreakers," and "side-mounted disc launchers."

Because the Batmobile, as it appears in the comic books as well as in the 1966 television show and 1989 motion picture, displays "consistent, identifiable character traits and attributes," the second prong of the character analysis is met here.

Third, the Batmobile is "especially distinctive" and contains unique elements of expression. In addition to its status as Batman's loyal bat-themed sidekick complete with the character traits and physical characteristics described above, the Batmobile also has its unique and highly recognizable name. It is not merely a stock character.

Accordingly, applying our three-part test, we conclude that the Batmobile is a character that qualifies for copyright protection.

Towle raises two arguments against this conclusion. First, he points out that the Batmobile has at times appeared without its signature sleek "bat-like" features. He notes that in a 1988 comic book rendition, the Batmobile appears as a heavily armored tank with large tires and a rocket launcher. The Batmobile portrayed in the 1989 motion picture could also transform into a Batmissile. As we have noted, however, a consistent appearance is not as significant in our analysis as consistent character traits and attributes. The changes in appearance cited by Towle resemble costume changes that do not alter the Batmobile's innate characteristics, any more than James Bond's change from blue swimming trunks (in Casino Royale) to his classic tuxedo affects his iconic character. In context, the depictions of the Batmobile as a tank or missile promote its character as Batman's crime-fighting super car that can adapt to new situations as may be necessary to help Batman vanquish Gotham City's most notorious evildoers. See Halicki, 547 F.3d at 1224-25.

Second, Towle argues that a jury should decide the question whether the Batmobile displayed unique elements of expression and consistent, widely identifiable traits. We disagree. We have previously recognized that "[w]hether a particular work is subject to copyright protection is a mixed question of fact and law subject to de novo review." Societe Civile Succession Guino v. Renoir, 549 F.3d 1182, 1185 (9th Cir. 2008). Neither party disputes the relevant facts regarding the Batmobile here. Accordingly, we are well-equipped to determine whether, as a matter of law, these undisputed facts establish that the Batmobile is an "especially distinctive" character entitled to copyright protection.

B

Having concluded that the Batmobile is a copyrightable character, we next consider whether Towle's copies of the Batmobile as it appeared in the 1966 and 1989 productions infringed on DC's copyright. Here, Towle does not contest that his replicas copy the Batmobile as it appeared in the 1966 and 1989 productions, even if they do not copy every feature. Rather, Towle's main argument is that DC does not own any copyright interest in the 1966 and 1989 productions and therefore lacks standing to pursue its copyright infringement claim against Towle.

To analyze Towle's argument, we begin with the applicable legal framework. Under the Copyright Act, "copyright ownership `vests initially in the author or authors of the work,' which is generally the creator of the copyrighted work." U.S. Auto Parts Network, Inc. v. Parts Geek, LLC, 692 F.3d 1009, 1015 (9th Cir. 2012) (quoting 17 U.S.C. § 201(a)). The owner of a copyright has a number of exclusive rights, including the right "to prepare derivative works" based on its original work of authorship, 17 U.S.C. § 106. A derivative work is a "work based upon one or more preexisting works that recasts, transforms, or adapts the preexisting work," Parts Geek, 692 F.3d at 1015-16 (alterations omitted) (quoting 17 U.S.C. § 101), such as a motion picture that is based on a literary work, see, e.g., Stewart v. Abend, 495 U.S. 207, 212-14 (1990), a threedimensional costume based upon two-dimensional cartoon characters, see Entm't Research Grp., 122 F.3d at 1218, or three-dimensional figurines based on cartoon characters, Durham Indus., Inc. v. Tomy Corp., 630 F.2d 905, 909 (9th Cir. 1980). If an unauthorized third party prepares a derivative work, the copyright owner of the underlying work can sue for infringement. See Silvers v. Sony Pictures Entm't, Inc., 402 F.3d 881, 885 (9th Cir. 2005) (en banc) (citing 17 U.S.C. § 501(b)); see also, e.g., Air Pirates, 581 F.2d at 754-55; Durham Indus., 630 F.2d at 909.

