Q: When does entering the Public Domain mean the work is still in Copyright? A: When some visual depictions are not ‘injected into the public domain’.

Warner Bros. v. X One X Production, 2011 U.S. App. LEXIS 13646 (8th Cir. Mo. July 5, 2011) This is a case that will make game and movie companies add a new level of analysis and scrutiny to every new creation that has a basis in a work that has entered the public domain. The Eighth Circuit restricted the reproducibility of certain film/cartoon images extracted from publicity materials that had passed into the public domain.

The facts are straightforward. The dispute focuses on promotional pictures that the studios used to promote movies that were adaptations from the out-of-copyright books including ‘Gone with the Wind’, ‘Tom and Jerry’ and ‘The Wizard of Oz’. Art & Vintage Entertainment Licensing Agency (AVELA) got hold of movie posters, “lobby cards”, and the like that bore the images and used them as the basis for things like t-shirts, lunch boxes, and action figures. The studios sued AVELA for a permanent injunction and got one. The publicity images were not taken from film footage, but were created independently. The publicity materials, as distributed, did not comply with the 1909 Copyright Act’s notice requirements. Consequently, the materials fell into the public domain.

The Eighth Circuit reversed and affirmed. The basis of the reversal, in part, was based on the images identical to the ones on the old posters, cards, press books, and other items had that had become public domain material couldn’t provide the basis for an infringement claim.

The Eighth Circuit panel affirmed the injunction to the extent it barred AVELA from using more than just the images themselves. Adding a catch phrase, turning a two-dimensional picture into a three-dimensional figurine, and making other changes or additions, the court held, infringed the copyrights in the characters they depicted:

In essence, the panel of justices finds that the features of film characters can be copyrighted even if these characters were based on prior work. According to the decision:

“We agree with the district court’s conclusion that Dorothy, Tin Man, Cowardly Lion, and Scarecrow from The Wizard of Oz, Scarlett O’Hara and Rhett Butler from Gone with the Wind, and Tom and Jerry each exhibit “consistent, widely identifiable traits” in the films, that are sufficiently distinctive to merit character protection under the respective film copyrights…. Put more simply, there is no evidence that one would be able to visualize the distinctive details of, for example, Clark Gable’s performance before watching the movie Gone with the Wind, even if one had read the book beforehand. At the very least, the scope of the film copyrights covers all visual depictions of the film characters at issue, except for any aspects of the characters that were injected into the public domain by the publicity materials.”



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