Warner Bros. Entertainment v. X One X Productions
99 U.S.P.Q. 2d (BNA) 1153, 644 F.3d 584, 2011 U.S. App. LEXIS 13646 (2011)
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Rule of Law:
While specific images from publicity materials may enter the public domain if distributed without proper copyright notice, their subsequent use in new ways that evoke or incorporate elements of copyrighted characters from associated films can constitute copyright infringement, especially if the new use adds original expression or relies on character aspects not present in the public domain material.
Facts:
- Warner Bros. Entertainment, Inc. (Warner Bros.) owns registered copyrights to the 1939 Metro-Goldwyn-Mayer (MGM) films The Wizard of Oz and Gone with the Wind, and various animated Tom & Jerry short films that debuted between 1940 and 1957.
- Before the films were completed and copyrighted, MGM's parent company, Loew's, Inc., distributed publicity materials (e.g., movie posters, lobby cards, still photographs) for The Wizard of Oz and Gone with the Wind, which featured independently created images of actors in costume posed on film sets.
- These publicity materials for The Wizard of Oz and Gone with the Wind, as well as for the Tom & Jerry short films, were distributed without complying with the copyright notice requirements of the 1909 Copyright Act, and were widely available to theaters, newspapers, and magazines.
- X One X Productions (AVELA) acquired restored versions of these public domain movie posters and lobby cards.
- AVELA extracted images of famous characters like Dorothy, Tin Man, Scarlett O’Hara, Rhett Butler, Tom, and Jerry from these publicity materials.
- AVELA licensed these extracted images for use on merchandise such as shirts, lunch boxes, music box lids, and playing cards, and as models for three-dimensional figurines like statuettes and action figures.
- AVELA modified some images, such as by adding a character's signature phrase from the movie, and combined images extracted from different publicity materials into single products.
Procedural Posture:
- Warner Bros. Entertainment, Inc. (Warner Bros.) sued X One X Productions (AVELA) in the United States District Court for the Eastern District of Missouri, claiming copyright infringement, trademark infringement, and unfair competition.
- AVELA contended that the publicity materials, from which they extracted images, were in the public domain, thus precluding any restrictions on their use.
- Both Warner Bros. and AVELA filed cross-motions for summary judgment.
- The district court granted summary judgment to Warner Bros. on the copyright infringement claim, holding that even if the images were extracted from public domain materials, AVELA's modifications infringed the film copyrights.
- The district court denied summary judgment to both parties on the trademark infringement and unfair competition claims.
- Based on the finding of copyright infringement, the district court entered a permanent injunction against all use of the publicity material images, except for exact duplication of individual items of publicity material.
- AVELA appealed the entry of the permanent injunction to the United States Court of Appeals for the Eighth Circuit.
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Issue:
Does a company infringe upon valid film copyrights by extracting images from public domain publicity materials and using them to create new products that either juxtapose images, add text, or convert images into three-dimensional forms, thereby evoking or incorporating elements of the copyrighted characters that extend beyond the scope of the public domain materials?
Opinions:
Majority - Gruender
Yes, a company infringes upon valid film copyrights by creating new products that evoke or incorporate elements of copyrighted characters beyond the scope of public domain publicity materials through juxtaposition, added text, or three-dimensional rendering. The court first established that Warner Bros. validly owned the copyrights to the films and animated shorts. It then determined that the publicity materials for The Wizard of Oz, Gone with the Wind, and Tom & Jerry short films had entered the public domain under the 1909 Copyright Act due to 'general publication' without proper copyright notice, rejecting Warner Bros.'s 'limited publication' argument because the materials were widely distributed to the public and not effectively controlled by 'return or destroy' provisions. While acknowledging the public's right to use public domain materials, the court held that this freedom is limited where the resulting new work conflicts with a valid copyright, particularly concerning distinctive characters protected by the films. The court found that the characters (Dorothy, Tin Man, Scarlett, Rhett, Tom, Jerry) were sufficiently distinctive in the films to merit character protection. For The Wizard of Oz and Gone with the Wind, the court concluded that the publicity materials' inconsistent visual depictions of the characters did not inject the characters' full visual appearance into the public domain; rather, only the precise images themselves were public domain. For Tom & Jerry, the characters became copyrightable through the films before most posters entered the public domain, so later poster images derived from copyrighted characters. Applying this framework to AVELA's products: 1) Products that are exact two-dimensional reproductions of a single public domain image on a new surface (e.g., T-shirt) do not infringe, as they do not add a new increment of expression of the film character. 2) Products that juxtapose multiple public domain images or combine an image with a phrase (even a public domain phrase) infringe, because this creates a 'new increment of expression' that more strongly evokes the copyrighted film character. 3) Products that extend a two-dimensional image into three dimensions (e.g., statuettes) infringe, as they necessarily add new visual details consistent with the film characters that were not present in the public domain images, relying on the 'further delineation' from the copyrighted films. For Tom & Jerry, only the first, generic publicity poster could be used without restriction for 2D reproductions, while all other Tom & Jerry products infringed if they went beyond faithful reproductions of individual posters because the characters themselves were copyrighted through the films.
Analysis:
This case significantly clarifies the intersection of public domain works and copyrighted characters, particularly concerning iconic film characters. It establishes that while specific historical publicity images may fall into the public domain, the underlying characters from copyrighted films can retain protection for their distinctive traits and appearances. The ruling provides a nuanced framework for analyzing derivative works, demonstrating that merely combining public domain elements or translating them into a new medium can create a 'new increment of expression' that infringes upon existing character copyrights. This limits the commercial exploitation of copyrighted characters, even if their early visual representations are in the public domain, by emphasizing the comprehensive nature of character copyright beyond static images.
