Copyright Interlude: What is the Public Domain?

The Eighth Circuit Court of Appeals is holding court in the Missouri Law School this week. One of the appeals being heard is a copyright case involving the 1939 Wizard of Oz movie (as well as Gone with the Wind and Tom & Jerry). The case is captioned, Warner Bros. Entertainment, et al. v. X One X Productions, et al., App. No. 10-1743. TBS (now owned by TimeWarner) claims title to the copyright to the Wizard of Oz movie. The defendant apparently obtained a set of publicity posters and other material from the movie that are in the public domain and that were distributed prior to the movie being copyrighted. The public domain materials included images of Judy Garland playing Dorothy Gale, Jack Haley as the Tin Woodsman, etc. Using those public domain materials as a base, the defendant began manufacturing and selling t-shirts and trinkets showing the likeness of the well-known characters. To be clear, at least for the t-shirts, the defendant only used images cropped from the public domain materials. As the accused products below show, the defendant also included well known phrases from the movie such as “there’s no place like home.”

Warner (WB) sued the defendants alleging copyright infringement as well as liability under the Lanham Act. On summary judgment, the Missouri-based district court agreed that the defendant had not copied any images from the films, but still held that the defendant was liable for infringing the film copyrights. In particular, the lower court held that WB held copyright to the Wizard of Oz characters as portrayed in the movie:

i.e., Judy Garland as Dorothy Gale, Ray Bolger as Scarecrow, Jack Haley as Tin Man…. Each character has widely identifiable traits and is especially distinctive. Each has been extensively developed through the films. Be it Dorothy’s inherent wisdom coupled with her Midwestern farm girl innocence, … or the apparent inconsistencies of Scarecrow, (without a brain vs. wisdom and leader), Tin Man (without a heart vs. compassion and tenderness) and Cowardly Lion, (without courage vs. bravery and chivalrousness), they are especially distinctive.

Ironically (and without comment from the district court), the particular identifiable traits of the characters identified here (apart from the portraying actors) were all derived directly from L. Frank Baum’s 1900 Wonderful Wizard of Oz novel that is now out of copyright.

In focusing on the public domain materials, the district court indicated that merely copying the public domain material likely would not have created any copyright liability. Here, however, the defendant did not merely copy the posters. Rather,

they pluck from these pages images of Plaintiffs’ copyrighted characters such that Defendants’ images are no longer innocently copied publicity ads, but are indeed the characters themselves, to be embossed onto any number of trinkets, clothing and other collectibles. . . Notwithstanding Defendants have copied only the publicity materials, such actions violate the component parts of Plaintiffs’ copyrights in the films.

Based on the finding of copyright infringement, the district court issued a permanent injunction that prohibits the defendants from

using for commercial gain images from the film The Wizard of Oz as well as images of Judy Garland as Dorothy Gale, Ray Bolger as Scarecrow, Jack Haley as Tin Man, and Burt Lahr as Cowardly Lion [except] that Defendants are [may use] reproductions of public domain movie publicity materials, in their entirety and without alteration or modification.

On appeal, the defendants have argued that they should be able to use particular images of the Wizard of Oz characters so long as they are taken from the public domain materials.

Documents:

Wizard-of-oz-poster

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

51 thoughts on “Copyright Interlude: What is the Public Domain?

  1. So if I find a photo in a public domain newspaper, I can’t copy the photo from the newspaper? I need to contact the owner of the copyright on the original photo to reproduce the copy of the photo that is in the public domain?

    Again, this is ridiculous and nonsensical.

    Not ridiculous if you understand that one “product” may include other “products”.

    One’s understanding of these rudimentary facts does not make your view of the law any less ridiculous or any less nonsensical. And that’s true even if your view is accurate.

  2. My two cents is that something being overlooked is that there a creative element with make up and characterizations.

    Nobody dispuses this.

