The US Court of Appeals for the Eighth Circuit recently ruled in favor of Warner Bros. Entertainment Inc. in its copyright infringement suit against several movie image licensors who had been selling altered public domain images of famous characters from The Wizard of Oz, Gone with the Wind, and a number of Tom & Jerry short films. In affirming the district court’s grant of a permanent injunction, the appellate court found that copyright law prohibits the defendants from extracting images from publicity materials for the classic films and licensing alterations for use on consumer items like t-shirts, playing cards, and figurines. The court’s ruling that filmmakers are entitled to copyright protection of their characters—even after the characters images entered the public domain—is a major victory for studios that have carefully balanced the preservation of rights in their characters with the promotion of the films themselves.
Before the plaintiff’s films were completed and copyrighted, producers circulated publicity materials to garner attention for the films. In doing so, however, they failed to include the required copyright notice, which ultimately led the Eighth Circuit to conclude that the publicity materials had fallen into the public domain, preventing the plaintiff from restricting their use. The court nevertheless explained that the defendants’ freedom to make derivative works—that is, expressive creations that incorporate major, copyright-protectable elements of an original work—based on the public domain materials was limited to the extent that the derivatives conflicted with the studios’ valid copyrights in the films. In other words, copyright liability could still arise where some aspect of the defendants’ derivative work overlapped with the copyright-protected material.
The Eighth Circuit analyzed the scope of the studios’ copyrights in the classic films, the scope of the material dedicated to the public domain, and whether the defendants’ derivative uses of the public domain images exceeded the latter, thus giving rise to infringement liability. First, the court concluded that Warner Bros. was entitled to copyright protection over the films’ characters, reasoning that if material related to a certain character lies in the public domain, a party can nevertheless obtain rights in that character to the extent that a later copyrighted work makes the character sufficiently distinctive. Next, the court found that the public domain materials only covered each character’s purely visual characteristics, revealing nothing about their signature traits or mannerisms as depicted in the films. Finally, it analyzed the defendants’ liability as to three distinct categories of products: (1) those that reproduce a single two-dimensional image from a single public domain item, (2) those that create a new composite work by juxtaposing an extracted public domain image with another extracted image from the materials or a printed phrase from the book underlying the film, and (3) those that extend an extracted image into three dimensions. It ruled that the first category led to no infringement because the mere reproduction of an image onto another medium fails to add even an increment of expression to a film character, but that the second and third categories constitute new increments of expression that evoke the film characters in a way the isolated public domain images could not. The Eighth Circuit, therefore, largely affirmed the district court’s grant of the permanent injunction, reversing and vacating only as it related to the first category of the defendants’ products.
A pair of analogous cases arose in California, where a federal district court held that film studios were entitled to copyright protection over their distinctive characters. In the first case, Siegel v. Warner Bros. Entertainment Inc., the US District Court for the Central District of California ruled that the plaintiffs, the wife and daughter of “Superman” creator Jerome “Jerry” Siegel, possessed rights in an advertisement’s fairly limited pictorial illustration of the iconic comic book hero—that is, a black-and-white image of a person with extraordinary strength wearing a leotard and cape and holding a car over his head—but that the image was readily distinguishable from the defendants’ copyright in the comic book and film series, which encompassed well-known, distinctive elements such as Superman’s name, alter ego, origins, famous “S” crest, and distinctive blue leotard, red cape, and boots. Similarly, in Metro-Goldwyn-Mayer, Inc. v. American Honda Motor Co., the same court held that MGM Studios’ copyrights in the James Bond film series established a copyright in the “James Bond” character, allowing the studio to enjoin Honda Motor Co. from airing an advertisement that featured a male protagonist who possessed James Bond’s unique character traits as developed in the films, namely, “his cold-bloodedness; his overt sexuality; his love of martinis ‘shaken, not stirred’; his marksmanship; his ‘license to kill.’”
These cases illustrate a trend of courts strengthening filmmakers’ rights in copyrightable character elements while limiting the reach of the public domain.