Originally posted 2011-12-05 10:40:49. Republished by Blog Post Promoter

mdbheadshotfinalSomehow—despite that I always have one eye open for decisions involving copyright in fictional characters, because almost always I disagree with the ruling and I enjoy then getting to rail about it—I didn’t learn about a new case extending the abstract protection extended to fictional characters, the July 5, 2011, decision of the Eighth Circuit in Warner Bros. v. X One X Prods., on appeal from the Eastern District of Missouri, until now, December.

I could have been grumbling and shaking my fist at the heavens—or at least in the direction of St. Louis, where Circuit Judge Raymond Gruender, author of the opinion, has his chambers—for five months already! (Nota bene: Such purely demonstrative fist-shaking would in no way constitute an actual threat under Part 41 of Title 18 of the U.S. Code. The remainder of this piece will invoke Title 17 only.)

These are the relevant facts of the case, presented bullet-pointedly:

  • Warner Bros. (comprising Warner Bros. Entertainment, Inc.; Warner Bros. Consumer Products, Inc.; and Turner Entertainment Co.) holds the copyright in/to the motion pictures Gone With the Wind and The Wizard of Oz (both released in 1939) and in/to various animated shorts featuring the cat-and-mouse duo Tom & Jerry (released between 1940 and 1957).
  • Before the two films were released, publicity materials featuring images of the actors in costume posed on the films’ sets were distributed to theaters and published in newspapers and magazines. The images in these materials were not taken from film footage; rather, they were created independently by still photographers and artists before and during production. The publicity materials were such things as posters, lobby cards, still photos, and press books. Similarly, posters and lobby cards to promote the Tom & Jerry shorts were distributed by the original rights-holder.
  • The copyright law in effect at the time—the 1909 Act—provided that material published in the United States without the statutorily required copyright notice would fall into the public domain, precluding forever any subsequent copyright protection of the work. It was a different world back then, people.
  • Warner Bros. admitted that it holds no copyright registration for the publicity materials.
  • The defendants—three companies in the business of licensing/marketing movie memorabilia and the like—whom we’ll call collectively “AVELA” (standing for Art & Vintage Entertainment Licensing Agency, the name of one of them), extracted from the publicity materials images of famous characters from the works in question: Dorothy, the Tin Man, the Cowardly Lion, and the Scarecrow; Scarlett O’Hara and Rhett Butler; and Tom and Jerry. AVELA licensed the extracted images for reproduction on items such as clothing, lunch boxes, music boxes, and playing cards, but also as models for three-dimensional items such as statuettes, busts, and action figures. In some instances, AVELA combined images from different publicity materials (for the same work); AVELA also sometimes combined an image with a character’s quotation from the relevant film. (Thought not with Tom or Jerry, presumably.)
  • Warner Bros. sued AVELA, claiming infringement on the copyrights to the films. Warner Bros. also asserted claims of  trademark infringement and unfair competition. AVELA contended that distribution of the publicity materials without the required copyright notice injected the materials into the public domain, thereby precluding any restriction on use thereof by anyone.
  • On cross-motions for summary judgment, the district court granted judgment to Warner Bros. on the copyright claims (and denied judgment to all parties on the remaining claims, which means that the trial court can still find in favor of Warner Bros. on trademark grounds, which will infuriate me further).
  • The district court did not consider whether the publicity materials were in the public domain, because it held that even if AVELA extracted images from public domain materials, nonetheless AVELA’s practice of modifying those extracted images for placement on retail products constituted infringement of the films’ copyrights. (And Warner Bros. was not objecting to AVELA’s unaltered reproduction of individual items of publicity material.) Fortunately, we have appeals courts to analyze the things that district courts erroneously deem irrelevant… even if appeals courts don’t always reach the right conclusions themselves.

“Because our analysis differs from that of the district court,” wrote Judge Gruender, “we find it necessary to determine whether the publicity materials reached the public domain.” (Decision at 7.) Warner Bros. conceded that the publicity materials copied by AVELA were distributed to theaters without the statutorily required notice, but nevertheless contended that the materials were not injected into the public domain because their publication was a “limited publication.” (A limited publication, as distinguished from a general publication, is one that occurs “under conditions which exclude the presumption that [the work] was intended to be dedicated to the public.” Am. Tobacco Co. v. Werckmeister, 207 U.S. 284, 299 (1907), superseded by statute, as recognized in Harper & Row Publishers, Inc. v. Nation Enters., 471 U.S. 539 (1935).  Courts developed the doctrine of limited publication to lessen the harsh effect of the rule that publication destroyed common law rights. Because, you see, back in the day, one had common law copyright upon creation of a work that warranted protection… until publication occurred. Then, if the publication complied with the requirements of the 1909 Copyright Act, the common law copyright was replaced by a federal statutory copyright. Unless you did it wrong, in which case the common law copyright was replaced by no rights.

I won’t keep you in suspense, even though this is a piece involving movies: The Eighth Circuit didn’t buy what Warner Bros. was selling on this point. The evidence showed plainly that the publication of the publicity materials was a general one. “Given the undisputed evidence regarding handouts, flyers, giveaway and sale items, and movie posters for telephone poles distributed…, as well as the widespread distribution of many publicity images to newspapers and magazines, the only possible… implication of [the studio]’s outward actions to the reasonable outsider is [an intention] to abandon the right to control reproduction, distribution, and sale of the images in the publicity materials.” (Decision at 12, internal quotation marks omitted.)

So the publicity materials are in the public domain. (Warner Bros. had argued to the district court that the publicity materials are protected as derivative works of the films. No one thought much of that suggestion.) So here’s where things get interesting.