    For example Universal holds a trademark on the character, as it relates specifically to the make up, of Frankenstein as the monster appeared in their classic film

    All very interesting but this isn’t a trademark case.

  3. Not ridiculous if you understand that one “product” may include other “products”. In this the overall “product” is public domain, but elements within it aren’t. By way of another example a newspaper from the 60’s may, in itself, now be Public Domain, but that does not mean that individual elements contained within it are as well.

  4. Interesting topic here and a lot of comments. My two cents is that something being overlooked is that there a creative element with make up and characterizations. For example Universal holds a trademark on the character, as it relates specifically to the make up, of Frankenstein as the monster appeared in their classic film. They were very smart because they knew they could not copyright the story or the characters in the story, so they trademarked the make up in relation to their movie. Think of this in the same way – the story from Baums book itself can not be (re)copyrighted, nor could the characters from the book. You too could make a movie based on the exact same book – as long as you did not make *your* lion look exactly like the one in this film, or the one in The Wiz, you would be fine.

  5. Joel, do you agree with the following statement from the description of the case above:

    The defendant apparently obtained a set of publicity posters and other material from the movie that are in the public domain and that were distributed prior to the movie being copyrighted.

    Either the posters are in the public domain or not. Is the description wrong? If so, can you show me the cite from the case that correctly describes the status of the posters?

    According to your argument, it would be appear that I could make a poster with a cartoon whale on it, expressly dedicate the poster to the public for reproduction, then make a copyrighted movie about the whale thereby allowing me to sue somebody who copied the whale from the poster I had dedicated to the public. That seems to me incredibly unfair and nonsensical — it’s also pretty much exactly what happened in this case.

  6. You missed the key point about what is in the public domain. Only the new matter in the poster was capable of being copyrighted by the creator of the poster. The characters are not new matter; rather, they are covered by the studio’s copyrights in the movie, which cover the appearances of the characters. When the poster fell into the public domain, only the new conent in the poster (not the images of the characters) was available for public use. It is for this kind of situation that modern copyright registration forms require the registrant to state whether the work being registered is derivative of some other work, and if so, to describe the new matter claimed to be copyrightable apart from the earlier work. If a district court allowed the entire poster to be reproduced without the movie studio’s permission (i.e. license), the court would be wrong.

  7. The poster is a derivative of the movie.

    The poster is in the public domain (indisputed fact), therefore you can copy images from the poster. It really is that simple.

    Even the district court would agree that if the entire poster was copied and put on a T-shirt, there would be no problem. But somehow a copyright problem is created when a part of the public domain image is *removed*? Ridiculous.

  8. The movie studio should win. Here’s why I say that.

    First, this is a case of design copyrights, not literary copyrights. The appearances of these four characters from the movie were created with costumes and make-up designed and applied by employees of the movie studio. The photos of the charters in costumes and make-up were taken by studio publicity photographers. Under the 1909 Copyright Act the studio’s copyrights in the movie extend to copyrights in the appearances of the characters.

    The poster is a derivative of the movie. The fact that the poster was published before the movie was released (assuming that this is the case) does not make the movie a derivative work of the poster. The charcters were created first, so that the actors would have costumes and make-up when they started the first day of filming. Most likely the photos that appear on the poster were taken during the course of shooting the movie, and well after the characters were created. Thus, even if the movie was released for display after the poster was published, the common law of copyright in California would have applied to the as yet unreleased movie and its characters.

    (As an aside, under the 1909 Act, since copies of the movie were rented, not sold to the theater circuits, it would have qualified for federal copyrights under section 12 of the federal statute, as a work not reproduced for sale. Thus its federal copyrights did not attach until its date of federal registration, instead of first publication. It was not until the 1976 Act that the common law of copyright was abolished.)

    As a derivative work, the only copyrights in the poster are for new matter, not covered by copyrights in the movie. Thus, when the poster entered the public domain, only the new matter, not the characters’ images, became free for all to use.

