Warner Bros. Largely Wins Appeal in Copyright Infringement Case Involving Use of Film Publicity Materials in the Public Domain

Warner Bros., owner of the copyrights to the films The Wizard of Oz and Gone with the Wind, as well as various animated Tom & Jerry short films, sued defendants, collectively referred to as AVELA, for copyright infringement, among other claims.

AVELA had obtained restored versions of publicity materials for these films such as movie posters and lobby cards.  From these materials, AVELA extracted images of the film characters and licensed the extracted images for use on a variety of items such as shirts, playing cards and three-dimensional figurines.  In some cases, AVELA modified the images extracted from the publicity materials and in other cases, combined images extracted from different publicity materials for use in a single product.

Warner Bros. claimed these uses of the extracted images from the publicity materials infringed its copyrights in the films.  AVELA in turn argued that because the publicity materials were distributed without copyright notice, under the 1909 Copyright Act (applicable under the facts), the materials were in the public domain.

In granting summary judgment in favor of Warner Bros. on the copyright infringement claim, the District Court did not decide the public domain question.  Instead, it concluded that even if the publicity materials were in the public domain, AVELA's modifications of the extracted images and use of the images on products infringed Warner Bros.'s copyrights in the films.  The District Court then entered a permanent injunction against all use of the images from the publicity materials except for exact duplication of those materials.

Unlike the District Court, in affirming in part the trial court's decision, the Eighth Circuit explicitly addressed the question whether the publicity materials were in the public domain.  The Court concluded that they were, rejecting Warner Bros.'s contention that the allegedly "limited publication" of the materials saved them from this fate.

The meat of the Court's opinion focused on the remaining question whether AVELA "appropriated 'original elements' of the films . . . or solely elements that are in the public domain."

Exact reproductions of the publicity materials in their entirety apparently were not at issue; rather, it was AVELA's use of public domain materials in new ways that was in dispute:

Warner Bros. contends that AVELA has extracted images from the public domain materials and used them in new ways that infringe the copyrights in the associated films.  AVELA admits that it has used the images in new ways (and indeed has applied for its own copyrights for such derivative works), but it counters that there is no limitation on the public's right to modify or make new works from public domain materials.

The Eighth Circuit agreed with AVELA that in general, "the public is not limited solely to making exact replicas of public domain materials, but rather is free to use public domain materials in new ways (i.e., to make derivative works by adding to and recombining elements of the public domain materials)."  But that general proposition did not resolve the issue in this case because:

if material related to certain characters is in the public domain, but later works covered by copyright add new aspects to those characters, a work developed from the public domain material infringes the copyrights in the later works to the extent that it incorporates aspects of the characters developed solely in those later works.

Therefore, to resolve that issue, the Court had to determine the scope of the material in the public domain, the scope of the film copyrights, and where AVELA's use of the images extracted from the publicity materials fell.

Taking the film copyrights first, the Eighth Circuit readily concluded that the film characters were sufficiently distinctive to merit protection under the film copyrights and that "[a]t the very least," those copyrights covered "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."

The Court thus next answered the question of what had in fact been injected into the public domain.

The Court first rejected the proposition that the fact that the publicity materials were in the public domain meant that the entirety of the film characters were also in the public domain.  Instead, the Eighth Circuit concluded that it:

must determine if any individual is depicted with consistent, distinctive visual characteristics throughout the various publicity materials.  If so, those consistent visual characteristics define the 'copyrightable elements' of that film character, . . . which were injected into the public domain by the publicity materials.  If not, then there are no visual aspects of the film character in the public domain, apart from the publicity material images themselves.

Based on its analysis of the film characters in the publicity materials, the Eighth Circuit concluded that with respect to the Gone With the Wind and The Wizard of Oz characters, "no visual aspects of the film characters . . . are in the public domain" except for "the precise images in the publicity materials."

Breaking the AVELA products at issue into three categories, the Eighth Circuit then concluded that only one category did not infringe Warner Bros.'s film copyrights.

Specifically, the Court held that the "products that reproduce in two dimensions any one portion of an image from any one item of publicity material, without more, do not infringe Warner Bros.'s copyright."  The Court thus reversed the grant of summary judgment in favor of Warner Bros. and vacated the preliminary injunction with respect to such products.

The Eighth Circuit affirmed summary judgment and the permanent injunction as to the other two categories of products.

As to products that combined images extracted from different items of publicity materials or combined an extracted image with a printed phrase from the underlying book for the film, the Court concluded that such "products combining extracts from the public domain materials in a new arrangement infringe the copyright in the corresponding film."

As to the third category of products, which extended an extracted image into three dimensions, the Court concluded that "the addition of visual details to each two-dimensional public domain image to create the three-dimensional products makes impermissible use of the 'further delineation of the characters contained in' the feature-length films."

The case cite is Warner Bros. Entertainment, Inc. v. X One X Productions, No. 10-1743 (8th Cir. July 5, 2011).

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