Warner Bros. did not challenge products that are exact reproductions of an entire item of publicity material. Rather, Warner Bros. contended 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 admitted that it had used the images in new ways, but countered that there is no limitation on one’s right to modify or make new works from public domain materials. And the court agreed that AVELA is correct that one is not limited solely to making exact replicas of public domain materials, but is free to use public domain materials in new ways. “Nevertheless,” the court held, “this freedom to make new works based on public domain material ends where the resulting derivative work comes into conflict with a valid copyright.” (Decision at 14.)

But how. In the world. Could that happen?

The court had already found that the publicity materials were not derivative of the films—they were separate works entirely. What, then, of the films could work based on the public domain publicity materials incorporate, such that the new work would infringe upon the copyright in the films?

Yes: The characters.

What the Eighth Circuit ruled is that if AVELA’s products—even if properly based in the first instance on material in the public domain—incorporated aspects of the fictional characters developed solely in the works still protected by copyright (the films), then AVELA’s products could infringe upon the films. What the court actually wrote is:

“[I]f 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.” (Decision at 14-15.)

(Before I reveal the bizarre result that followed from this rule, I feel compelled to point out the flaw in the rule itself. The court conflated the notions of a fictional character meriting copyright protection and the work(s) in which that character appears. In the case at bar, the distinction is one without a difference (because Warner Bros. presumably would be the holder of copyrights in the individual characters whose likenesses were copied)—but where the court wrote “infringes the copyrights in the later works,” the court should have written “infringes the copyrights in those characters.” Copyright in a sufficiently delineated fictional character can, of course, last beyond expiry of the copyright in the work in which he, she, or it appears—and it is more likely to do so if the character achieves sufficient delineation only after several appearances.)

“If an AVELA work falls solely within the scope of the material dedicated to the public,” the court wrote, “there can be no infringement liability under the film copyrights. On the other hand, if some portion of an AVELA work falls outside the scope of the material dedicated to the public, but within the scope of the film copyrights, AVELA is liable for infringement.” (Decision at 15.)

And this is where things go off the rails.

First, the court determined the scope of the films’ copyrights: “At the very least, the scope of the film copyrights covers 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.” (Decision at 17.) So next the court determined the scope of the material dedicated to the public, thus: “As an initial matter, we reject AVELA’s contention that the publicity materials placed the entirety of the film characters at issue into the public domain.” (Id. Nice try, AVELA.) But then the court does something seemingly… well, completely backward: To determine the scope of the public-domain-injected characters, the court asks, essentially, how much should be carved out of each copyrighted film character. And to do this, the court effectively asks How much of each character is sufficiently delineated in the publicity materials to merit copyright protection?

Predictably, the answer is none. The court approaches the analysis as if someone (AVELA) were arguing that the character of Dorothy Gale, for instance, as depicted in a movie poster—or even all of the Wizard of Oz publicity materials taken together—merits copyright protection separate from the film in which she appears. Such an argument would have been ludicrous, and of course the court finds that still photographs alone do not infuse the publicity-Dorothy Gale with any protectable character, so to speak. So then, looking at the overall question as one of simple arithmetic—scope of copyright in film character minus scope of copyright in publicity character equals protected material—the court, finding the second value to be zero, was constrained to conclude that the only material available for use by AVELA is the “precise images in the publicity materials.” (Decision at 23.)

Accordingly, while the court did not limit AVELA’s activities as much as Warner Bros. would have liked—to the reproduction only of “posters as posters (or lobby cards as lobby cards)—permitting AVELA to license an image from a poster to be reproduced on another two-dimensional medium, such as a shirt, the court did enjoin AVELA from combining elements even from separate publicity materials (or likenesses and character quotations)… and from licensing elements of two-dimensional publicity materials for the creation of three-dimensional items—because to render a three-dimensional item from a two-dimensional image, the court reasoned, necessarily requires the use of material only available in the copyrighted films. “As a simple illustration,” the court wrote, “it is impossible to determine the length of someone’s nose from a picture if they are looking directly at the camera.” (Decision at 26.)

In case you missed it: The Eighth Circuit deemed impermissible the rendering of a three-dimensional figure based on a two-dimensional image (in the public domain) of a fictional character (presumably protected by copyright separate from the copyright in the work in which the character appears) if the rendering would require a viewing of the film—and not just the public domain image—to determine the length of the character’s nose—such a characteristic being, it would seem, just the kind of “further delineation” of the character that is off-limits to the public, inasmuch as it is revealed only on the big screen on opening night.

4 thoughts on “Over the rainbow and beyond the pale?”
  1. So if I can find publicity stills showing a character from the front and both sides, can I make a three-dimensional image of them?

    Also, way too lazy to look this up: was there any discussion of the rights of publicity of the actors portraying the characters? Assuming you can swing this into California courts, several of them may still have valid rights of publicity in the use of their images, and if so should be able to sue the bejeezus out of AVELA for commercial usage absent a release.

    Anyway, I look for AVELA to lose this on trademark. Big studios have a scorched-earth policy on this kind of thing. I once had to tell a client he could not use the name of a famous historical artifact to describe his commercial product (which was actually related to the historical artifact) because a large recording studio would sue him if he did on “famous mark”/tarnishing grounds, and he didn’t have the money to fight it.

    He absolutely would have won, the claim was ludicrous. But he didn’t have the money. When I asked opposing counsel if he was really prepared to tell a judge that his client could remove the name of a famous historical artifact from the public domain, essentially appropriating it for themselves against any other use in commerce appropriate or not, he just smiled. He knew he was wrong, he knew my client wasn’t hurting his and there was zero LIKELIHOOD OF CONFUSION*. He didn’t care. This is a universal attitude on the part of big content providers in my experience.

    *LIKELIHOOD OF CONFUSION is a registered trademark. Used for illustrative purposes only.

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