    There is no reason to be concerned with the short phrases that appear on some of the accused t-shirts. They are too brief to be copyrightable works of authorship. Further, to the extent they are quotes from the novel, they passed into the public domain when the copyrights on the novel expired.

    These characters will not pass into the public domain until at least 2033, until we get another copyright term extension be fore then.

  9. IANAE,

    Trying to create an argument for argument’s sake when you have to twist the message is so obviously trolling that you should be ashamed. If that were possible.

    I don’t see why that should be impossible to do. Individual words are in the public domain, but arrange enough of them together in the right order and you might infringe someone’s copyright.

    The point here wasn’t individual words – it was words in the public domain book, identifiable directly to the character images, also in the public domain.

    Your sidekick Ping advanced the very same thought of “individual words” awhile back. It was not amusing then, and is not amusing now.

  10. The court, however, by some bizarre form of reasoning apparently believes that when you mix two public domain items together you can create an infringing product — a sort of legal alchemy that mixes mercury and lead to create gold for Warner Bros.

    I don’t see why that should be impossible to do. Individual words are in the public domain, but arrange enough of them together in the right order and you might infringe someone’s copyright.

    The same sort of thing happens in patents and trademarks, too. You can combine elements that are in the public domain to arrive at a result that infringes a valid right.

  11. Yet another terrible, ill-reasoned opinion from the court. What a surprise.

    The pictures/images are in the public domain, and thus anyone can slap them on a t-shirt for fun and profit.

    The novel is in the public domain, and thus any phrases attributed to the characters can be used (i.e., also slapped on a t-shirt for fun and profit).

    The court, however, by some bizarre form of reasoning apparently believes that when you mix two public domain items together you can create an infringing product — a sort of legal alchemy that mixes mercury and lead to create gold for Warner Bros.

  12. In an ironic counterpoint to this case, the 9th Circuit ruled on February 23rd that this same defendant, X One X, was free to reproduce images of the cartoon character Betty Boop. The opinion recites that, “The defendants in this action…also license Betty Boop merchandise. The copyright pursuant to which[the defendants]license[] [their] products is based on vintage posters featuring Betty Boop’s image that [they] restored.” Have a look at Fleisher Studios v. AVELA, Inc.

  13. OK.

    Exactly why we need FTF and fast.

    Although I would argue that after a reasonable short time it should be barred under 102(g) as being abandoned, suppressed, or concealed

  14. The defendant’s main argument is that the publicity materials are Public Domain, and the story of Dorothy and the Wizard of Oz is public domain and they have the right to associate public domain images with the characters in a Public Domain novel. The fact that the plaintiffs have previously done the same thing shouldn’t cause a restriction on the defendants.

  15. “If the founding fathers had any idea what sort of country this would become, they would have stayed with King George.”

    It’s not too late to come back. Of course there is the small matter of a couple of hundred years back taxes. 😉

  16. Assembling public domain materials and selling them is legal. The court wants to twist copyright law on its head so that rich media giants can lay copyright claim to public domain materials.

    It is shameful, but this is what you get with a system that generates court rulings based on the wealth of the parties instead of on the law and on principles of justice. It is legalized theft. The whole thing makes me sick. We don’t live in a democracy. We live in a dictatorship of the corporations where money buys you any law you want.

    If the founding fathers had any idea what sort of country this would become, they would have stayed with King George.

  17. Yes, exactly. So if it was filed later it would be anticipated. The only possible way it could still be enforceable after the plastic table is if it had received term extension.

  18. Troll – ya really should bone up on the law before you make comments. Otherwise, ya just look plain silly tryin out that pejorative label like some wanna be.

    The film is still protected by law – it is the book and the items released prior to the film that be in the public domain.

  19. Isn’t it self evidently a violation of the spirit meant to “promote science” that any discussion of any sort is taking place over ANY aspect of The Wizard of OZ?
    Anyone should be free to use any expression displayed in this film by now. That’s how culture and commerce advance.

