A recent decision from the Eighth Circuit is a reminder that not everything that you think is in the public domain is actually up for grabs.  Given the ease with which we can search the internet for “public domain” images and music to be used in other commercial ventures, the case is worth mentioning.

In 1900, L. Frank Baum wrote the Wizard of Oz, which is now in the public domain.  In 1939, the film based on the book, and starring Judy Garland, was published by MGM (the rights in the film are now owned by Warner Brothers).  Prior to the film’s release, publicity materials for the film were published without copyright notice.  Oops.  These materials thus passed into the public domain.  Similarly, publicity materials for Gone with the Wind and several Tom & Jerry short films, also owned by Warner Brothers, also passed into the public domain although the films depicting the characters are still protected by copyright.

A.V.E.L.A., a Nevada company specializing in nostalgia merchandise, used images from the films’ publicity materials to place onto commercial goods such as shirts, lunch boxes, playing cards and other knickknacks.  Some of the images were modified from the original, some of the original images were combined, and other images were transferred from two-dimensional images into three-dimensional statues and action figures.  Warner Brothers sued for copyright infringement in the U.S. District Court for the Eastern District of Missouri and won on summary judgment.  On appeal to the Eighth Circuit, Warner Brothers won again. 

The Eighth Circuit’s inquiry began with whether A.V.E.L.A. had appropriated “original elements” of the film or elements that are already in the public domain.  The Court noted that “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.” Further, the Court stated that “[a]t 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.”  Thus, although both a publicity image of Judy Garland and the phrase “there is no place like home” are two separate works in the public domain, when combined, they form a “new single work that evokes the film character of Dorothy much more strongly than the two separate works” and . . . infringe the copyright in the film.

The decision is not too off-the wall, given that copyright in characters has traditionally been accorded to highly developed characters with well-defined traits.  And while books leave much to the imagination, a movie provides us with a clear, developed, visual.  The take-away is to think twice when using public domain images.