Everyone's a critic! From Warhol to Eleanor, when IP law takes the stand on art and pop culture

Trademark and copyright cases--a field sometimes referred to somewhat disparagingly by people with pocket protectors as "Soft IP"--are some of the most entertaining cases we get to handle as lawyers. You get cases discussing, inter alia, whether an Andy Warhol piece based on a photograph was fair use (Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith (2023) 598 U.S. 508, 550-51) ("Warhol"), whether the video game Donkey Kong infringed the trademark of the movie King Kong (Universal Studios, Inc. v. Nintendo Co., Ltd. (2d. Cir. 1984) 746 F.2d 112, 119-20), whether the shape of Pepperidge Farm's goldfish crackers were sufficiently distinctive to merit trademark protection (Nabisco, Inc. v. PF Brands, Inc. (2d Cir. 181 F.3d 208, 217-18), whether a raunchy 2 Live Crew cover of Roy Orbison's "Pretty Woman" was "transformative" (Cambell v. Acuff-Rose Music, Inc. (1994) 510 U.S. 569, 578-79), and, just recently, a case from the 9th Circuit considering whether a sportscar named "Eleanor" that appeared in several movies qualified as a "character" entitled to copyright protection. (Carroll Shelby Licensing, Inc. v. Halicki (9th Cir. May 27, 2025) - F.4th--, 2025 WL 1499052, at *3 ("Carroll").)

At issue in the Carroll case were four films--Gone in 60 Seconds (1974), The Junkman (1982), Deadline Auto Theft (1983), and a remake of Gone in 60 Seconds (2000)--all of which featured several Ford Mustangs called "Eleanor." (Id. at *2.)  The Eleanor car shows up in different states of repair, with different paint jobs in the various movies. After the release of the last movie, defendant Shelby licensed a custom car shop to produce "GT-500 E" Mustangs, and later licensed another round of "GT-500CR" Mustangs, all apparently based to some extent on the look of the Eleanor Mustangs in the films. Plaintiff, who held the copyrights to the first three films listed above and merchandising rights to Eleanor as it appears in the last film, sued, alleging a violation of its copyright in the Eleanor "character." (Id. at *2.)

The 9th Circuit began by noting that the Copyright statute, 17 U.S.C. § 102(a), is silent as to the protection of specific characters within covered works like motion pictures, books, etc., but that "there is a long history of extending copyright protection to graphically depicted characters." (Carroll, supra, at *3 [cleaned up].) The court noted that "not every comic book, television, or motion picture character is entitled to copyright protection." (Id. [cleaned up].)

The court looked to DC Comics v. Towle (9th Cir. 2015) 802 F.3d 1012, 1021, where the court was tasked with determining whether the Batmobile from the Batman TV shows and films was a "character" for copyright purposes, for the applicable test. To meet the test, the purported character must:

"(1) . . . have 'physical as well as conceptual qualities,'

(2) . . . be 'sufficiently delineated to be recognizable as the same character whenever it appears,' and display 'consistent, identifiable character traits and attributes,' and

(3) . . . be 'especially distinctive' and contain 'some unique elements of expression.'"

(Carroll, supra, at *3 [cleaned up].)  The court concluded that Eleanor failed each prong.

As to the first prong, the court found that Eleanor lacked the requisite "anthropomorphic traits" deemed necessary for objects or non-human beings to be deemed "characters":

"The car never acts with agency or volition; rather, it is always driven by the film's protagonists. Eleanor expresses no sentience, emotion or personality. Nor does Eleanor speak, think, or otherwise engage or interact with the films' protagonists. Instead, Eleanor is just one of many named cars in the films. In this way, Eleanor is more akin to a prop than a character."

(Carroll, supra, at *4.)

The court noted that animals and objects "endowed with human qualities" and "a demonstrated level of autonomy" could qualify as characters. (Carroll, supra, at *4.) The court contrasted Eleanor's lack of anthropomorphic qualities with the Batmobile, which was described in Towle as "waiting like an impatient steed straining at the reins shivering as its super-charged motor throbs with energy before it tears after the fleeing hoodlums" and "politely stopping for passing children while driving itself." (Carroll, supra, at *4 [cleaned up].)

As to the second prong--whether the character was sufficiently delineated, consistent, and identifiable--the court found that Eleanor lacked "consistent traits" and that her "physical appearance changes frequently throughout the various films, appearing as a yellow and black Fastback Mustang, a gray and black Shelby GT-500 Mustang, and a rusty paintless Mustang in need of repair." (Carroll, supra, at *5.)  Beyond that, the court appeared to find that Eleanor lacked any consistent and identifiable character traits. The plaintiffs argued that Eleanor frequently "incurr[ed] damage" and was "hard to steal," "good at evading police," and "surviving spectacular jumps," but the court found the evidence as to the damage was inconsistent, and the other factors were "more readily attributable to the films' protagonists driving the cars, not to Eleanor." (Id.)

Finally, on the third prong, the court found that Eleanor was not "especially distinctive" or unique. (Carroll, supra, at *5.) (This observation might've hurt Eleanor's feelings if she was in fact more anthropomorphic.) As to this prong, the court noted that the character at issue "cannot be a stock character such as a magician in standard magician garb," and that a character falling into "general, stereotypical categories"  like "an older scholar," a "loyal friend," or a "military leader" would generally not meet this prong. (Id. [cleaned up].) (This appears to be a "don't be basic" standard.) The court observed that "[n]othing distinguishes Eleanor from any number of sports cars appearing in car-centric action films." (Id.) Ouch. The court again contrasted Eleanor to the Batmobile, which it noted had a "distinct bat-like appearance, jet engines and flame-shooting tubes, and the ability to maneuver that far exceeds that of an ordinary car." (Id. [cleaned up]."