A copyright owner also has the exclusive right to "authorize others to prepare derivative works based on their copyrighted works." Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965, 967 (9th Cir. 1992). When a copyright owner authorizes a third party to prepare a derivative work, the owner of the underlying work retains a copyright in that derivative work with respect to all of the elements that the derivative creator drew from the underlying work and employed in the derivative work. See Stewart, 495 U.S. at 223. By contrast, the creator of the derivative work has a copyright only as to those original aspects of the work that the derivative creator contributed, and only to the extent the derivative creator's contributions are "more than trivial." Parts Geek, 692 F.3d at 1016; see also Stewart, 495 U.S. at 223. Moreover, a copyright in a derivative work "must not in any way affect the scope of any copyright protection in that preexisting material." Id.; see 17 U.S.C. § 103(a) ("The copyright in a . . . derivative work . . . is independent of, and does not affect or enlarge the scope, duration, ownership, or subsistence of, any copyright protection in the preexisting material."). Logically, therefore, if a third party copies a derivative work without authorization, it infringes the original copyright owner's copyright in the underlying work to the extent the unauthorized copy of the derivative work also copies the underlying work.

We reached a similar conclusion in Apple Computer, Inc. v. Microsoft Corp., 35 F.3d 1435, 1447-48 (9th Cir. 1994). There, Apple alleged that Microsoft infringed its copyright in the graphical user interface called the Lisa Desktop, as well as its copyright in a graphical user interface called the Macintosh Finder Desktop, which was a derivative work based on the Lisa Desktop. Id. at 1438 & n.1. Because the Finder Desktop did not contain any separately copyrightable original elements, the district court concluded that Apple could not bring a copyright infringement claim for Microsoft's alleged infringement of that work. Id. at 1447. We reversed, holding that Apple could bring a copyright infringement suit for the alleged copying of both the Lisa Desktop and the derivative Finder Desktop, because of Apple's copyright in the underlying work. Id. at 1447-48. In reaching this conclusion, we cited with approval the First Circuit's conclusion in Gamma Audio & Video that the owner of an exclusive right in an underlying work could "base [an] infringement suit on derivative works." Id. (citing Gamma Audio & Video, Inc. v. Ean-Chea, 11 F.3d 1106, 1111-12 (1st Cir. 1993)).

Our sister circuits also agree with this conclusion. See, e.g., Montgomery v. Noga, 168 F.3d 1282, 1293 (11th Cir. 1999); Gamma Audio & Video, Inc., 11 F.3d 1106. In Gamma Audio & Video, the owner of a copyright in a Chinese language television program had authorized a party to produce a derivative work, a Cambodian language version of the program. 11 F.3d at 1110. When an unauthorized third party copied this Cambodian language version (the derivative work), the First Circuit concluded that the owner of the copyright in the Chinese language version (the underlying work) could sue the third party for copyright infringement because "[a]ny elements that the author of the derivative work borrowed from the underlying work, such as the video images in the Chinese language episodes . . . remain protected by the copyrights in the underlying work." Id. at 1112. Accordingly, it was "irrelevant that what was actually distributed by [the unauthorized third party] was the derivative and not the underlying work." Id.

In sum, as a leading copyright commentator explained, "if the material copied was derived from a copyrighted underlying work, this will constitute an infringement of such work regardless of whether the defendant copied directly from the underlying work, or indirectly via the derivative work." 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 3.05, at 3-34.31 (Matthew Bender, Rev. Ed.) (hereafter Nimmer on Copyright). This conclusion is consistent with our determination that a copyright in an authorized derivative work "must not in any way affect the scope of any copyright protection in" the underlying work. Parts Geek, 692 F.3d at 1016 (quoting Entm't Research Grp., 122 F.3d at 1220 (quoting Durham Indus., 630 F.2d at 909)). Accordingly, the author of an underlying work is entitled to sue a third party who makes an unauthorized copy of an authorized derivative work to the extent that the material copied derived from the underlying work.

Applying these principles, we conclude that DC owns a copyright interest in the Batmobile character, as it is depicted in the 1966 and 1989 productions. There is no dispute that DC is the original creator of the Batmobile character. While DC licensed rights to produce derivative works of this character in the 1965 ABC Agreement and the 1979 BPI Agreement, DC did not transfer its underlying rights to the Batmobile character.^[9] DC therefore owns the copyright in the Batmobile character, as expressed in the 1966 and 1989 productions, at least to the extent these productions drew on DC's underlying work. Stewart, 495 U.S. at 223. Accordingly, it is irrelevant that Towle's replica Batmobiles were an indirect copy of the Batmobile character, because DC is entitled to sue for infringement of its underlying work.^[10]See Apple Computer, 35 F.3d 1447-48; Gamma Audio & Video, 11 F.3d at 1111-12.