  20. I agree, ping, that the case should have been tossed already. Best part about that, of course, is that you’ll be able to complete your collection.

  21. You are repeating the defendant’s assertion, but I am not aware of a single case that says you cannot create a derivative work before copyright attaches. The 1909 copyright act did not define a derivative work, and the current act only requires the work to be based on a preexisting work, not a preexisting copyrighted work.

  22. A couple of observations:

    The defendant apparently obtained a set of publicity posters and other material from the movie that are in the public domain and that were distributed prior to the movie being copyrighted.” – so much for the court’s statement of “pluck from these pages images of Plaintiffs’ copyrighted characters” – If the actual images are pulled from public domain items…

    The public domain materials included images of Judy Garland playing Dorothy Gale, Jack Haley as the Tin Woodsman, etc” Yep, sure seems like the images are public domain items…

    No problem with infringement so far,

    BUT:

    the defendant also included well known phrases from the movie such as “there’s no place like home.”

    Question?

    Were these specific phrase missing from L. Frank Baum’s 1900 Wonderful Wizard of Oz novel that is now out of copyright (and likewise in the public domain)?

    I think not:

    Like page 45 of the book: “There’s no place like home.
    Like page 93 of the book: “If I only had a heart…

    The fact that this case has not been tossed is asinine. Any court that cares about preserving the decency and integrity of the court system will throw Warner Bros. Entertainment, et al out on their ear.

  23. I don’t agree with your assessment regarding derivative works here. We’re talking about the 1909 Copyright Act, where copyright did not attach until publication. You can’t create a derivative work under the law before copyright subsists in the original work.

    Only after the 1976 Act did the law change from publication to creation of the work.

  24. And this bit of biting commentary provided by Sunshine “click-my-heels” Mooney, who owns a wide assortment of Judy Garland memorabilia and can rightly attest to what a “good” T-shirt would be.

    Thanks for the absolutely pointless comment Sunshine. You fashionista you.

  25. Wouldn’t a patent on plastic tables, preclude a lter patent on ‘plastic’ from issuing, unless it were a particular tyoe of plastic, and then you could simply make the tables from a different type. The species usually implies the genus.

  26. Seriously, if Disney is going to abuse the political system then we should at least make them just carve out an exception for themselves and not for everyone.

    “when will the copyright on Mickey expire?”

    Several years after Disney goes bankrupt and nobody will buy the mickey franchise + rights. Which is probably never.

  27. Here is a similar story

    A lot of press has been generated over the past year regarding a dispute between General Electric (GE) and Mitsubishi. In 2008, GE filed suit at the International Trade Commission (ITC) against Mitsubishi for infringing three U.S. patents held by GE. The impetus of the lawsuit centers around Mistubishi’s 2.4 MW wind turbine, which Mitsubishi planned to import and later manufacture in the U.S. In January 2010, the ITC concluded its roughly two-year investigation and determined that Mitsubishi had not violated GE’s patents. A month later, GE filed suit in the U.S. District Court for the Northern District of Texas, once again accusing Mistubishi of infringing the same GE patents.

  28. So, will the copyright on movies ever expire? I know Mickey will be copyrighted forever, but I thought that was just for Disney. Is copyright really going to be perpetual for all movies and any content within those movies?

    Dennis, do you think there is any chance that this decision will be overturned and we’ll get something sensible for dealing with movies that are derivatives from copyright expired books? And one last question, when will the copyright on Mickey expire?

  29. So you’re using the retardedness of the patent system to justify retardedness in copyright?

    Nice try TJ, but you can’t slip that one by me.

  30. Another answer is to say that your hypo actually demonstrates the power of my analogy. I teach (and I suspect that you do as well) on the first day of my patent class that owning a patent on plastic tables does not give an affirmative right to sell them. It is one of the most counter-intuitive things about patent law. Copyright law is no different. And that is why the defendants clearly lose. The intuition going the other way is precisely that “right to use” intuition that we spend the first class crushing.