Notably, in Towle, the Batmobile case, the court had looked to an earlier case also involving the Eleanor vehicles, and observed that Eleanor had some distinctive traits that could entitle it to copyright protection. The court noted that "in [the] 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" and that "the main character refers to his [difficult] history with Eleanor." (Towle, supra, at 1020 [cleaned up] [citing Halicki Films, LLC v. Sanderson Sales & Mktg. (9th Cir. 2008) 547 F.3d 1213, 1224-25].)  But the court in the previous Eleanor case had remanded the case back to the district court for further findings on the fact intensive issue of protectability as a character. (Id.) That the court seems to have in the interim modified its view of the same character so drastically suggests that the tests involved may be somewhat malleable--and unpredictable in application.

Reading the Carroll decision, I couldn't help but mentally tabulate various famous vehicles: KITT from Knight Rider? He talked to Michael and was kind of supercilious; he had that unplaceable accent. Protectable? Herbie the Love Bug? He was mischievous and stubborn, a little irascible. Thomas the Train? Was he unique enough or just a standard happy and helpful anthropomorphic train? He did sing and sometimes cried. Airwolf? Didn't talk. The General Lee from The Dukes of Hazzard? Is a distinct horn a voice? It was good at evading Sherriff Roscoe P. Coltrane and doing spectacular jumps. What about Voltron? Were those mechanical lions and the robot they came together to form sufficiently anthropomorphic? The Voltron robot had a face, but he didn't talk . . . .

Carroll is an intriguing reminder of how copyright and trademark cases can often draw lawyers and judges into realms more akin to art or literary or film criticism than our usual fare of applying case law, interpreting statutes, construing contracts, reviewing objections to discovery requests, etc. Some of the analysis called for in the Towle test as to character protectability would seem to draw more on Northrop Frye or Roland Barthes than Blackstone or Cardozo (See, e.g., Frye, Anatomy of Criticism (1957) p. 367 [defining "pharmakos" as "The character in an ironic fiction who has the role of a scapegoat or arbitrarily chosen victim"]; Barthes, Mythologies (1957) p. 23 ["One comes to wrestling in order to attend the continuing adventures of a single major leading character, permanent and multiform like Punch or Scapino, inventive in unexpected figures and yet always faithful to his role"].)

In the 2023 Warhol case in the U.S. Supreme Court, Justices Kagan and Sotomayor were in heated disagreement about whether Warhol's treatment of a found photograph was sufficiently transformative to qualify as fair use; their back and forth at times sounded less like something from the pages of U.S. Reports, and more like something out of Art Forum:

"And the meaning [of Warhol's work] is different from any the photo had. Of course, meaning in great art is contestable and contested (as is the premise that an artwork is great). But note what some experts say about the complex message(s) Warhol's Marilyns convey. On one level, those vivid, larger-than-life paintings are celebrity iconography, making a "secular, profane subject[ ]" "transcendent" and "eternal." . . . . But they also function as a biting critique of the cult of celebrity, and the role it plays in American life. With misaligned, "Day-Glo" colors suggesting "artificiality and industrial production," Warhol portrayed the actress as a "consumer product." . . . . And in so doing, he "exposed the deficiencies" of a "mass-media culture" in which "such superficial icons loom so large." . . . . Out of a publicity photo came both memorable portraiture and pointed social commentary."

(Warhol, supra, at 563-64 [Kagan, J., dissenting] [cleaned up].)

When "soft IP" cases call upon lawyers and judges to discuss "originality," "distinctiveness," or whether one work "transforms" another work, etc., it's inevitable that we'll be drawn into moonlighting as critics of cultural works. (See, e.g., Suntrust Bank v. Houghton Mifflin Co. (2001) 268 F.3d 1257, 1270-71 [finding that a work called The Wind Done Gone, written from the perspective of a slave, was a transformative parody of Gone With the Wind].) There is always the danger that we may be slightly out of our depth. As Dr. McCoy might remind us, "Goddamn it, Jim, you're a lawyer, not a movie critic!" (The same point might be made in "hard IP" cases, when we (mostly) former history and English and political science majors are called to understand "new art," advances in science and engineering, etc.)

And it's inevitable, given the educational and cultural backgrounds of so many lawyers, that many of us will be irresistibly drawn into passionate discussions of the cultural works at issue: Justice Kagan went into a long, illustrated exegesis of Andy Warhol's artistic process in the Warhol case; the Towle opinion has hallmarks of fandom. (See Towle, supra, 802 F.3d at 1018 ["To the Batmobile!"].) 

I guess my point would be that we keep in mind, when we venture into these realms, that we can find ourselves escaping the bounds of legal analysis into the realm of cultural criticism--a subject not appearing on the bar exam. Everyone has opinions on art, film, novels, etc. Ours are no more entitled to weight than anyone else's. And we are generally not especially qualified to make some of these determinations; acknowledging our lack of expertise in these areas may modify how we approach some of these questions.

But I don't want to be too much of a downer. I'm always happy to come across these cases--because they are fun. And God knows fun can sometimes be in short supply in our line of work.