The U.S. Court of Appeals for Eighth Circuit ruled that copyright holders deserve protection of characters even after images containing such characters have entered the public domain.   The 8th Circuit thus affirmed a district court’s permanent injunction barring movie image licensors from selling altered versions of public domain images from Gone with the Wind, The Wizard of Oz and Tom and Jerry.  Warner Bros. Entertainment Inc. et al. v. X One X Productions et al., Case No. 10-1743 (8th Cir., July 5, 2011) (Gruender, J.). 

The plaintiffs own registered copyrights to the 1939 Metro-Goldwyn Mayer (MGM) films The Wizard of Oz and Gone with the Wind.  Prior to completion of the films, publicity materials featuring images of the actors in costume and on the movie set were distributed to movie theaters and published in newspapers and magazines to promote the films.  The publicity materials included “lobby cards,” movie posters, still photographs and press books.  The publicity materials did not comply with the copyright notice requirements under the 1909 Copyright Act and thus fell into the public domain.  The plaintiffs also own copyrights for various animated films featuring the characters Tom and Jerry that appeared between 1940 and 1957.  As with The Wizard of Oz and Gone with the Wind, promotional materials for these films were distributed without copyright notice and thus did not receive copyright protection under the then-operative 1909 Copyright Act. 

The defendants acquired restored versions of promotional materials, including movie posters and lobby cards featuring characters from The Wizard of Oz, Gone with the Wind and several Tom and Jerry cartoon films.  Characters including Scarlett O’ Hara, Rhett Butler, Tin Man, Cowardly Lion, Dorothy, Tom and Jerry were used by the defendants on items such as t-shirts, figurines, playing cards and lunch boxes.  In many cases, the defendants modified the images of the characters.  For example, one of the defendants’ products contained a character’s publicity photograph with the addition of the character’s signature phrase from the movie.  The defendants also combined images extracted from different items of publicity material, such as publicity photographs of multiple characters, onto a single product.    

The plaintiffs filed suit, alleging that the defendants had violated the plaintiffs’ copyrights for the films by plastering images of characters from these films onto the items it then sold.   The defendants argued that their use was permissible because prior distribution of the publicity materials without proper copyright notice, from which the images of characters were taken, had fallen into the public domain due to the failure to comply with the copyright notice requirements of the 1909 Copyright Act.  The district court did not address the issue of whether the images had fallen into the public domain.  Instead, the court granted the plaintiffs’ motion for summary judgment on infringement on the grounds that even if the images were obtained from public domain materials, the defendants’ practice of modifying the extracted images for placement on retail products infringed the plaintiffs’ film copyrights.  Accordingly, the district court granted a permanent injunction barring all use of images of characters from The Wizard of Oz, Gone with the Wind and Tom and Jerry films. 

On appeal, the 8th Circuit explained that the district court had erred in failing to determine whether the materials at issue had entered the public domain.   The court then turned to the issue of whether the defendants’ use of images of characters from the copyrighted films in fact infringed the plaintiffs’ copyrights.  In finding infringement, the court concluded that the plaintiffs’ copyright in The Wizard of Oz, Gone with the Wind and Tom and Jerry extended to the characters depicted in those films, noting that certain characters, such as Scarlett O’ Hara and Rhett Butler, exhibit “consistent, widely identifiable traits in the films that are sufficiently distinctive to merit character protection under respective film copyrights.”  Commenting on the modifications made to some of the images by the defendants, the court noted that the “new arrangement of the extracts [from the public domain images] in the composite work is a new increment of expression that evokes the film character in way the individual items of public domain material did not,” citing as an example the addition of the film line “there’s no place like home” to an image of Dorothy taken from publicity material. 

Notably, the 8th Circuit concluded that an exact image taken from publicity material that had fallen into the public domain and placed upon a t-shirt or other product did not constitute a violation of the plaintiffs’ copyrights.  The Court reversed summary judgment as to products that fit within this category, but affirmed the permanent injunction in all other respects.

Practice Note:   Unauthorized use of images of film characters taken from materials that have entered the public domain can still incur copyright infringement liability, if such use evokes the film character as depicted in a film that has not yet entered the public domain.