Towle argues that his replicas of the Batmobile as it appeared in the 1966 and 1989 productions do not infringe on DC's underlying work because those versions of the Batmobile look substantially different from any particular depiction of the Batmobile in the comic books. We reject this argument. As a copyrightable character, the Batmobile need not have a consistent appearance in every context, so long as the character has distinctive character traits and attributes. See, e.g., Warner Bros. Entm't, Inc., 644 F.3d at 599 n.8. For instance, as we explained above, an automotive character may be copyrightable even if it appears as a yellow Fastback Ford Mustang in one film, and a silver 1967 Shelby GT-500 in another. Halicki, 547 F.3d at 1218, 1224. Here, DC retained its copyright in the Batmobile character even though its appearance in the 1966 and 1989 productions did not directly copy any comic book depiction. Because Towle produced a three-dimensional expression of the entire Batmobile character as it appeared in the 1966 and 1989 productions, and the Batmobile character in each of those productions was derived from DC's underlying work, we conclude that Towle's replicas necessarily copied some aspects of DC's underlying works. See e.g., Durham Indus., 630 F.2d at 909 (noting that three-dimensional "small, plastic, wind-up toys" of Disney characters Mickey, Donald, and Pluto were derivative works of these characters). Therefore, while we question whether a derivative work based on a character could ever have any independently copyrightable elements that would not "affect the scope of any copyright protection in that preexisting material," Parts Geek, 692 F.3d at 1016, we need not address that issue here.

For the same reason, we reject Towle's argument that his replicas of the Batmobile as it appeared in the 1966 television series and 1989 movie did not infringe DC's underlying work because the series and movies were produced by third parties, pursuant to sub-licensing agreements with ABC and BPI. Towle argues that while DC had an agreement with ABC and BPI to retain certain rights, DC failed to show that the agreements between ABC and BPI and the sublicensees also protected DC's interests. This argument fails because DC retained its rights to the underlying Batmobile character, and the creation of derivative works by sublicensees cannot deprive DC of such rights. DC may sue any third party who infringes on that work, even if the third party copies "indirectly via the derivative work." Nimmer on Copyright § 3.05.

C

Having established that the Batmobile character is entitled to copyright protection, and that DC owns a copyright to this character as it appears in the 1966 television series and 1989 motion picture, we conclude that Towle infringed upon these copyrights when he produced replicas of the Batmobile. While we ordinarily apply a two-part "substantial similarity" test to determine whether a plaintiff has established "copying of constituent elements of the work that are original," Funky Films, Inc. v. Time Warner Entm't Co., L.P., 462 F.3d 1072, 1076-77 (9th Cir. 2006) (internal quotation marks omitted), we need not do so where, as here, "the copying of the substance of the entire work" is admitted, Narell v. Freeman, 872 F.2d 907, 910 (9th Cir. 1989). Based on the undisputed facts, Towle's production and sale of replicas of the Batmobile, as it appeared in the 1966 and 1989 productions, infringed DC's exclusive right to produce derivative works of this character. Therefore, there is no genuine issue of material fact as to whether he infringed DC's copyrighted material. DC is entitled to judgment, and we affirm.

III

Finally, we must consider Towle's argument that the district court erred when it ruled as a matter of law that he could not assert a laches defense to DC's trademark infringement claim because he willfully infringed DC's trademarks. We have recognized an intracircuit split on whether the proper standard of review of a district court's laches determination is de novo or for an abuse of discretion. See Jarrow Formulas, Inc. v. Nutrition Now, Inc., 304 F.3d 829, 834 (9th Cir. 2002). We need not address this issue in this case, however, because under either standard of review, the district court did not err here. See id.

"Laches is an equitable time limitation on a party's right to bring suit," and is a valid defense to trademark infringement claims. Jarrow, 304 F.3d at 835 (internal quotation marks omitted). This doctrine does not apply, however, "in cases of willful infringement." Evergreen Safety Council v. RSA Network, Inc., 697 F.3d 1221, 1228 (9th Cir. 2012). Willful trademark infringement occurs when the defendant's actions are "willfully calculated to exploit the advantage of an established mark." Lindy Pen Co., Inc. v. Bic Pen Corp., 982 F.2d 1400, 1406 (9th Cir. 1993) (internal quotation marks omitted), superseded by statute on other grounds, Trademark Amendments Act of 1999, Pub. L. No. 106-43, 113 Stat. 218; see also Conan Props., Inc. v. Conans Pizza, Inc., 752 F.2d 145, 151 n.2 (5th Cir. 1985) (explaining that the issue with respect to the availability of a laches defense in a trademark infringement case is whether the defendant "intended to derive benefit from and capitalize on [the plaintiff's] goodwill" by using the mark).