  31. There are lots of ways that Patent 1 does not and should not anticipate, e.g. if Patent 2 is filed later but has an earlier invention date.

  32. Dennis, your hypo is why I kind of don’t like the result. But I think that Russell v. Price, 612 F.2d 1123 (9th Cir. 1979) directly requires the result. So you have a movie (work 2) based on a play (work 1). The movie copyright is expired, the play is not. Defendant sells movie. Ninth Circuit holds defendant infringes copyright on the play.

    The defendants’ brief don’t even bother to distinguish this case except to say that the publicity materials are not a derivative work of the film. But they are. And the defendants give no explanation (except to hint that it is because the film had not been published by then).

    And a final clarification, my understanding is that WB’s argument is that the publicity materials are a derivative work of the film, and the defendants’ work is a copy of those publicity materials. A copy of a derivative work of the film is itself a derivative work of the film.

  33. “To translate it to the patent context, suppose Patent 1 covers plastic tables and Patent 2 (which issues later) covers plastic. You cannot make a plastic table after patent 1 expires, even if it is an exact replica, because it infringes Patent 2.”

    That’s a great analogy because it shows off how retarded it is to be giving out the second patent when the first one should anticipate.

    “The argument, it seems to me, is that the publicity materials are derivative works of the film, and the shirts are thus also derivative works of the film, and thus infringe the film copyright. It is the same thing as saying everything here would infringe Baum’s copyright in the book if that had not expired. Though I don’t like this outcome much, I have to say that I think WB is absolutely right.”

    Based upon your summary I agree, WB is probably right, if your summary is right. And their being right in this manner just shows off how retarded the system is even more.

  34. Not “messy”. “re tarded”. And there is no other way of looking at it. The corruption has caused the whole thing to be retarded now.

  35. “By the district court’s logic, if a copyright holder continues to release new copyrighted material featuring the same characters, they could conceivably extend their copyright over those characters indefinitely. That flies in the face of the “limited times” clause of the Constitution. This is especially true in the case of animation, where a character design can be reused by generations of animators in perpetuity.”

    Of course, which apparently is what the plaintiffs would say as well. Particularly re tarded, but even so.

  36. This is why I stay away from copyright law – it’s just too messy. And annoying: the movie came out in 1939, why should there still be copyright protection for any aspect of the movie 72 years later? Argh.

  37. Thanks TJ – I agree that the case is more complex than I’ve stated in my 400 words. However, I don’t think that WB actually argues that that defendants have created a derivative work. Rather, I think that their argument is that they hold a copyright in the characters (as portrayed in the movie) and that defendants have created copies of the characters.

    That aside, I don’t think that your patent analogy strictly holds. Take, for instance reproduction of the original posters that are now in the public domain — shouldn’t at least those be reproducible?

  38. Dennis, I don’t think this accurately represents WB’s argument. The argument, it seems to me, is that the publicity materials are derivative works of the film, and the shirts are thus also derivative works of the film, and thus infringe the film copyright. It is the same thing as saying everything here would infringe Baum’s copyright in the book if that had not expired. Though I don’t like this outcome much, I have to say that I think WB is absolutely right. To translate it to the patent context, suppose Patent 1 covers plastic tables and Patent 2 (which issues later) covers plastic. You cannot make a plastic table after patent 1 expires, even if it is an exact replica, because it infringes Patent 2.

    The defendant’s main argument that the publicity materials are not “derivative works” of the film (apparently because the film was published later) seems borderline frivolous to me — the publicity materials are clearly based on and derived from the then-unpublished film, and there is nothing requiring that a work be published before other derivative works can be made.

  39. By the district court’s logic, if a copyright holder continues to release new copyrighted material featuring the same characters, they could conceivably extend their copyright over those characters indefinitely. That flies in the face of the “limited times” clause of the Constitution. This is especially true in the case of animation, where a character design can be reused by generations of animators in perpetuity.

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