Eighth Circuit Holds that Use of Public Domain Material Infringes Film Copyright
By Michael Hoven – Edited by Esther Kang
Warner Bros. Entm’t v. X One X Productions, No. 10-1743 (8th Cir. July 5, 2011)
The Eighth Circuit unanimously affirmed in part and reversed in part a decision by the Eastern District of Missouri, which had granted summary judgment to Warner Bros. on its copyright infringement claim and issued a permanent injunction prohibiting defendants (collectively “AVELA”) from licensing images from publicity materials for The Wizard of Oz, Gone with the Wind, and short films featuring Tom & Jerry. The Eight Circuit remanded the case for modification of the injunction in light of their decision.
The Eighth Circuit reversed the district court’s grant of summary judgment to Warner Bros. with regard to AVELA’s reproduction of publicity images, holding that the publicity materials were in the public domain. The Eighth Circuit affirmed the lower court’s grant of summary judgment to Warner Bros. and the permanent injunction prohibiting AVELA’s production of items that evoked copyrightable aspects of the film characters, even when the products featured only images and text extracted from the public domain. In so holding, the court noted that the public’s right to use and modify public domain materials ends when it conflicts with an existing copyright. Because the “increments of expression” that a film adds to a public domain character are copyrightable, a combination of materials that do not independently infringe copyright—such as public domain extracts—may nonetheless infringe on an expressive element of that character that is protected under the film’s copyright.
PIT IP Tech Blog provides an overview of the case. Techdirt criticizes the decision for its expansion of copyright protection at the expense of the public domain. Copyright Litigation Blog questions whether other circuits or the Supreme Court will follow the Eighth Circuit’s reasoning and asserts that modifications of public domain material will fuel litigation in coming years.
AVELA used movie posters and lobby cards for The Wizard of Oz, Gone with the Wind, and Tom & Jerry shorts to extract images of famous characters and license them for use on a variety of products, including t-shirts, lunch boxes, and action figures. Some products featured not only an image from a publicity photograph but also a phrase associated with the film; for example, a t-shirt shows an image of Judy Garland as Dorothy, taken from the publicity photograph, and the phrase, “There’s no place like home,” which appears in the film and the book on which the film is based. (The court stated that the minor difference between the phrase in the film and the book was not relevant to their analysis.) Other products were three-dimensional figures modeled on the publicity images but informed by the creators’ memory of the film, as the creators conceded.
In holding as it did, the court agreed with the district court that the publicity materials for The Wizard of Oz and Gone with the Wind were merely “pictures of the actors in costume,” so any juxtaposition or addition to the public domain images that associated the images with the film characters (and not just the actors pictured in the publicity materials) necessarily infringed on the copyrightable elements of the film characters’ appearance. Whole or partial reproductions of publicity materials did not infringe, and the injunction against AVELA for those materials was vacated. Products that juxtaposed an image and a piece of text, or extended a two-dimensional image into three dimensions, did infringe because the final products more strongly evoked the film characters than did any single image or text.
The Eighth Circuit’s decision expands the copyright protection afforded to characters’ expressive features in a derivative work into a factual setting not considered by the precedents it cites: the juxtaposition of elements each wholly within the public domain. In earlier decisions, courts have held that a theatrical adaptation of a radio program infringes when it borrows character traits from later scripts still under copyright, see Silverman v. CBS Inc., 870 F.2d 40 (2d Cir. 1989); that a derivative work, when it passes into the public domain, does not inject its underlying work into the public domain, see Russell v. Price, 612 F.2d 1123 (9th Cir. 1979); and that the copyright of an early promotion for a comic book character does not grant its owners copyright over elements of the character that developed later, see Siegel v. Warner Bros. Entm’t Inc., 542 F. Supp. 2d 1098 (C.D. Cal. 2008). None of these, though, restricted the use of original (rather than derivative) works already in the public domain.