Here, the undisputed facts establish that Towle used DC's Batman trademarks in order to exploit the advantage of those marks. Towle's advertisements recognize that the Batmobile is a famous vehicle, and boast that crowds will form around his replicas as a result of the Batmobile's fame. Additionally, Towle used DC's trademarks on his website to promote his business. He also intentionally referred to his replicas as "Batmobiles" to attract the attention of the Batman fans who constitute his customer base. Indeed, by Towle's own admission, most of his customers were fans who "usually know the entire history of the Batmobile." In light of this evidence, no reasonable juror could conclude that Towle used DC's trademarks for any reason other than to exploit the advantage of those marks.

Indeed, Towle does not argue otherwise, instead arguing that he did not knowingly and subjectively intend to confuse his buyers. Although evidence of intent to confuse buyers may be relevant to establishing that the defendant's actions were willfully calculated to exploit the advantage of an established mark, Towle points to no authority holding that such evidence is necessary, nor is the court aware of any such authority. Accordingly, the district court did not err when it concluded that Towle was barred from asserting a laches defense to DC's trademark infringement claim because he willfully infringed DC's trademarks.

IV

As Batman so sagely told Robin, "In our well-ordered society, protection of private property is essential." Batman: The Penguin Goes Straight, (Greenway Productions television broadcast March 23, 1966). Here, we conclude that the Batmobile character is the property of DC, and Towle infringed upon DC's property rights when he produced unauthorized derivative works of the Batmobile as it appeared in the 1966 television show and the 1989 motion picture. Accordingly, we affirm the district court.

AFFIRMED.

APPENDIX A

APPENDIX B

[1] The Honorable Michael J. Melloy, Senior Circuit Judge for the U.S. Court of Appeals for the Eighth Circuit, sitting by designation.

[2] A photo of the Batmobile depicted in the 1966 television series, as well as a photo of Towle's replica of this Batmobile, can be found in Appendix A.

[3] A photo of the Batmobile depicted in the 1989 motion picture, as well as a photo of Towle's replica of this Batmobile, can be found in Appendix B.

[4] DC clearly asserted in both its original and amended complaint that the Batmobile in all of its forms, including the 1966 television program and 1989 motion picture, is copyrightable subject matter owned by DC. We thus reject Towle's argument that DC has failed to identify the copyrights at issue in this case.

[5] The district court also concluded, in the alternative, that the 1966 and 1989 Batmobiles were entitled to copyright protection as a sculptural work under 17 U.S.C. § 102(a)(5). Because we agree that the Batmobile is a character entitled to copyright protection, we need not reach this issue.

[6] We later indicated that the analysis in Warner Bros. Pictures, Inc. v. Columbia Broad Syst., Inc., regarding the noncopyrightability of literary characters was dicta or an alternative holding. See Walt Disney Productions, 581 F.2d at 755 n.10; see also Olson v. National Broadcasting Co., 855 F.2d 1446, 1452 n.6 (9th Cir. 1988) (same).

[7] This episode causes Robin to exclaim "Whee! The Batplane couldn't do better!"

[8] Towle submitted a chart to the district court setting forth these features.

[9] Indeed, DC expressly retained all rights not specifically granted to the licensees, including the merchandising rights to all of if its characters in both the 1965 ABC Agreement and the 1979 BPI Agreement. See supra, at 5, 6. As a result, DC retained the exclusive right to produce threedimensional expressions of the Batmobile character. See Durham Indus., 630 F.2d at 909; see also Halicki, 547 F.3d at 1218, 1223-24 (concluding that because a party retained the exclusive merchandising rights in a derivative work, she could assert a claim for copyright infringement against a party producing "vehicles resembling the 1967 Shelby GT-500 `Eleanor' character that appeared in the Remake" Gone in Sixty Seconds).

[10] Because DC retains its copyright in the underlying Batmobile character, we also reject Towle's argument that the version of the Batmobile that appeared in the 1966 and 1989 productions cannot be copyrighted because the third party producers of these vehicles obtained a design patent on these works. These creators could obtain protection only for the original, independently copyrightable aspects of their work. Parts Geek, 692 F.3d at 1016. In any event, parties may now obtain both a design patent and a copyright in a work. See Registrability of Pictorial, Graphic, or Sculptural Works Where a Design Patent Has Been Issued, 60 Fed. Reg. 15605-01, 15605 (March 24, 1995).