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Warner Bros. Entertainment et al. v. X One X Productions, Inc., et al.

Circuit court affirms a permanent injunction restricting defendants’ depictions of copyrighted film characters derived from images in the public domain, allowing only a faithful reproduction, in whole or in part, of the uncopyrighted public domain images.

Defendants, makers of licensed products, appealed a permanent injunction issued by the district court preventing them from using images extracted from publicity materials for the films Gone with the Wind and The Wizard of Oz, as well as animated short films featuring Tom & Jerry. The district court held that defendants had infringed on plaintiff Warner Bros.’s copyrights in those films by using the images, alone or in combination with other elements, on a variety of products including t-shirts, playing cards and lunch boxes, and as models for objects including statuettes and action figures. On appeal, defendants argued that since they used images extracted from uncopyrighted publicity materials in the public domain, they had not infringed on copyrights in the films. The Eighth Circuit affirmed in large part the district court’s grant of summary judgment in plaintiff’s favor and upheld the resulting permanent injunction to the extent it barred defendants from using the uncopyrighted images in new ways that evoked protectable elements of copyrighted film characters. The court reversed the summary judgment and vacated the injunction only to the extent that defendants’ use of the public domain images reproduced, in whole or in part, the identical uncopyrighted images.

The publicity materials at issue were movie posters and lobby cards depicting images and photographs created in the 1930s, ‘40s and ‘50s to promote the films. The images were not derived from the films, but rather from photographs of the actors in costume taken on the movie sets and, in the case of Tom & Jerry, drawings of the cat and mouse characters. The materials failed to carry notices of copyright, a prerequisite for copyright protection under the then-governing 1909 Copyright Act. Defendants argued that distributing the materials without the requisite copyright notices injected then into the public domain and precluded any restrictions on their subsequent use.

Since Warner Bros. was not asserting copyrights against the unaltered reproductions of the publicity materials, the district court found it unnecessary to determine whether the materials were in the public domain. Instead, the district court granted summary judgment in favor of Warner Bros., holding that defendants’ practice of modifying the images extracted from the materials for use on retail products constituted infringement of the copyrights in the films. The district court entered a permanent injunction against all use of the images, except for exact duplication of individual publicity materials.

In affirming the majority of the district court’s decision, the circuit court did find that the images in the publicity material were in the public domain because they were both uncopyrighted and had been circulated widely, not just in the movie posters and lobby cards, but also in newspaper and magazine advertisements, as well as in handouts and promotional flyers. This distribution constituted a “general publication” resulting in injection into the public domain, and not merely a “limited publication.” The court’s finding that the publicity materials were in the public domain did not end its inquiry, however. Warner Bros. did not challenge – and district court did not restrict – any products that were exact reproductions of an entire item of publicity material. Rather, Warner Bros. alleged that defendants extracted images from the public domain materials and used them in new ways that infringe the copyrights in the associated films. The circuit court agreed that, even though the images were in the public domain, defendants could still have infringed on Warner Bros.’s undisputed copyrights in the films and the film characters, because they placed the images in new contexts.

Turning to the elements of copyright infringement, the court reasoned that it could infer copying based on a showing that (1) defendants had access to the films, and (2) that defendants’ creations were substantially similar to protectable elements of the films. The court easily found access, since the films had a “long history of popularity.” The court also found it undisputed that the images depicted in defendants’ works were substantially similar to the copyrighted images in the films – in fact, they were images of the same actors in the same costumes or, in the case of Tom and Jerry, of the same cartoon characters. The remaining question for the court was whether the defendants had appropriated original – and therefore protected – elements of the movie characters or merely used elements that were in the public domain.

The court rejected defendants’ argument that the fact that the publicity materials were in the public domain meant that the entirety of each film character depicted in the materials was also in the public domain. The publicity materials only placed into the public domain exactly that which they portrayed and nothing more – a particular image of the character. The court also held that the film characters were sufficiently distinctive to be protectable and that because the publicity materials carried only static depictions of characters such as Gone with the Wind’s Rhett Butler and Scarlett O’Hara, they did not undermine the protectability of these characters as depicted in the films. Because no visual aspects of the film characters were in the public domain, any depiction of the films’ copyrighted characters beyond a faithful replication of the unprotected images contained within the publicity materials infringed on Warner Bros.’ copyrights in the films.

Of the three categories of works covered by the permanent injunction, the court found that two infringed on plaintiff’s copyrights in the movies and should be subject to the injunction. The first category included images extracted from the publicity materials and placed by defendants into a larger arrangement. For instance, an unprotectable publicity image of Judy Garland from The Wizard of Oz, accompanied by the phrase “There is no place like home,” taken from the book from which the movie was created, evoked elements of the Dorothy character that were present in the copyrighted movie character, not the publicity image. The second category included three-dimensional objects, such as statuettes, busts and action figures, which, while based on the publicity images, were designed to resemble the film characters as closely as possible and were based on visual information that could have only been obtained from the films.

The circuit court vacated the injunction only as to defendants’ use of the public domain images that simply involved transferring one image onto another surface, such as a t-shirt or a lunch box. The court rejected Warner Bros.’ argument that the only allowable use of the images was a reproduction of the entire movie poster or lobby card, reasoning that printing a public domain image on a new surface instead of the original surface did not add an increment of expression of the film character to the image. In a footnote, the court did note that its reasoning would not apply, however, if the new surface was independently evocative of the film character – such as reproducing a publicity image of Judy Garland as Dorothy on a ruby slipper.