Long Live the Wizard of Oz! (In its original form)

Written By Kyu Hee Chu

Reviewed By Cynthia Amis

A very recent case that may be of interest to filmmakers is Warner Bros. Entertainment, Inc. v. X One X Productions.  This case, just decided in the Eighth Circuit, has created quite a buzz.

Here is some background information on the case:

Before Warner Brothers completed their films “Gone with the Wind” and “The Wizard of Oz,” they distributed publicity materials (including movie posters and photographs) containing images of the film characters to theaters, magazines, and newspapers.  Publicity material was also distributed before the release of the Tom & Jerry short films.  None of the publicity materials were copyrighted, but Warner Brothers do hold the copyright to the films.

The problem for the Warner Brothers began when AVELA gained possession of these publicity materials and licensed images of the film characters to be used on shirts, lunch boxes, playing cards, and action figures, among many other products.

What did the Eighth Circuit court have to say to this?

Well, the court first found that the publicity materials for the three films (The Wizard of Oz, Gone with the Wind, and Tom & Jerry short films) are in the public domain.

Then the court proceeded to consider the elements of copyright infringement.  To prove that the defendant has committed copyright infringement, a plaintiff (in this case, Warner Brothers) needs to prove that it 1) owns a valid copyright and that 2) the defendant copied original elements of the plaintiff’s copyrighted work.  The court explained that copying can be established through 1) direct evidence or 2) access to the material and substantial similarity between the two works.  The court had no problem concluding that AVELA had access to the Warner Brothers’ films and that the two works are substantially similar.  The final question to whether there had been copyright infringement therefore rested on whether AVELA had used original elements of the copyrighted films.

In general, the public is permitted to use materials in the public domain in new and creative ways.  However, the new work may not come into conflict with a valid copyright.  To determine whether what AVELA did comes into conflict with Warner Brothers’ copyright in their films, the court looked at 1) the scope of the copyrights in the films, 2) the scope of the publicity materials, and 3) under which scope AVELA’s work fell under.

1) Scope of the Film Copyrights:  When movies are copyrighted, the copyright protection covers the characters as well provided that they are distinctive.  The court found that The Wizard of Oz, Gone with the Wind, and Tom & Jerry’s characters are distinctive enough to be protected under the films’ copyrights.

2) Scope of the Publicity Material:  The court found that the publicity materials did not show each of the film character’s traits.  The court also said that the characters on the publicity materials must show “consistent, widely identifiable” visual characteristics in order to establish “characters” for copyright purposes.

a)  Tom & Jerry: The court found that the publicity material that were made available to the public before the film for Tom & Jerry came out showed no distinctive character or visual traits and so it could not establish independently copyrightable characters.  On the other hand, the film itself had copyright protection of the Tom & Jerry characters and so the court said that the movie posters that came after the film came out exhibited those copyrighted characters, and so use of any such movie posters requires the Warner Brothers’ permission.

b)  Gone with the Wind: The publicity materials featuring the main characters for this film are not consistent and distinctive.  Therefore, the court found that the only images in the public domain are what were in the publicity materials.

c)  The Wizard of Oz:  The court found that the publicity materials featuring the main characters for this film are not consistent and distinctive.  Therefore, the only images in the public domain are what were in the publicity materials.

3.  AVELA’s use of the publicity materials:  The court first divided up into three categories AVELA’s works:

a)  Products that reproduce an image from a publicity material as an identical two-dimensional image:  The court held that this category does not infringe on the Warner Brothers’ copyright.

b)  Products that combine images from publicity material in a new arrangement (put different images together or print images with phrases from book, etc.):  The court held that this category does infringe on the Warner Brothers’ copyright.

c)  Products that extend an image from an item of publicity material into three dimensions (such as statuettes inside water globes and action figures):   The court held that this category does infringe on the Warner Brothers’ copyright.

To sum this up, the only images of the film characters from “Gone with the Wind” and “The Wizard of Oz” that are in the public domain are the images in the publicity materials, and any visual representation that are similar enough to the copyrighted characters of these films that one can recognize it as one, can be deemed to have copied its original elements.  In other words, AVELA is limited to reproductions of the publicity material, and no more.  The court affirmed the district court’s decision in favor of the Warner Brothers on the copyright infringement claim, with an exception to the first category of AVELA products which it reversed.[1]

Well, this case has got many people worried, and the ones who are most worried are probably the ones who are developing different film versions of The Wizard of Oz right now.  According to hollywoodreporter.com, there are nine Wizard of Oz projects in progress as of right now.[2] According to techdirt.com, it may be possible that if one of the actors in an adaptation of the original Wizard of Oz does something to suggest a similarity to the original film, it could be an infringement.[3]

We can keep wondering about how big of an impact this ruling will have in the future of the moviemaking industry as well as in the usage of materials in the public domain, but it seems that we just need to wait and see how the courts in the future will use and refer to this decision.

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